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April 29, 2026

Legal Issues Seminar-General IP (LIS-GIP) On “Whether A Passing Off Action Can Lie On The Basis Of Use Of Features Registered As A Design?”

Featuring: Alolika Chakraborty

A Legal Issues Seminar – General IP (LIS-GIP) was conducted by Alolika Chakraborty, Associate, on the issue: “Whether a passing off action can lie on the basis of use of features registered as a design?” The seminar examined the intersection between design protection and trademark law, and unpacked the evolving jurisprudence from Mohan Lal to Carlsberg and the recent Crocs decisions, highlighting the judicial shift from permitting passing off based on “trademark use” of a design (subject to goodwill and misrepresentation) to drawing a more nuanced distinction between “mere trademark use” and use as part of a larger “trade dress”. The discussion further explored the interpretative tensions arising from the Carlsberg judgement, especially the phrase “not limited or restricted to trademark use alone”, which subsequently led to competing understandings of the threshold for sustaining a passing off action. The seminar ultimately highlighted the continuing uncertainty in the law, particularly in delineating when the use of design elements goes beyond mere trademark use and amounts to protectable trade dress capable of sustaining a passing off claim. 

The Presentation can be accessed here.

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