Recap – For those of you who missed part 1 of my post, can access the same here. In part 1 of my post, I had discussed about the suits filed by Crocs Inc. for infringement of their registered designs under numbers 197685 and 197686 and why interim injunction on the ground of infringement of designs was denied to Crocs. The said design registrations were obtained by Crocs on 28th May, 2004, renewed upto 28th May, 2019.
In this post I am going to focus on the six passing off suits filed by Crocs Inc. against footwear companies including Aqualite, Action Shoes, Bioworld Merchandising etc. The passing off suits pertained to the Crocs right in the “Crocs Design Footwear” as a trade mark/trade dress.
The Hon’ble High Court of Delhi on 18th February, 2019 pronounced that the six suits were not maintainable and resultantly dismissed them. The Ld. Single Judge was of the opinion 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 trade mark/trade dress, restrain another from passing off its goods as that of the registrant, by copying the registered design.”[1]
The reasoning of the Ld. Single Judge was that the definition of Design in Section 2(d) of the Designs Act excludes trade mark and a perusal of the statement and the objective of the Designs Act, 2000 shows that the same is intended to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity, while removing impediments to the free use of available designs.
The Ld. Single Judge also expressed that in his view, “the only inference from a harmonious reading of the law relating to trade mark and the law relating to designs is, that what is registered as a design cannot be a trade mark, not only during the period of registration as a design but even thereafter.”[2]
The Ld. Single Judge placed reliance on the judgment of the Full Bench (FB) of High Court of Delhi in Mohan Lal v. Sona Paint & Hardwares (2013) 55 PTC 61 (Del)(FB) (hereafter “Mohan Lal”) and interpreted the same to conclude that “A closer reading of the majority opinion in Mohan Lal shows the same also to be holding that what is usable and protectable as a trade mark is ―something extra or more than what is registered as a design. The majority opinion in Mohan Lal supra cannot be read as holding what is registered as a design, can also be used as a trade mark and is protectable as a trade mark.”[3] The Ld. Single also observed that subsequently the majority opinion of the Five Judge Bench (FJB) in Carlsberg Breweries[4] was not contrary to the majority view in the Mohan Lal case.
Based on the said interpretation, the Ld. Single Judge held that a registered design cannot be a trade mark. The suit of passing off filed by Crocs Inc. was not maintainable considering Crocs was claiming passing off of their registered design as trade mark/trade dress and that they had failed to show any extra features, other than the registered design, which is used and has goodwill as a trade mark and which can be protected in these actions for passing off.
Aggrieved by the decision of the Ld. Single Judge, Crocs preferred an appeal before the Division Bench of the Court.
First the Division Bench discussed the Mohan Lal case and observed that Issue II alone was relevant i.e. whether there can be an availability of 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? The majority in Mohan Lal had held that “a holder of a registered design can institute an action for passing off”.[5] The Division Bench further observed that majority in Mohan Lal while deciding the Issue III i.e. whether a composite suit can be filed for infringement of a registered design along with an action for passing off had answered in the negative. However, it had held that if two separate suits are filed for the two reliefs, the Court could try the two suits together.
The Division Bench then discussed the Carlsberg Breweries case and observed that only Issue III of the Mohan Lal case constituted the subject matter of reference before the FJB of Carlsberg Breweries i.e. whether a composite suit can be filed for infringement of a registered design along with an action for passing off? The FJB in Carlsberg Breweries had held that there can be a composite suit combining two causes of action i.e. design infringement and passing off.
The Division Bench in its short interim order dated 29.05.2019 held that during the pendency of these appeals, the impugned judgment of the Ld. Single Judge will not have precedential effect to bar other such suits of Crocs, whether pending or to be filed against parties (other than the parties which form part of this appeal), seeking the relief of restraint of passing off qua its registered design used as a trademark/trade dress, get up, presentation of the products through its packaging, and so on.
It is yet to be seen what the final judgement is passed by the Division Bench of the High Court of Delhi based on the merits and points of law in the present pending appeal.
[1]Crocs Inc. USA v. Aqualite India Ltd. & Anrs. CS(COMM) 903/2018 & other connected matters, Para 38
[2] Crocs Inc. USA v. Aqualite India Ltd. & Anrs. CS(COMM) 903/2018 & other connected matters, Para 38 R
[3] Crocs Inc. USA v. Aqualite India Ltd. & Anrs. CS(COMM) 903/2018 & other connected matters, Para 38 V
[4] Carlsberg Breweries Vs. Som Distilleries 2018 SCC OnLine Del 12912
[5] RFA (OS) (COMM) 22/2019 & other connected matters, Order dated 29.05.2019, Para 15
