When Couture Meets the Courtroom: Unstitching the Seams of Pirated Lehenga Lawsuits

The Designs Act of 2000 has become popular among Indian couture businesses to ban the widespread “lehenga piracy.” House of Anita Dongre v. Rishi Vij & Ors. and Sabyasachi Calcutta LLP v. Asiana Couture & Ors. are two noteworthy suits in which the Delhi High Court prohibited shops from offering counterfeits of exorbitant bridal lehengas. These decisions reveal systemic flaws in India’s design legislation even if they seem to reinforce fashion intellectual property.

House of Anita Dongre vs. Rishi Vij & Ors.: Injunction Without Doctrinal Clarity

The Delhi High Court barred the defendants from selling lehengas that allegedly violated Design Registration No. 319595-001 in the case of House of Anita Dongre v. Rishi Vij & Ors[1]. Section 22(2)(b) of the Designs Act, 2000 (piracy of a registered design) was the basis for the injunction.

Flaws in the Judgment

The Delhi High Court held that the design was registered under the number 319595-001 and this was allegedly infringed by the defendants by selling similar lehengas. The Court issued an interim injunction prohibiting the defendants from producing or marketing the contested items after a representative was dispatched to buy a lehenga from them. The injunction was granted under the Section 22(2)(b) of the Designs Act, 2000.

1. Registration’s Validity not Examined: As per Section 4(a) of the Designs Act, 2000, it clearly states that a design is not registrable under this statute if it does not classify as new or original and Section 4(b) stating that it was not previously published. The design made by the plaintiff was classified as original and was granted validity. Yet, looking into another suit of Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd.[2], the Supreme Court clearly stated that novelty is the bedrock for design protection. According to Section 19 of the statute, a design may be cancelled if it does not pass the test of originality or novelty. There are significant questions regarding Sections 4 and 19 of the Designs Act, 2000 because many Anita Dongre lehengas use traditional themes which make it all the more difficult to distinguish whether they are original or not. However, the court avoided this question.
2. Negligence to Address Repeated Counterfeitors Decisively: Despite prior infringements, the Court failed to impose punitive damages during those instances. In the case of Devagiri Farms Pvt. Ltd. Vs. Sanjay Kapur & Anr.[3], the Delhi High Court assessed chronic infringers exemplary costs. The ruling undermines deterrence in this case since violators can easily close their business and reappear under a different brand name.
3. No Interaction With The Overlap Between Copyright and Design: As per Section 15(2) of the Copyrights Act, 1957, if an artistic work applies to more than 50 copies, it ceases to be a copyright and the Designs Act takes over. The Court also confirmed this principle in the suit of Microfibres Inc. v. Girdhar & Co.[4], By sidestepping Section 15(2) of the Copyrights Act, 1957, the plaintiff’s ruling evaded the more complex question of whether her motifs were design patterns (design law) or artistic creations (copyrightable).
4. Over-Reliance on the Interim Injunction: The Court granted an interim injunction under Order XXXIX Rules 1 & 2 of the Code of Civil Procedure, 1908. The Delhi High Court emphasised in Micolube India Ltd. v. Rakesh Kumar[5] that injunctions must be based on unambiguous prima facie findings. The matter was not settled on its merits since the Anita Dongre injunction only provided temporary relief.

The key takeaway is that while the court granted Dongre economic protection, it did not address the doctrinal issues of innovation and copyright overlap.

Sabyasachi Calcutta LLP vs. Asiana Couture & Ors.: Gaps that Remain

Sabyasachi Calcutta LLP vs. Asiana Couture & Ors.[6] was a lawsuit filed by Sabyasachi alleging that his Rusheeda Lehenga (Reg. No. 85668) and Botanical Lehenga (Reg. No. 83943) were pirated. Section 55 of the Copyright Act of 1957 (ancillary claims) and Section 22(2)(a) of the Designs Act of 2000 (injunction against piracy) were invoked to seek relief.

Under Section 22(2)(a) of the Designs Act, Justice Prathiba M. Singh issued a permanent injunction and, under Section 22(2)(c), ordered the delivery-up of items that violated the law.

Flaws in the Judgment

1. Subjectivity of “Obvious Imitation”: The “Obvious Imitation” criterion was used by the court. The question in Reckitt Benckiser (India) Pvt. Ltd. vs. Wyeth Limited[7] was whether or not a typical customer would see significant similarities. However, in high-end couture, uniqueness frequently comes from market positioning and branding rather than just decoration. Because of this, the “obvious imitation” criteria is rather arbitrary.
2. Weak Stance against Repeat Infringers: Similar to the previous case, the Court failed to take into consideration that there were repeated infringements and no punitive damages were awarded to the infringers.
3. Narrow Registration Process: The two lehengas that were registered were the only ones safeguarded. However, under Section 11 of the Designs Act, 2000, registration is valid for 10 years (with the possibility of extension to 15), making it very bottleneck for designers of seasonal collections to register each new lehenga. Since only registered designs are protected in India, a large portion of Sabyasachi’s inventory is vulnerable.

Ways to Tackle the Gaps:

1. Introduce Unregistered Design Rights: The European Union Community Unregistered Design provides 3 years automatic protection for designs that are unregistered. This was also backed in the case of Karen Millen Fashions v. Dunnes Stores[8]. Also supporting India’s precedent in the suit of Carlsberg Breweries A/S vs Som Distilleries And Breweries Ltd.[9], the Supreme Court indicated its openness to legislative reform by acknowledging that design legislation must change to reflect business realities.
2. Boost Validity Checks: Courts must scrutinize the novelty and originality under Sections 4 and 19 of the Designs Act, 2000 at the interim stage itself. The suit Godrej Sara Lee Ltd. v. Reckitt Benckiser (India) Ltd.[10] showcases how a proactive validity review ought to be done prior to issuing injunctions.

• Allow Dual Protection: By creating a precise standard for copyrighting design features on “useful articles” such as apparel, the Star Athletica, LLC vs. Varsity Brands Inc.[11] decision enhances twofold protection for fashion designs. This test makes it clear that conceptual, not physical, separability is crucial, stating that a design can be protected by copyright if it can be interpreted as a distinct piece of art that would be eligible for protection on its own. In the above cases of Anita Dongre and Sabyasachi, where designers frequently encounter obstacles under the Designs Act, 2000, which can restrict or even eliminate copyright protection, this precedent is extremely pertinent. This decision enables designers to contend that the aesthetic components of their clothing, such as distinctive stitching, motifs, or designs, are conceptually distinct from the practical purpose of the item. By avoiding the restrictions of the Designs Act, 2000 and providing more robust legal protection against imitation, this may allow them to bring copyright infringement claims for these creative elements. If it complies with Section 2(c) of the Copyright Act, Indian courts may review the Microfibres Case and allow copyright for solely artistic stitching, even on mass-produced lehengas.
• Dissect Deeper into Passing-off and Trade Dress: In the case of Colgate Palmolive (India) Ltd. & Anr. v. Anchor Health and Beauty Care Pvt. Ltd.[12], the Delhi High Court awarded Colgate an injunction after determining that Anchor’s use of a similar red and white colour scheme and packaging was likely to mislead customers. The Court acknowledged that a product’s trade dress, which includes colour combinations and packaging, might acquire a secondary significance in the eyes of customers and so be protected under passing off law. This displays a comparable notion to dual protection, in which a product’s visual identity, in addition to its functional usage, is legally protected from copying in order to avoid consumer misunderstanding.

CONCLUSION

The Anita Dongre and Sabyasachi suits demonstrate Indian courts’ willingness to defend high-fashion designers, but they also reveal systemic weaknesses in the country’s intellectual property framework. Couture businesses are vulnerable to knock-offs due to lack of novelty scrutiny, and limited damages. Without legislative reform to include unregistered design rights, better interim validity checks, and punitive consequences, such successes will be transient rather than long-term safeguards for India’s apparel industry.

India may develop a more balanced framework that encourages invention while discouraging misuse. Only then can designers innovate with confidence, free from the continual worry of piracy.

Another key aspect sometimes disregarded in piracy claims is the interaction between couture houses and traditional communities. While designers rely on the Designs Act and the Copyright Act to protect their work, many of these works draw heavily on traditional knowledge and cultural expressions. In such circumstances, the lack of consent or benefit-sharing agreements with artisan communities raises doubts about legitimacy. International tools such as the WIPO Draft Articles on the Protection of Traditional Cultural Expressions emphasise the need to strike a balance between intellectual property rights and ethical responsibility to source communities. Unless Indian law recognises this junction, there is a risk that fashion IP protection would become a one-sided weapon that favours elite designers while ignoring the very guardians of the culture it tries to commercialise.

---

[1] House of Anita Dongre v. Rishi Vij & Ors.,CS(COMM) 64/2020

[2] Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd. (2008) 10 SCC 657

[3] 2016 SCC OnLine Del 606 : (2016) 65 PTC 349 (DB)

[4] 2009 SCC OnLine Del 1647 : (2009) 40 PTC 519 (DB)

[5] Micolube India Limited v. Rakesh Kumar Trading as Saurabh Industries & Ors., 199 (2013) DLT 740

[6] Sabyasachi Calcutta LLP vs. Asiana Couture & Ors.[6] CS(COMM) 533/2021

[7] Reckitt Benckiser (India) Ltd. v. Wyeth Limited is (2010) 173 DLT 693 or (2010) 44 PTC 589 (Del)

[8] Karen Millen Fashions v. Dunnes Stores, C-345/13 in the CJEU

[9] Carlsberg Breweries A/S vs Som Distilleries And Breweries Ltd. 2019 (77) PTC 1 (Del)

[10] Godrej Sara Lee Ltd. v. Reckitt Benckiser (India) Ltd., 2006 (32) PTC 307 (Del)

[11] Star Athletica, LLC v. Varsity Brands, Inc., 580 U.S. 405 (2017)

[12] Colgate Palmolive (India) Ltd. & Anr. v. Anchor Health and Beauty Care Pvt. Ltd., 2003 (27) PTC 478 Del.

Authored by: Ms. Shivani Bhattiprolu

Ms. Shivani Bhattiprolu is a student at NALSAR University of Law, Hyderabad. She has a keen interest in Intellectual Property and is looking to build a career in this line of work. She has previously interned at places wherein she gained practical exposure by developing her skills in research, drafting and understanding the nuances of IPR.  With this background, she is motivated to further specialize in IPR and contribute to the field through both academic and professional pursuits.