Delhi High Court decision- ‘design cannot constitute trademark’

The Delhi High Court on Crocs Inc. USA v/s. Aqualite India Limited and ors. held that a registered design cannot constitute a trade mark. It is decided by Delhi High Court while rejecting a plea filed by multinational footwear manufacturer Crocs Inc’s restraining some of the footwear companies from copying its registered design.

In this case, footwear manufacturer 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. So, it filed suits against those manufacturing companies for design infringement and passing off. The passing off action arises when there is misrepresentation and the misrepresentation harms the plaintiff’s goodwill and trademark.

In the suits filed for design infringement, the Court declined interim injunction on the ground of prior publication of the design, but the plaintiff is entitled to interim injunction in these suits on the ground of passing off.

In the suit, the plaintiff Crocs INC.USA held that the distinct design of the footwear can be used as a ‘trademark’ on the ground that under Trademarks Act 1999, shape can be a trademark and hence action of passing off based on the design was maintainable.

In response, the defendants contended that –

  1. A design cannot be a trademark under the Designs Act.
  2. A passing off action is maintainable for trade dress and not for design. Trade Dress means extra features in the design which can be protected as a trade mark.
  3. Crocs is using registered design as trade dress. But it has not claimed for any extra feature beyond the registered design which can be protracted as trade mark.

Taking into consideration the arguments of both the parties and other leading Judgments, the High Court of Delhi dismissed the suit filed by Crocs Inc.USA and held that:

  1. As per Section 2(d) of Designs Act, a registered design cannot constitute a trademark.
  2. The features of designs such as shape, configuration, pattern, or colours applied to any article, even if used as a trade mark, cease to be a trade mark on registration being granted to the same as a design.
  3. Once the design registration is obtained, the Registered Proprietor is to be deemed to have surrendered, abandoned, and waived all rights to use such features as a trade mark.
  4. The Registrant of a design is entitled to passing off claim if there are extra features in the product and goodwill of such product is copied.
  5. Crocs has failed to show anything extra feature beyond the registerd design which can be protected by passing off actions.

Thus, it is opined that what is protected as a design cannot enjoy trade mark protection by virtue of trade dress under Trade Marks Act 1999.

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