No absolute rule of election of a shape or configuration as either a design or a trademark: Delhi High Court permits maintainability of suit of passing-off a registered design as a Trade Mark / Trade Dress

Hon’ble High Court of Delhi in February 2019 had pronounced that once a party secures a registered design then, it completely forecloses any possibility of seeking remedies under the relief of passing-off of that registered design as a trade dress/trade mark¹. In the words of the Single Judge, the Court held that “a registered design confers on the registrant, only the right to restrain another from infringing the design and not to, also claiming the registered design as its trademark/ trade dress, restrain another from passing off its goods as that of the registrant”²

Thus, the logical conclusion that followed from the Judgment was requiring every potential registrant of design at the inception to make a choice: either to seek registration of that shape under the Designs Act, 2000 and enjoy a statutory monopoly of 15 years or forego the remedy under the Designs Act and seek protection as a trademark / trade dress and enjoy the common law remedy of passing-off along with additional statutory protection under Trade Marks Act, 1999.

The absolute proposition in which such an election was framed had the immediate effect of negating any registered design of seeking relief of passing-off as a trademark/trade dress. The Court was moved by the fact that enabling parties to seek dual reliefs would be opening doors to “unnecessarily extend[ed] protection beyond what is necessary to create the required incentive or design activity”³ The Court also reasoned that since Section 2(c) of the Designs Act, 2000 excluded a trademark from the definition of design and thus, leading to the conclusion that there can be no possibility of institution of suit on the ground of passing-off the registered design as a trade dress/trademark.

The Court also relied upon the Full Bench Judgment of Mohan Lal v Sona Paint⁴to arrive at the conclusion that for a party to seek passing-off of a registered design as a trademark/trade dress, the party had to show “something extra”⁵.Applying this reasoning to the facts of the case, the Court had concluded that the design in the suit pertaining to the footwear covered the entire footwear. And since the facts revealed that nothing was added to the footwear, therefore, the Plaintiff could not maintain a suit for passing-off the registered design as a trade dress.

The Plaintiff aggrieved by the dismissal of its suit preferred an appeal before the Division Bench of the High Court challenging the order. The Division Bench in its short interim order, as the final judgment is currently pending, halted the above-mentioned Judgment from having any precedential effect⁶. The Division Bench negative the Judgment stating that a suit for passing off of a registered design as a trademark/trade dress is maintainable.

The implication of this order is that the stringency of the previous order that rendered every registrant of registered design incapable of seeking relief of passing-off as a trade dress until the registrant shows “something extra” is negated. The upshot is that the implicit logic of making an election by a registrant between registering its design under the Designs Act, 2000 or seeking protection as a trademark is also negated.

The reasoning of the Court returned to the full bench judgment in Mohan Lal v. Sona Paint² which pertained to three distinct questions. This included the specific question “Whether there can be an availability of the remedy of passing off in absence of express saving or preservation of the common law by the Designs Act, 2000 and more so when the rights and remedies under the Act are statutory in nature?”⁸. The Court had answered this question in an affirmative where the Court had expressly formulated the answer as: “If [passing off of a registered design as trade dress] is instituted, the plaintiff would have to demonstrate that the registered design was used by him as a trademark which, in the minds of purchasing public is associated with his goods or services which, have acquired goodwill/reputation which is worth protecting”⁹. One of the key reasons behind this finding was that such a position serves public interest because it advances business interests of the owner of the trademark and second, it prevents confusion as to source and origin of goods.

The above position has remained valid for the last six years. The reason as to its strength was the possibility that a registered design may in some instances come to acquire such goodwill that it would begin to serve an identifying function to the public. In such cases, the remedy of passing-off would ensure that third parties are not able to dupe consumers. The implicit safeguard built in Mohan Lal being that the party contending that a registered design is capable of being protected under the remedy of passing-off as trade dress would have to first show that the party has acquired goodwill in the minds of the public in the design.

1. Crocs Inc. USA v. Aqualite India Limited (2019) SCC OnLine Del 7409, Para 38
2. Crocs Inc. USA v. Aqualite India Limited (2019) SCC OnLine Del 7409, Para 38
3. Crocs Inc. USA v. Aqualite India Limited (2019) SCC OnLine Del 7409, Para 38(A)
4. Mohan Lal v. Sona Paint and Hardwares, (2013) SCC OnLine Del 1980.
5. Crocs Inc. USA v. Aqualite India Limited (2019) SCC OnLine Del 7409, Paras 40(U)-(V)
6. Crocs Inc USA v. Bata India RFA(OS)(COMM) 22/2019 order dated 29th May 2019 Para 26
7. Mohan Lal v. Sona Paint and Hardwares, (2013) SCC OnLine Del 1980
8. Mohan Lal v. Sona Paint and Hardwares, (2013) SCC OnLine Del 1980 Para 4
9. Mohan Lal v. Sona Paint and Hardwares, (2013) SCC OnLine Del 1980, Para 22

Hersh Sewak

Hersh Sewak is a graduate from WBNUJS, Kolkata in year 2014. He thereafter joined the Litigation team of S Majumdar & Co in Delhi. He has appeared before the Delhi High Court, District Court, Customs Office and Tribunals in all types of intellectual property law matters. He has a special interest in matters that involve intersection of different laws and regulations. He thereafter completed his Masters in Law (LLM) in International Economic and Business Law from Kyushu University, Japan.

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