In Apollo Tyres Ltd. v. Pioneer Trading Corporation & Anr [2017 (72) PTC 253 (Del)], the Delhi High Court on 2017.08.17 has, in a suit for passing off of the Plaintiff’s tread pattern in respect of its truck tyre under mark ENDURANCE LD 10.00 R20, confirmed an ad-interim injunction restraining from using a similar tread pattern, pending trial.
The Defendant’s interlocutory application for vacation of ad-interim injunction was dismissed and the earlier ad-interim order in favour of the Plaintiff was confirmed. The Defendant had contended that tread patterns in tyres are functional and no proprietary rights as trademark can be claimed. Further, that uniqueness in tread patterns may be registrable designs and therefore no action of passing off as a trademark lies.
The case deals with shape of goods as trademarks under Section 2(1)(zb) “…trade mark… may include shape of goods…” and Section 9 “…A mark shall not be registered as a trade mark… the shape of goods which results from the nature of the goods themselves… which results from the nature of the goods themselves…”. The judgement holds:
“…. No party can claim proprietary over the technique/ practice of providing treads in a tyre, since treads are functional, i.e. they afford the necessary grip between the tyre and the ground … However, that does not mean that the unique pattern of the tread adopted by a particular manufacturer,…would not be entitled to protection as a design – if it is registered, and as a trademark- if the tread pattern has been exploited as a trademark i.e. a source identifier. What is functional in a tyre are …”treads” and not “tread pattern”…”
The court while determining that the tread patterns could be protected as trademarks notwithstanding protection under the Designs Act, also held that shape and features of goods not registered as a design does not disentitle suing for trademark passing off.
“Copying of the unique shape of the goods could lead to confusion with regard to the source.. the submission…that the tread pattern…constitutes a design-registrable…and failure of the plaintiff to get its design…registered deprives the plaintiff of protection against passing off has no merit, and is rejected.”