Crocs Inc. v. Bata India Ltd. and Others

2019 SCC  OnLine Del 6808

PARTIES

The Appellate is Crocs Inc;

The Respondents are, inter alia, Bata  India Ltd.,  Liberty  Shoes Ltd., Action     Shoes    Pvt.     Ltd.,     Aqualite     India    Ltd.,     Bioworld Merchandising India Ltd., Relaxo Footware Ltd., and Kidz Palace.

BRIEF FACTS

The Plaintiff was unsuccessful in a suit filed for design infringement as the designs on which the suit was filed were found to be not new or original and therefore the Plaintiff pressed for the injunction on the ground of passing off of trademark which is an action in common law.

It was settled by  an earlier judgment of a five judge bench that as long as the elements of design are not used as a trade mark, but a larger trade dress get up, presentation of the product through its packaging and so on, given that a passing off claim can sustain.

A passing off action has been held to be maintainable with respect to elements of trade dress and overall get up, other than registered design and not with respect to registered design.

ISSUE

Whether a design can also function as a trademark?

APPLICABLE RULE

Section 2(d), Designs Act, 2000

ARGUMENTS

It  was  argued  by   the  Defendants   that  if  the  passing off  action  is claimed  of  elements of  the design as  a trade mark, no passing off action  lies.  Since  the  plaintiff  itself  relied on  use  of  its  registered designs as a shape trade mark and no additional features qualifying as trade dress,  which are not part  of  the  registered design have been pleaded or pointed out, the passing off suit is not maintainable.

DECISION

The court agreed with the Defendant that the plaintiff has not been able to show any extra features, besides the design, which is used as a trade mark. The Court interpreted the legislative intent of the Design Act which is to grant limited monopoly by design registration and after the term of registration, it should be open for anyone to use the said design.

The court held that a registered design cannot constitute a trade mark; however if there are features  other than those registered as a design and are shown to be  used as a trade mark and with respect to which goodwill has been acquired,  it is only those extra features which can be protected as  a  trade  mark. If there has been a copy   of registered design, only an action for infringement under the Designs Act would lie

Author: Tarun Khurana (Partner and Patent Attorney), Abhishek Pandurangi (Partner and Patent Attorney) and Niharika Sanadhya, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com.

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