Author: Pranay Bali
Shapes, designs, patterns, etc. applied to products can be protected under trademark laws as well as design laws. Depending upon the nature of use and purpose, a proprietor of such a shape or pattern may choose to protect the same under either of these statutes, viz. the Trade Marks Act, 1999 or the Designs Act, 2000. Once the intellectual property has been registered under a specific statute, it can be protected and enforced solely as per the provisions contained thereunder. However, there has been some uncertainty as to whether and to what extent the relief of passing off (being a common law remedy) can be availed in respect of a registered design, in addition to the relief of infringement of design.
Relevant provisions under the respective statutes
The confusion regarding overlapping protection stems in part from the broad definition of a trademark under the Trade Marks Act, 1999 – “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colour” (emphasis supplied). It is, therefore, evident that visually, the same subject matter could qualify for trademark or design protection. Of course, the essential ingredient for being a trademark, which clearly differentiates it from a mere design is that it must be “capable of distinguishing the goods or services of one person from those of others”. Therefore,only in scenarios where the graphical representation or shape fulfils this requirement, can it be protected as a trademark and remedies of infringement and passing off [under Sections 29 and 27(2) of the Trade Marks Act, respectively] can be available in respect thereof.
The definition of a “design” under the Designs Act clarifies its distinction from a trademark – ““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,…but does not include…any trade mark…”. This provision clarifies that a trademark cannot be registered as a design and therefore, simultaneous protection under the statutes is not permissible.
Unlike the Trade Marks Act, the Designs Act does not contain any provision for the relief of passing off. Regardless, there has been longstanding confusion and debate regarding whether the common law remedy of passing off is available in respect of designs or not.
The Delhi High Court’s judgment in Tobu Enterprises Pvt. Ltd. v. Megha Enterprises [1983 PTC 359] was one of the earliest decisions on the aspect of concurrent trademark and design protection. The Plaintiff sought a permanent injunction against the Defendant on the grounds of infringement of its registered designs and passing off. The Court held as follows:
“The right against ‘passing off’ is a common law right. But that right is subject to the provisions of a particular statute. In the present case, Section 53 of the Act deals with the remedy of injunction and claim of damages and rendition of accounts. That does not provide for any remedy against any alleged passing off…
Had there been any intention of the Legislature that the passing off would entitle a plaintiff to obtain an injunction, that could have been so expressly stated as had been done in section 27 of the Trade and Merchandise Marks Act, 1958…Therefore, in cases designs are registered under the Act, the doctrine of passing off has no application…” (emphasis supplied)
The Court very clearly stated that the relief of passing off cannot be claimed in respect of a registered design and there is no scope of overlap between these laws. However, in Smithkline Beecham Plc. And Ors. v. Hindustan Lever Limited And Ors. [2000 (52) DRJ 55], the Delhi High Court, while referring to Tobu Enterprises, arrived at a contrary conclusion:
“The Plea that concept of passing off cannot be made applicable to a case of design is…without merit…Infringement right accrues on the basis of the provisions of the Design Act whereas the passing off rights accrue on the basis of Common Law rights… It is true that there is no similar section to that of section 27 of the Trade and Merchandise Marks Act in the Design Act. Section 27(2) of the Trade and Merchandise Marks Act gives a statutory recognition to the passing off rights making the said rights a statutory right as well but that does not mean that in absence of a similar provision to that of the provisions of Section 27 in the Trade and Merchandise Marks Act the right of passing off would not be available to a case of design.” (emphasis supplied)
These two judgments, both delivered by Single Judges of the Delhi High Court, had therefore, taken contrary positions on the issue of availability of passing off in respect of registered designs.
In 2013, this issue came up before a three-judge bench of the Delhi High Court in Mohan Lal & Ors. v. Sona Paint and Hardwares [AIR 2013 Delhi 143]. The Plaintiffs, being the owners of design registrations, claimed design infringement as well as passing off. The Court held that
“…a design can be used as a trade mark and if by virtue of its use, goodwill is generated in the course of trade or business, it can be protected by an action in the nature of passing off…
…having regard to the definition of a design under Section 2(d) of the Designs Act, it may not be possible to register simultaneously the same mater as a design and a trade mark. However, post registration under Section 11 of the Designs Act, there can be no limitation on its use as a trademark by the registrant of the design. The reason being: the use of a registered design as a trade mark, is not provided as a ground for its cancellation under Section 19 of the Designs Act.” (emphasis supplied)
Accordingly, the Court held that the remedy of passing off would be available to the owner of a registered design if it is being used as a trademark and has become the source identifier of the proprietor’s products. However, the Court held that design infringement and passing off are different causes of action, incapable of being unified in a single suit.
Thereafter, the issue whether the actions of design infringement and passing off of trade dress can be consolidated in a single composite suit was dealt-with comprehensively by a five-judge bench of the Delhi High Court in Carlsberg Breweries A/S. v. Som Distilleries and Breweries Ltd. [AIR 2019 Delhi 23]. Carlsberg had filed the suit seeking reliefs of infringement of design and a decree for injunction against passing off of the trade dress, get up, and label of its bottle for the beer ‘Tuborg’. The Defendant relied on the judgment in Mohan Lal, to contend that design infringement and passing off cannot be unified in a single suit.
After perusing the judgment in Mohan Lal, the Court made an important observation – “if the registered design per se is used as a trade mark, it apparently can be cancelled…however,…as long as the elements of the design are not used as a trademark, but a larger trade dress get up, presentation of the product through its packaging and so on, given that a “passing off” claim can include but is also broader than infringement of a trademark, the cause of action against such use lies.” (emphasis supplied)
This judgment has clarified that use of a registered design as a trademark is a ground for cancellation of the design registration under Section 19 of the Designs Act and therefore, passing off cannot be claimed in respect of the exact subject matter forming part of the design registration. It has further clarified that passing off may be claimed in respect of the larger get up, trade dress and presentation of the product. Composite suits for claims of design infringement and passing off have been held to be maintainable.
Recently, in Crocs Inc. USA v. Bata India Ltd. & Ors. [RFA(OS)(COMM) 22/2019 & CM APP No. 22655/2019], Crocs had filed separate suits for design infringement and passing off of the trademark/trade dress in the shape of its ‘Crocs’ footwear. The Single Judge dismissed the passing off suits as not maintainable on the ground that no passing off action is available with respect to a registered design. Crocs appealed against this decision.
During pendency of the appeal, Crocs sought a limited interim relief to the effect that during the pendency of the suit, the judgment of the Single Judge should not prevent the Plaintiff from filing similar passing off suits against other parties.
After a detailed reading of the judgments in Mohan Lal and Carlsberg, the Division Bench granted the interim relief sought by the Plaintiff, holding as follows –
“The Single Judge misinterpreted the majority judgment in Mohan Lal to mean that a registered design cannot be protected as a trademark at all…
…during the pendency of these appeals, the impugned judgment of the learned Single Judge will not…bar other STSs of the Plaintiff, whether pending or to be filed against parties (other than the Respondents/Defendants in these appeals) seeking the relief of restraint of passing off qua its registered design used as a trademark/trade dress, get up, presentation of the products.” (emphasis supplied)
The formulation developed in Carlsberg was applied in this order and has generally clarified this aspect significantly in India.
Based on the judicial precedents, the current position on the overlap of trademark and design protection can be summed up as follows:
No passing off claim is available in respect of the exact subject matter forming part of a design registration, because if such subject matter is used as a trademark, the design registration would be liable to be cancelled, as per the Designs Act. A passing off claim may be available in respect of the overall trade dress, get-up, shape, features, combination of colours, etc. of the product (if the same qualify for trademark protection), which are beyond the specific elements of the product registered as a design. Passing off claims of the above nature can be made even during the subsistence of the design registration and can be combined with a suit for design infringement.
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