25 April, 2019
The definition of design as mentioned in the Indian Designs Act specifically excludes trademark and relying on this exclusion, the Delhi High Court in a passing off suit filed by Crocs agreed with the prohibition contained in the Designs Act held that a registered design cannot be a trademark. The features of designs such as shape, configuration, pattern, ornament or composition of lines or colours applied to any article, even if used as a trade mark, cease to be a trade mark on registration being granted to the same as a design. It was held that once the design registration is obtained, the Registered Proprietor is to be deemed to have surrendered, abandoned, acquiesced and waived all rights to use such features as a trade mark.
The plaintiff was unsuccessful in a suit filed for design infringement as the designs on which the suit was filed were found to be not new or original and therefore the Plaintiffs pressed for the injunction on the ground of passing off which is an action in common law. It was settled by an earlier judgment of five judge bench that as long as the elements of design are not used as a trade mark, but a larger trade dress get up, presentation of the product through its packaging and so on, given that a passing off claim can sustain.
A passing off action has been held to be maintainable with respect to elements of trade dress and overall get up, other than registered design and not with respect to registered design. It was argued by the Defendant that if the passing off is claimed of elements of the design as a trade mark, no passing off action lies. Since the plaintiff itself relied on use of its registered designs as a shape trade mark and no additional features qualifying as trade dress, which are not part of the registered design, have been pleaded or pointed out, the passing off suit is not maintainable. The court agreed with the Defendant that the plaintiff has not been able to show any extra features, besides the design, which is used as a trade mark.
The Court interpreted the legislative intent of the Design Act which is to grant limited monopoly by design registration and after the term of registration, it should be open for anyone to use the said designs. The legislative intent will be defeated if the design after its term was allowed to be used as trademark. The court used the analogy of patents rights which is granted for a limited period and observed that the intention to give design protection for a limited time cannot be extended to protection in perpetuity by claiming trademark rights. Therefore court gave an opinion that not only the registered design cannot be a trade mark during the period of design registration but even thereafter.
Accordingly, the court 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 where to goodwill has been acquired, it is only those extra features which can be protected as a trade mark. If there has been a copy of registered design, only an action for infringement under the Designs Act would lie.
One interesting point which may have overlooked by the court was the fact that the injunction sought in design infringement suit was not given as the designs were found to be not new or original and if there were no design rights in the beginning then the court could have ruled in favour of plaintiff in passing off action. The relief in a passing off may be available to Plaintiff if the design registrations were found to be invalid and therefore the dismissal of the passing off suit altogether may be challenged.
For further information, please contact:
Omesh Puri, LexOrbis
mail@lexorbis.com
