Passing off suit with respect to Registered Design used as trademark maintainable, Delhi HC

The Delhi High Court has recently given a prima facie view that a passing off suit with respect to a registered design being used as a trademark, is maintainable..The view forms part of an order pronounced by a Division Bench of Justices S Muralidhar and Asha Menon in a batch of appeals by footwear manufacturer Crocs Inc USA (appellant) against an order passed by a single-judge Bench..The single-judge Bench had dismissed the appellant’s Shape Trademark Suits (STSs) with respect to its rights in the ‘Crocs Design Footwear’ as a trademark/trade dress on the ground that they were not maintainable..The single-judge Bench had opined that the passing off pleaded in the plaint was on the basis of use of a registered design by the respondents. In view of the Full Bench decision of the High Court in Mohan Lal v. Sona Paint & Hardwares (2013) and Five Judge Bench (FJB) decision in Carlsberg Breweries v. Som Distilleries (2019), the same was not permissible in law..The defendants in the suit were footwear manufacturers Aqualite, Action, Bioworld, Liberty, Bata and Relaxo (respondents)..In appeal before the Division Bench, the appellant sought interim relief to the extent that during the pendency of these appeals, the order of the single-judge Bench would not prevent it from filing similar STSs against other parties..While the appellant contended that the Single Judge erred in holding that no passing off action would lie in respect of a registered design used as a trademark, the respondents defended the inference..After hearing the parties, the Court perused the finding of the Court in Mohan Lal. It stated that “in summary“, the majority in Mohan Lal had held that a “holder of a registered design can institute an action for passing off.”.The Court further referred to the decision in Carlsberg to state that whether a passing off action was maintainable along with an action for infringement of a registered design was not even an issue before the Court in that case. The issue in Carlsberg was limited to whether a composite suit in relation to infringement of a registered design and for passing off was maintainable, it said..However, in the majority judgment of Justice S Ravindra Bhat, a reference was made to the reasoning used to justify allowing post-registration usage of design as a trademark under the Design Act to opine that the view of the majority of the Full Bench in Mohan Lal was “inaccurate”..Justice Bhat had however agreed with “the larger legal formulation” in Mohan Lal and added that as long as the elements of the design were not used as a trademark but as a larger trade dress get up, presentation of the product through its packaging and so on, a cause of action for passing off would lie..The Court concluded that the pertinent issue was whether the Five-Judge Bench had in making the above observations in Carlsberg held that a passing off action was not maintainable in relation to the use of a registered design as a trademark but only in relation to its use as ‘a larger trade dress, get up, presentation of the products through its packaging’ and so on..After analyzing the issue, the Court observed that the discussion in Carlsberg was only in the context of allowing composite suits for design infringement and passing off..“As the discussion in paragraphs earlier to and subsequent to the above-extracted paragraph of the opinion of Bhat, J. would show, the above observations were only in this limited context and for reaching the conclusion that it was not necessary to file two separate suits and that there could be one composite suit claiming both reliefs.”.The Court further stated that the statement with respect to “the larger legal formulation in Mohan Lal” suggested prima facie that the Court in Carlsberg upheld the view of the majority of Mohan Lal..Importantly, Carlsberg did not explicitly or impliedly overrule the FB in Mohan Lal with respect to the issue, it said..The Court thus found prima facie merit in the contention raised by the appellant that the Single Judge “unwittingly reiterated the minority view in Mohan Lal which by no means was, even impliedly, affirmed by the FJB in Carlsberg.”.The Court, therefore, granted interim relief to the appellant and allowed the institution of other STSs by the appellant against parties other than the respondents for seeking the relief of restraint or passing off qua its registered design used as a trademark/trade dress, get up, presentation of the products through its packaging, and so on..“In other words, the maintainability of such STSs, if an issue arises in that regard, would be decided independent of the impugned judgment of the learned Single Judge which is under challenge in the present appeals”, the Court ordered..The appellant was represented by Senior Advocate Akhil Sibal with Advocates SK Bansal, Ajay Amitabh Suman, Nikhil Chawla and Shriya Misra. .Bata was represented by Advocates Neeraj Grover, Anushka Arora and Vasui Tarpriya..Liberty was represented by Advocates Jayant Mehta, Kapil Wadhwa, Devyani Nath and Deepika Pokharia..Aqualite was represented by Advocates Peeyoosh Kalra and Rohan Seth..Bioworld was represented by Advocates Anil Dutt, VS Mani and Sutapa Jana..Relaxo was represented by Advocates MK Miglani and Anand Raj. .Action Shoes was represented by Advocates Kapil Wadhwa, Devyani Nath and Deepika Pokharia..[Read Order].Bar & Bench is available on WhatsApp. For real-time updates on stories, Click here to subscribe to our WhatsApp.