Counterfeiting in the Fashion Industry- India

Counterfeiting has been prevalent in the fashion industry since as long as one can remember, but the same can be said to have exploded in the mainstream since “big brands” started becoming popular post the turn of the 20th century. Media and ease of access to information has seen to the cementing of counterfeiting in the fashion industry, and the same has in fact become a sub-industry in itself! Most recently, viewers of the 2021 hit film #HouseofGucci (starring Adam Driver and the effervescent Lady Gaga) were exposed to the prevalence of counterfeiting in the fashion industry, as well as the attitude towards it in the 20th century – wherein in a rather iconic scene, the protagonists observe that the GUCCI fakes are of a rather good quality and that the proliferation of GUCCI fakes in the market might not be a thing!

However, attitudes of the fashion behemoths have certainly changed in the last few years, especially due to factors such as the ease of access to internet and social media (please see our earlier articles on the subject matter at Faking It In Fashion and Counterfeiting Of Luxury Goods – Guccio Gucci S.P.A. v. Intiyaz Sheikh).

Although, the rather close connection between the fashion industry and the world of counterfeiting is an understandable one. The Fashion Industry is an expression of creativity, which captures the imagination of one and all, and importantly, it affects almost all of humankind, and forms an integral part of day to day life. Thus, in the fashion industry, nothing is more important than the labels that show the names of the brands, and the names of these brands are their respective legacies. Fashion is also known for its cultural heritage, elegance and colourfulness in every region of the world. In the Fashion industry, prior to the creation and widespread use of Brands, consumers were more concerned about the quality, comfort, prices and design, but the same has been perverted over time. Nowadays, one would rather spend 50 dollars on a knock-off counterfeit high-fashion brand’s item, rather than spend 70 on a same product of much better make, but of a not-so-famous/ in-demand brand.

However, with the gradual evolution of the fashion industry, and in essence, the transformation of the same to an economy of scale, by way of mass production of clothing which began roughly in the mid-nineteenth century, the fashion industry is facing a threat of counterfeiting at hitherto unknown scales..

At present, the fashion industry is one of the most popular and profit-making industries in athe world, and the industry is an integral part of day-to-day lives.

IP in the Fashion Industry

Intellectual property rights are the rights which are used to secure the originality of ideas (and expression of ideas) and are also used to protect ones’ intellectual creation from those who would steal it or unjustly enrich from it. In the context of the fashion industry, branding and reputation forms the backbone of the industry – names such as GUCCI, Louis Vuitton, etc., carrying a sense of gravitas and reverence, that few other industries could match. Besides trademarks/ branding, designs/ industrial designs as well as copyright forms a part of IP portfolios of members of the fashion industry.

Counterfeiting can be defined as an imitation of something else with the intent to deceive. People are selling duplicate goods of the most popular brands in local markets with slight differences but they are quite similar to the original one when comes to pattern, design and color schemes. Further, as noted in the beginning of this piece, counterfeits can be of quite high quality as well, which in fact grossly exacerbates the menace of counterfeiting in the industry.

The most popular counterfeit market can be said to be clothing, followed by items such as watches, shoes, hand bags and jewellery. Some of the most copied names include H&M, Gucci, Burberry, Hermes, Nike, Puma, Adidas, Blackberry and Cartier etc., Nowadays, in many bazaars or markets, one can hear numerous vendors calling out to customers, claiming to sell the exact copy (or “first copy”) of the ABC brands. What is worse is that one can easily peruse such counterfeits online, and have the same delivered to their very homes.

As such, the instances of legal action being taken against counterfeiting in the fashion industry in India are growing day by day. For instance, In March 2021, the police had seized huge quantities of counterfeits of popular brands, including Killer, Mufti, Allen Solly, Louis Philippe. They also seized huge quantities of labels and tags popular apparel brands. The seized goods were worth over INR 20,000,000 (20 million) through social media and online platforms. The case under Section 63 of Copyright Act, 1957 and Section 420 of Indian Penal Code was registered against the two persons for selling fake garments of different brand names¹.

Counterfeiting in the Fashion Industry in India – Recent Trends

Few of the recent Trademark Infringement and Counterfeit Cases are as under:

Guccio Gucci SPA v. Intiyaz Sheikh²

Global luxury giant Gucci obtained an ex-parte reprieve from the Tis Hazari District Court in Delhi, which restrained a local manufacturer from using the brand’s iconic logo on its products. Suit was filed by the Plaintiff seeking to restrain defendant from infringing its trademark and copyright with regard to socks of sub-standard quality being sold by them under the GUCCI branding. The Plaintiff came to know that defendant is illegally manufacturing socks using the registered trademark and logo of The Plaintiff, and accordingly in addition to suit for permanent injunction, had also filed for grant of ad-interim injunction along with an application for appointment of Local Commissioner to conduct raid at the premises of the defendant.

The Court not only passed a permanent injunction in Gucci’s favour, but also directed the defendant to cough up INR 200,000 in damages and INR 166,000 as costs.

Hermes International & Anr. v Macky Lifestyle Private Limited & Anr³

Hermes International & Anr (The Plaintiff) had filed a suit for infringement of its registered trademarks and copyrights, passing off, dilution, tarnishment, rendition of accounts, damages, delivery up, unfair competition, misappropriation etc. against the Defendants.

Hermès International is the adopter and registered proprietor of the famous three-dimensional shape trademark(s), by virtue of which it enjoys exclusive proprietary rights in the shape of the “Birkin” Bag, and the trademarks “Hermes” and stylized mark “HERMÈS” for its products – including its luxury bags and accessories.

A few months back in December 2021, Hermes obtained an ad-interim injunction from the Hon’ble Delhi High Court, inter alia restraining the defendants from advertising on their website or any other third-party websites, the infringing goods.

M/s Blue Heaven Cosmetics Pvt Ltd vs Shivani Cosmetics Through its Partners Vinod Monga and Nishant Monga⁴

Blue Heaven Cosmetics (The Plaintiff) filed a suit before the Delhi High Court against Shivani Cosmetics through its partners Vinod Monga and Nishant Monga (Defendant) for infringement of registered trademark / trade-dress / copyright / writing style / colour combination / label / packaging / passing off goods, delivery up, rendition of accounts of profits, and other ancillary reliefs.

The Plaintiff came across the impugned product (eyeliner) of Defendant which is an exact replica of the Plaintiff’s registered trademark / copyright / trade-dress / colour combination / writing style/packaging/label/ overall get up. The Plaintiff is aggrieved by Defendants’ use / violation of registered trade-dress / label / copyright / writing style / colour combination/packaging rights in its “BLUE HEAVEN” marks.

On December 23, 2021, the Hon’ble High Court held that the Defendant not only copied the trademark, but also the trade dress / copyright / writing style / colour combination / label / packaging / overall get up of the Plaintiff’s mark. Accordingly, the court restrained the Defendant from using the trade dress / copyright / writing style/colour combination/label/packaging/ overall getup or in any other manner which directly or indirectly infringes the Plaintiff’s/Applicant’s registered trade dress/ colour combination/ writing style/ packaging/ label/copyright in “BLUE HEAVEN”.

Relaxo Footwears Limited vs Nikhil Footwears and Anr⁵

RELAXO FOOTWEARS LIMITED (The Plaintiff), a famous Indian footwear brand, filed a suit before Delhi High Court against Nikhil Footwears (Defendant), seeking ex-parte ad-interim injunction. This suit was with respect to the registered designs of Relaxo, as the defendant was selling footwear of identical designs.

The Plaintiff alleged that the Defendants believed to be part of the Action Group of Companies engaged in the business of manufacturing and trading of footwear products under the trade mark ‘ACTION’. The Plaintiffs came to know about an identical imitation of the product marketed under the brand ‘ACTION’. The Plaintiffs issued two cease-and-desist notices to Defendants, which they replied that they are not dealing in any similar/identical product as mentioned. The Plaintiffs alleged that the impugned products clearly use the trade mark ‘ACTION’ as well as email ID with the domain name actionshoes.com and are stated to be manufactured by M/s. Nikhil Footwear. The Plaintiffs stated that Defendants are using the shield of multiple firms/entitles/companies in committing their unlawful acts to escape liability and legal actions. The Plaintiffs have claimed to have registered designs as well for few of their products.

On September 10, 2021, the Hon’ble High Court of Delhi restrained defendants from manufacturing, selling, offering for sale, advertising, importing, etc. the concerned products bearing designs that are obvious or fraudulent imitation of The Plaintiff’s registered designs which may amount to infringement and/or passing off of the designs of The Plaintiff.

Conclusion

The Fashion industry is a glamorous one, and is one which dazzles the entirety of humankind. Creativity is the backbone of the industry, and reputation and goodwill is one which taken years to build. Besides this, consumer trust is one which takes years to build in the fashion industry, and is one aspect, which can be easily lost – after all, considering the huge number of brands of remarkable quality and similar pricing, it is very easy to switch brands. Thus, the scourge of counterfeiting is one which needs to be weeded out from the fashion industry.

For this, consumer awareness is more important than ever, as many consumers are now willingly and knowingly parting with their hard-earned money for counterfeits. However, lately the brands in the industry have been fighting fire with fire, as seen from the above illustrated recent cases, and it is hoped that the problem of counterfeiting in the fashion industry would slowly diminish in the coming years.