The passing off suits based solely on the registered design is not maintainable.

Dismissing the suits filed by multinational footwear manufacturer Crocs Inc., the Delhi High Court has held that suit for action against passing off solely based on a design registered under the Designs Act 2000 is not maintainable.

The High Court delivered the above-mentioned reasoning in the matter of Crocs Inc. USA v. Aqualite India Ltd. & Anr. [CS (COMM) 903/2018 & IA 16586/2018 [Under Order XXXIX Rule 4 CPC)], dated 07.03.2019.

Challenges
Crocs had filed separate commercial suits in the High Court against several footwear manufacturers alleging that they were copying and adopting the distinct design of Crocs. Against some manufacturers, it filed separate suits for design infringement and passing off. It also filed some suits with composite actions of design infringement and passing off.

In the suits filed for design infringement, the Court had earlier declined interim injunction on the ground of prior publication of the design. In this backdrop, Crocs pressed for interim relief in the passing off suits. While hearing the prayer for interim relief, the question of maintainability of passing off action based on a registered design arose.

The plaintiff relied on the five judge’s bench decision of the High Court Carlsberg Breweries v Som Distilleries and Breweries Ltd. which held that composite suit for passing off and design infringement can be maintained.

Held

Referring to Section 2(d) of the Designs Act 2000, the Court held if the feature of the shape, configuration, pattern, ornament or composition of lines or colors applied to any article is being used as a trade mark, it cannot be registered as a design.

The court explained that the ratio in the Carlsberg Breweries case had expressly affirmed the view taken in Mohan Lal Vs. Sona Paint & Hardwares (2013) 55 PTC 61 (Del), where it was decided that design cannot be per se used as trademark. The Court further explained that the Design Act granted protection only for a limited period, therefore, permitting the use of registered design as a trademark will amount to granting extra protection, which the law never contemplated.

The Court concluded by observing that the registrant of a design would thus be entitled to maintain an action for passing off against other, not by showing that such another has adopted the registered design of the registrant but by showing that the product of such registrant, besides the registered design, also has other/extra features and goodwill in respect whereof has accrued and which extra features have been adopted / copied by another.