Registration of Tread Pattern Nearly Identical To ‘Suit Pattern’ As A Design Would Not Disentitle It From Being Regarded As Trademark: Delhi HC

In a case relating the alleged copying of the tread pattern of tyres, the Delhi High Court has ruled that registration of a tread pattern, which is nearly identical to the suit pattern, as a design would not ipso facto operate to disentitle it from being regarded as a “trade mark” within the meaning of the Trade Marks Act, 1999. "At the highest, the matter would be one of trial, in which it would have to be examined whether the tread pattern which was registered as a design was identical or nearly identical to the suit pattern," Justice C. Hari Shankar said in an order.The court was dealing with the argument that whether Apollo Tyres Limited, which has filed a suit against Pioneer Trading Corporation accusing it of violating a 2018 settlement agreement, deserves to be non-suited on the ground that it had applied for registration of the suit pattern as a design under Section 5 of the Designs Act. It was argued before the court that Apollo Tyres by making such application has lost its right to ascertain any statutory or common law right in respect of the tread pattern treating it as a trademark in view of the statutory exception of Trademarks from the definition of “design”, contained in Section 2(d) of the Designs Act.Justice Shankar said the issue of whether a mark is eligible to be regarded as a “trade mark” has to be decided solely on the basis of the definition of “trade mark” and other associated definitions contained in the Trade Marks Act. "It cannot be decided on the basis of Section 2(d) of the Designs Act. If a mark is eligible to be regarded as a “trade mark” under the Trade Marks Act, that would, by virtue of Section 2(d) of the Designs Act, make it ineligible to be regarded as a “design” under the Designs Act. That is the direction in which these two statutes operate, and not vice versa," said the court.The court accepted that it might be expressing an opinion somewhat different from the view expressed in Dart Industries as followed in Havells India Ltd. v. Panasonic Life Solutions India Pvt. Ltd. However, the court said the need for any further debate on the issue is, however, obviated by the fact that, in the present case, the subject pattern has not been registered as a design."The ineligibility for being regarded as a “trade mark”, even as per the decisions in Dart Industries and Havells India Ltd would operate only in respect of registered designs. The suit pattern is not a registered design. Though the plaintiff had applied for registration of the design, the plaintiff had subsequently applied for cancellation of the earlier application," it added.On merits, the court said the defendants, at least at the prima facie stage, cannot contend that the suit tread pattern was common to the trade or that it was a tread pattern which was used by several radial truck tyre manufacturers, in view of the terms of settlement."The implied acknowledgement of the fact that the impugned tread pattern in CS (Comm) 739/2017, read with the recording, in the settlement agreement, of the plaintiff's contention that its tread pattern was unique and distinct, indicates, at the very least, that the defendants acknowledged the impugned tread pattern in CS (Comm) 739/2017 as being deceptively similar to that of the plaintiff, so as to made out a case of passing off," said the court.On comparing the two tread patterns, the court said the only difference that one can see in the two patterns is in the nature of the cuts/incisions on the cubes on the two tread patterns. "Otherwise, the placement of the various cubes/ pieces in the two tread patterns is identical," said the bench.Observing that the aspect of passing off, it is well-settled, has to be decided from the point of view of an average consumer who purchases the tyres, the court rejected the argument that CEAT has, by agreeing to manufacture and sell the tyres, recognised the distinctive nature of their tread pattern."The ordinary purchaser of truck tyre does not have access either to the expertise of the CEAT personnel or to the [Indian Rubber Manufacturers Research Association] IRMRA certificate. The tread pattern which was impugned in CS (Comm) 739/2017 is, to an average purchaser, nearly identical to the tread pattern impugned in the present case," said Justice Shankar.Noting that the court in the order dated August 17, 2017 has already held that the tread pattern is a source indicator and that a purchaser of a truck tyre would purchase the tyre on the basis of the tread pattern, the court said impugned tread pattern in the present case may justifiably be regarded as deceptively similar to the tread pattern of the plaintiff‟s tyres."Vis-à-vis the settlement agreement dated 27th February 2018, therefore, this Court is prima facie of the view that the defendants have, in fact, carried out only cosmetic changes to the tread pattern forming subject matter of CS (Comm) 739/2017. These changes cannot be treated as sufficient compliance with the undertaking in the ...

Registration of Tread Pattern Nearly Identical To ‘Suit Pattern’ As A Design Would Not Disentitle It From Being Regarded As Trademark: Delhi HC

Parina Katyal

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