22 May 2020
A Cancelled Design Registration Does Not Bar an Action for Trademark Passing-Off In today’s world with stringent Intellectual Property Laws in place, there still looms the probability of infringing intellectual property rights. This has ultimately led the aggrieved parties and the violators to knock the doors of the Judiciary to protect and enforce their rights.
Time and again there have been issues regarding trademark passing-off and design infringement which the courts have decided and laid down precedents. Foregoing the above, one such case in which the question raised was, whether a Design registration cancelled in the past bar any action for Trademark Passing-off? The answer to this has been dealt with in the landmark verdict passed by the High Court of Calcutta in SRMB Sri Jan Pvt Ltd vs Super Smelters Ltd & Ors1 case. The Petitioner (SRMB Sri Jan Pvt Ltd), who runs a business of manufacturing, selling and distribution of TMT bars, grills since 2001. It has been manufacturing TMT bars with a distinct surface pattern with letter “X” and SRMB embossed on the surface of the bars. Image Source: SRMB Steel Further, the Petitioner had registered the design in 2003. However, the registration was cancelled in 2010 by the Design Office on the grounds of prior publication2 following the objection filed for cancellation by Tribeni Industries Pvt Ltd. Subsequently, the Petitioner filed a Trademark application for the mark “X” ribs pattern TMT bars in the year 2016 on the basis of prior use.
Further, the Petitioner alleged that the Defendant (Super Smelters Ltd & Ors) who is also a manufacturer of TMT bars with elliptical helix pattern describing the said pattern as “YY” rib, which looked identical to that of the Petitioner’s pattern. The Petitioner also sent a Cease and Desist Notice to the Defendant to stop them from using the similar pattern for which the Defendant had obtained a trademark registration- a rectification application was filed against the registered trademark which was pending. The Petitioner further alleged that the Defendant wanted to misrepresent its goods to cause confusion in the minds of the consumers and this amounts to unfair trade practice of passing-off as the Petitioner is the prior user of the alleged mark. Image Source: Super Smelters Ltd In response to the Petitioner’s allegations, the Defendant asserted that, the Petitioner’s alleged “X” pattern mark has been cancelled under the Designs Act, 2000 and the Petitioner is not permitted to use the same design as trademark and further argued that under Section 283 and Section 294 of the Trade Marks Act, rights are conferred only on the proprietor of registered trademark. They further said that they have not infringed the unregistered mark of the Petitioner who is trying to exercise monopoly over the disputed pattern. The Court considered the submissions and looked into the question that – whether a remedy for passing off is available in the absence of express saving or preservation of the common law by Designs Act, 2000 and when the rights and remedies under the act are statutory in nature. The Court considered precedents5 in which it was observed that:
(i) a design includes shape under Section 2 (d)6 of the Designs Act, 2000 (ii) design can be used as trademark if it has achieved goodwill in the course of trade (iii) the Trademarks Act does not deprive an unregistered proprietor from the right to protect (iv) such a proprietor has to prove that they were using the registered design as a trademark which has acquired goodwill in the minds of public (v) passing off action lies only if unregistered mark is used in business and gained reputation (vi) the disputed design used as trademark must identify the proprietor as a distinguished supplier of relevant goods/services (vii) the Designs Act does not allow simultaneous registration of design and trademark, however there are certain provisions wherein after registration no restriction can be imposed on the use of the design as trademark, and using a registered design as a trademark is not a ground for cancellation. In accordance with the above, the Court considered the Petitioner’s claims that they are the prior user of the disputed pattern as they furnished invoices and related evidence in support of the claim. Based on above findings, a temporary injunction restraining the Defendant from manufacturing/distributing/marketing the impugned pattern was passed. Aggrieved by the decision, the Defendant appealed before the Calcutta High Court and cited that the Plaintiff’s design, now claimed as trademark, is not distinctive when compared with others products in the same class. They further appealed that the Plaintiff’s mark is purely for technical function and should be refused registration or any relief. The Defendant also contended that the Plaintiff filed a trademark application for the disputed design due to the fear of cancellation of registration of the design application for non-novelty. Against the appeal, the Petitioner claimed that the shape of the TMT bars does not just fulfil technical function but also establishes uniqueness. They further said that as per the trademark law, a mark also includes the ‘shape of a product’ and that the disputed mark fulfils both criteria – technicality and distinctiveness. The Court, after hearing the submissions of both the parties made the following observations:
(a) The technical and functional aspects of the product are interwoven and do not exist independent of each other. (b) The Plaintiff has continuously, extensively and widely used the “X” rib pattern as a trademark which established distinctiveness and qualifies for protection. (c) The marks of both the parties are identical. (d) The balance of convenience lay with the Plaintiff as they are the prior users of the disputed design. (e) As established in one of the precedents7 establishing the trinity test8 , an unregistered trademark can be protected and the rights against passing off are superior than the rights conferred through registration. (f) The previous cancellation of registration of design on the ground of prior publication or lack of novelty cannot be a ground for refusal for registration of such a design as a trademark or for conferring rights of action under passing off.
Finally, the Court dismissed the appeal by upholding the Order which restrained defendants from using the design, by stating that: “A registered design, after its expiry, may not lose its distinctiveness and end up fulfilling all the requirements of a trade mark. In this scenario, not recognizing the said mark as a trademark because of its extended monopoly like that of the design monopoly would be to conflate the two which are independent of each other. If a person proves that his mark has attained all the requirement to function as a trademark and entitled for right to passing off action, then merely the said mark was a design earlier does not defeat the very purpose of trademark law and extend not the purpose of design law”.9 Analysis This is a unique case concerning two pillars of intellectual property law- Trademarks and Designs. The basic question that whether a design rejected for registration can be considered as a trademark was resolved by the court. The overlap between the statutes was clarified by establishing that the rights of prior user, who has established distinctiveness, must be protected even if they do not own the design or the trade mark. It must be noted that even if a design was denied registration or the registration was cancelled, it does not conclude that the product is not distinctive. Moreover, it does not strip a user of such design or trade mark from exercising their intellectual property rights if they have used it continuously, extensively and widely. As discussed above, just because few provisions of the two statutes are overlapping in nature does not deny the fact that the two statutes operate independently of each other. Conclusively, the decision serves as a precedent for courts while deciding cases where different sets of statutes clash.
Article was 1st published with Lexology.
For further information, please contact:
Manisha Singh, Partner, LexOrbis
manisha@lexorbis.com
1 ‘SRMB Sri Jan Pvt Ltd vs Super Smelters Ltd & Ors’ (Calcutta High Court G.A. No. 2127/2019) 2 Section 19 (b) of the Designs Act, 2000;
2 Section 19 (b): that it has been published in India or in any other country prior to the date of registration. Meaning- the Design should be available in tangible form and not merely on papers
3 Section 28 of Trade Marks Act, 1999- ; Section 28 confers rights on the registered proprietor for action against infringement
4 Section 29 of Trade Marks Act, 1999- relating to Infringement; Section 29 Infringement means unconstitutional use of the exclusive statutory rights of a registered trademark constitutes infringement.
5 Mohan Lal v. Sona Paint & Hardwares, 2013 (55) P.T.C. (Del.) (F.B.), Carlsberg Breweries v. Som Distelleries, A.I.R 2019 Del. 23: (2019) 256 D.L.T. Dart Industries Inc. & Ors Vikay Kumar Bansal & Ors 837/2016, MANU/DE/3231/2019
6 d) “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device
7 S. Syed Mohideen v. P.Sulochana Bai, (2016) 2 S.C.C. 683
8 Laid down in S. Syed Mohideen v. P.Sulochana Bai, (2016) 2 S.C.C. 683- Trinity Test; (1) goodwill owned by a trader, (2) misrepresentation, and (3) damage to goodwill
9 Para 38 of Super Smelter Limited v. SRMB Srijan Pvt. Limited (C.S. No. 192 of 2019)
