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In the matter of M/s Crocs Inc USA V. M/s Bata India & Ors the Delhi High Court’s division bench laid down that a suit for passing off based on a design registered under the Designs Act will be maintainable. The above stated observation of division bench overturned the earlier Single Bench’s decision of same court and stated that it will not act as a precedent to bar for suits seeking relief of restraint of passing off registered design used as trademark/trade dress. The current appeal before Division Bench was filed by multinational footwear manufacturer Crocs, against the decision of Single Judge Bench which held that a design cannot constitute a trademark, and hence passing off action in relation to the registered design cannot be maintained. This decision of single judge led to the dismissal of six passing off suits filed by Crocs against several footwear manufacturers, who were allegedly selling products by copying the distinct shape trademark of Crocs footwear.
The plaintiff in present matter argued that their 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. However, on the other hand the defendants contended that trademark cannot be design under the Designs Act. They argued 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. 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.
The division bench after hearing the arguments observed that the judgment of Single Bench which held “passing off action was not maintainable in respect of design” has highly relied upon the five judges' bench decision in Carlsberg Breweries v Som Distilleries and Breweries Ltd which had approved the dictum in Mohan Lal v Sona Paint this relying upon by the learned single judge prima facie appeared to be an incorrect understanding. The bench in present matter held that "Prima facie this understanding by the learned Single Judge in the impugned judgment of what the majority in Mohan Lal held and what Bhat J. as part of the FJB in Carlsberg observed does not appear to this Court to be correct. There is prima facie merit in the contention on behalf of the Plaintiff that the impugned order of the learned Single Judge unwittingly reiterates the minority view in Mohan Lal which by no means was, even impliedly, affirmed by the FJB in Carlsberg". Therefore, on the basis of above observation the Division Bench proceeded to hold that the Single Bench judgment will not constitute a precedent to bar other shape trademark suits for passing off action qua registered design of the plaintiff.
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