'Design Cannot Constitute Trademark'; Delhi HC Dismisses Passing Off Suit By Crocs Inc [Read Judgment]

Dismissing the suits filed by multinational footwear manufacturer Crocs, the Delhi High Court has held that suit for action against passing off solely based on a design registered under the Designs Act 2000 is not maintainable. "In my opinion, a registered design confers on the registrant, only the right to restrain another from infringing the design and not to, also claiming the registered design as its trade mark/trade dress, restrain another from passing off its goods as that of the registrant, by copying the registered design", held Justice Rajiv Sahai Endlaw. Crocs had filed separate commercial suits in the High Court against several footwear manufacturers alleging that they were copying and adopting the distinct design of Crocs. Against some manufacturers, it filed separate suits for design infringement and passing off. It also filed some suits with composite actions of design infringement and passing off.In the suits filed for design infringement, the Court had earlier declined interim injunction on the ground of prior publication of the design. In this backdrop, Crocs pressed for interim relief in the passing off suits. While hearing the prayer for interim relief, the question of maintainability of passing off action on the basis of a registered design arose. The plaintiff relied on the recent five judges' bench decision of the High Court which held that composite suit for passing off and design infringement can be maintained. It argued that the three judges bench decision in Mohan Lal v Sona Paint which held that actions for passing off and design infringement cannot be maintained was overruled by a five judges' bench in Carlsberg Breweries v Som Distilleries and Breweries Ltd. It was plaintiff's case that the distinct design of the footwear can be used as a 'trademark' on the ground that under Trademarks Act 1999, shape can be a trademark and hence action of passing off based on the design was maintainable. The defendants contended that trademark cannot be design under the Designs Act.They contended that if what is registered as a design is also given protection as a trade mark, it would run counter to the rights for a limited period in a design. That would be akin to permitting using design rights as trademark through backdoor.The defendants also urged that Carlsberg did not overrule the dictum in Mohan Lal that a suit for passing off based on design can be maintained only if the something extra than the registered design is claimed as trademark.It was pointed out that the the plaintiff did not point out any extra feature over the registered design so as to constitute the trademark.To decide the case, following questions were framed : Whether a registered design of a plaintiff can constitute a trade mark to confer on such plaintiff a right to restrain another, not on the ground of infringement of its design but on the ground of passing off its goods as that of the plaintiff by adopting the registered design of the plaintiff, or to confer on such plaintiff a right to restrain another on the ground of both, infringement of design and passing off; Whether the passages quoted above of Carlsberg Breweries adjudicate the said controversy and even if the answer is in the affirmative, whether the said passages are contrary to Mohan Lal and if so to what effectDesign cannot constitute trademarkJustice Endlaw noted that the Designs Act was a complete code in itself, being an Act made to "consolidate and amend" law relating to designs.Referring to Section 2(d) of the Designs Act, the Court held if the feature of shape, configuration, pattern, ornament or composition of lines or colours applied to any article is being used as a trade mark, it cannot be registered as a design.As a corollary, the bench held that design cannot be used as a trademark as well. The contention of the plaintiff that design can be used as trademark as Trademarks Act did not prohibit was rejected in the following manner :"Once the legislative intent is that a trade mark cannot be a design, the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article, even if used as a trade mark, cease to be a trade mark on registration being granted to the same as a design, and a registrant is to be deemed in law to have surrendered, abandoned, acquiesced and waived all rights to use such features as a trade mark. Else, there would be an anomalous situation, with there being in existence a prohibition to use a trade mark as a design but there being no prohibition to use of a design as a trade mark and such anomaly cannot be attributed to any law making authority. A prohibition contained in one statute has to be given effect to, while interpreting all other statutes".The Court also noted that the Design Act granted protection only for a limited period. Therefore, permitting the use of registered design as a trademark will amount to granting extra protection, which the law never contemplated :"The...

'Design Cannot Constitute Trademark'; Delhi HC Dismisses Passing Off Suit By Crocs Inc [Read Judgment]

Manu Sebastian

The passing off suits based solely on the registered design were held to be not maintainable.

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