The passing off suit with respect to a registered design being used as a trademark, is maintainable, has been decided by the Delhi High Court. This was in respect to appeals by footwear manufacturer Crocs Inc USA (appellant) against an order passed by a single-judge Bench. The appellant's Shape Trademark Suits (STSs) with respect to its rights in the 'Crocs Design Footwear' as a trademark/trade dress on the ground that they were not maintainable and was dismissed by the single judge bench.The single-judge Bench had opined that the passing off pleaded in the plaint was on the basis of use of a registered design by the respondents.
Interim relief was sought to the extent that during the pendency of these appeals, the order of the single-judge Bench would not prevent it from filing similar STSs against other parties. A passing off action was not maintainable in relation to the use of a registered design as a trademark but only in relation to its use as 'a larger trade dress, get up, presentation of the products through its packaging' and so on. Interim relief was granted to the appellant and allowed the institution of other STSs by the appellant against parties other than the respondents for seeking the relief of restraint or passing off qua its registered design used as a trademark/trade dress, get up, presentation of the products through its packaging.