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The Delhi High Court dismissed suits filed by multinational footwear manufacturer, Crocs. It is not maintainable to pass off suit for action solely based on a design registered under the Designs Act 2000. This was after the footwear manufacturer co. filed commercial suits against various footwear manufacturers & alleged them of copying and adopting the distinct design of Crocs.
An interim injunction filed on the ground of prior publication of design, was earlier denied by the Court. Crocs later pressed for interim relief.
Justice Rajiv Shai Endlaw observed:
"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"
The question of maintainability of passing off action based on a registered design was taken during the hearing for interim relief.
The plaintiff prayed that according to the provisions under the Trademark Act 1999, the unique design of the footwear can be used as a trademark i.e. the shape can be a trademark and hence the suit action of passing was maintainable. The plaintiff argued that a five judges' bench in Carlsberg Breweries v Som Distilleries and Breweries Ltd. overruled the three judges bench decision in Mohan Lal v Sona Paint which held that actions for passing off and design infringement cannot be maintained.
The defendant alleged that the Carlsberg was did not overrule the judgement in Mohan Lal as passing off based on design can only be maintained when there is something extra than the usual the registered design claimed for as a trademark.
The Court in its decision that design cannot be solely used as a trademark, referred to the observation made in paragraph 45 of the Carlsberg case-
"The larger legal formulation in Mohan Lal (supra), that a passing off action i.e. one which is not limited or restricted to trademark use alone, but the overall get up or "trade dress" however, is correct; as long as the elements of the design are not used as a trademark, but a larger trade dress get up, presentation of the product through its packaging and so on, given that a "passing off" claim can include but is also broader than infringement of a trademark, the cause of action against such use lies"
The court observed, ”A closer reading of the majority opinion in Mohan Lal shows the same also to be holding that what is usable and protectable as a trade mark is "something extra" or more than what is registered as a design. The majority opinion in Mohan Lal supra cannot be read as holding what is registered as a design, can also be used as a trade mark and is protectable as a trade mark",
Justice Endlaw observed that causes of action of design infringement & passing off cannot be clubbed in a single unit. Hence, action of passing off needs to based on something extra than the registered design.
The Court held, Crocs had not been to able to show something extra, other than the design, to use it as it's trademark.
It held that "a registered design cannot constitute a trade mark; however if there are features other than those registered as a design and are shown to be used as a trade mark and with respect whereto goodwill has been acquired, it is only those extra features which can be protected as a trade mark"
"A registrant of a design would thus be entitled to maintain an action for passing off against other, not by showing that such another has adopted the registered design of the registrant but by showing that the product of such registrant, besides the registered design, also has other/extra features and goodwill in respect whereof has accrued and which extra features have been adopted / copied by another"
Design Cannot constitute Trademark.
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