INTRODUCTION
The Design Act was enacted in 2000 in response to a perceived need to safeguard industrial designs that boosted the commercial worth of a product by making it more visually appealing. The primary goal of protecting a product's design was to preserve the aesthetics appeal of the product as the manufacturers invest substantial capital and time in doing the research for such design. This was significant because it benefited manufacturers economically by making their products distinctive and appealing and viable, allowing them to stand out from their competitors.1
Under the Design Act, 2000, a design includes visual aspects of the product such as "shape, configuration, pattern, ornamentation, or the composition of lines or colours applied to any product or article using industrial methods which can be in the form of two dimensional or three-dimensional.2"
Further, section 2(d) of the Design Act excludes trademarks, property marks, and artistic works from the definition and ambit of the term "design".3
DESIGN PROTECTION
Industrial designs receive protection under the Design Act, 2000. Section 22 of the act permits the filing of an injunction and claims for damages between twenty-five thousand and fifty thousand rupees in the event of registered design infringement.4
The registered design is protected originally for a period of ten years with fifteen years being the maximum in case of extension being granted.5
OVERLAP AND INTERPLAY
Overlap occurs sometimes due to statutory provisions being ambiguous or when the statutory provisions itself provides for such overlap. It happens when different statutes provide overlapping definitions of different subject matter leading to multiple protections for the same subject.
The rationale behind avoiding overlap is to prevent individuals from claiming multiple protections for the same subject matter under separate legislations. This is important to prevent unjust enrichment or perpetual protection. Furthermore, the doctrine of election of remedies states that if a party possesses two or more inconsistent remedies for a single cause of action or resulting from a single transaction, then in that case only one remedy may be pursued in the end.6
This means that if a protection has been claimed under the trademarks act for a product, then there cannot be another claim under the design act for the same.
DESIGN PROTECTION UNDER THE TRADEMARKS ACT
As mentioned earlier, sometimes the statutory provision itself provides for an overlap. For example, the definition of a trademark overlaps with that of design.7
Furthermore, the design act provides that a design encompasses "thevisual aspects of the product such as shape, configuration, pattern, ornamentation, or the composition of lines or colours applied to any product or article using industrial methods in two dimensional or three-dimensional form and excludes trademarks, property marks, and artistic works protected by copyright law.8"
This means that there can be a situation where a product may qualify for protection under trademarks act as well as the design act. However, the design act explicitly prohibits registration of a product as "design", if it has already been registered under the trademarks act.9 This means that if a trademark has been registered under Section 2(1)(zb) of the Trademarks Act of 1999, it cannot be registered under the Design Act of 2000.
Thus, the law is clear that trademarks are not eligible for registration as designs; nonetheless, the problem arises when a design is sought to be registered as a trademark.
This is because design act explicitly prohibits registration of a trademark as design but the vice versa is not true. The trademark act is silent on whether a product already registered as a design can also be registered as a trademark.
The court's view on whether a product registered as a design can also be registered as a trademark has evolved over time.
CASE STUDIES
1. Tobu Enterprises Pvt. Ltd. v. Megha Enterprises10
In this case, a suit for injunction was filed by the plaintiff against defendants dealing in tricycles for infringingthe design of the plaintiff that was registered under the design act. The plaintiff sought damages for both design infringement and the tort of passing off.
However, the court noted that the damages for passing off cannot be claimed under the design act as it lacks any such provision and can only be claimed under the Trademarks Act of 1958 as it included a saving clause for passing off actions.
2. SmithKline Beecham Plc. And Ors. v. Hindustan Lever Limited And Ors11
The court took a different stand in this case. After losing the claim for design infringement of the toothbrush, the plaintiffs in this case claimed damages for passing off. The defendant argued that such a claim does not have any basis in the Design Act.
In this instance, however, the Delhi High Court departed from previous reasoning by asserting that dual protection might be sought under overlapping IP regimes, particularly for shapes, which could be protected under both design and trademark laws. The court held that the law of passing off is rooted in common law rights, making it a distinct remedy arising from a different context and, therefore, it can be claimed separately from design infringement.
3. Mohan Lal & Ors. v. Sona Paint and Hardwares12
If a product initially registered as a design, gains a secondary meaning over time and may come to be recognized as a distinctive source identifier or brand identifier for the associated product or goods, then it can be protected as a trademark. The court clarified this in this case.
The Delhi High Court's three-judge panel ruled that if a design starts to act as a trade mark, and if the mark has acquired a secondary meaning with time such that it has become a source identifier then, the common law remedy of 'passing off' will be applicable.
The court gave the reasoning that when the Trademarks Act gives protection to the registered trademark then it does not deprive an unregistered trademark of a remedy, as the person can still seek protection under passing off.
Similarly, the Design Act may not have a saving clause but after attaining a secondary meaning it would have the right to be protected through instituting the action of passing off.13
In the present case, the action of passing off becomes available when the design starts functioning as trademark.
4. Carlsberg Breweries A/S. v. Som Distilleries and Breweries Ltd.14
The court overruled Mohan Lal's decision, which held that if a design is initially registered under Section 11 of the Designs Act, the registrant has no constraints on using that design as a trademark because doing so is not among the grounds of cancellation of registration under section 19 of the Design Act.
The court disagrees with this observation because it ignores a crucial clause of the Designs Act, namely Section 19(e). This provision specifies that a registered design may be revoked if it is in contravention with the definition of a design as defined in section 2(d) of the Designs Act. Section 2(d) provides that a "design" is the visual features applied to an article, excluding trademarks.
As a result, the court held that using a registered design as a trademark may be grounds for cancellation under Section 19(e) if it does not fit the criteria for a design as established by law.
The Delhi High Court's five-judge bench also overruled the Mohan Lal decision and stated that a combined lawsuit addressing both a passing off action and a design infringement action is permissible in a court of law because the facts that leads to court intervention in a design infringement and in passing off case is same.
5. Crocs Inc. USA v. Bata India Ltd. & Ors.15
In this case the famous footwear brand Crocs brought a suit against Bata and other footwear companies for allegedly infringing its registered design. The defendants argued that infringement was only possible when the registration of the design was valid. They argued that the clog shaped of the footwear lacked any novelty for it to be considered a valid design registration. The petitioners also brought a claim for passing off.
The Delhi High Court's two-judge bench heldthat while a design on its own cannot function as a trademark, the option of pursuing a passing off claim in a trade dress remains open if there is an element of "something extra" or an additional component beyond the registered design.16
The Court meant that if any extra features other than the registered design were used as a mark then only those additional features can claim protection as a mark. This means that no shape registered as a design can possibly gain the status of a mark.
Consider a scenario in which a footwear's unique strap has been registered as a design. In such a circumstance, a passing off claim can be soughtfor the complete trade dress of the footwear, except the strap. This claim, grounded in the footwear's trade dress rather than relying solely on design protection, might be permissible.17
CONCLUSION
Thus, a passing off claim cannot be pursued for the same subject matter covered by a design registration, as using such subject matter as a trademark may result in the cancellation of the design registration under the Designs Act.
This is because the legislative aim of the design act is to limit protection for a certain time; otherwise, it would result in permanent protection, conflicting with the temporary nature of design rights.
Thus, it can be inferred from the judicial pronouncements that a registered design cannot be protected under the Trademarks Act, and thus cannot claim the remedy of passing off as clarified by a two-judge bench in the Crocs case. However, it can only be pursued for a product if that product has an extra element that exceed the scope of the design registration.
REFERENCES
Brill, 'The Election of Remedies Doctrine in Arkansas' (1983) Arkansas Law Review 385 https://scholarworks.uark.edu/lawpub/61 accessed 12 May 2024.
Indian Bar Association, 'Passing Off Action under Trade Mark Law' (Indian Bar Association, 2013) https://www.indianbarassociation.org/wp-content/uploads/2013/02/Passing-off-action-under-trade-mark-law.pdf accessed 12 May 2024.
Mondaq, 'Crocs Inc. v Bata India Ltd. and Others' (Mondaq, 19 February 2020) https://www.mondaq.com/india/trademark/902632/crocs-inc-v-bata-india-ltd-and-others accessed 27 May 2024.
V.K. Ahuja, Law Relating to Intellectual Property Rights (3rd edn, Lexis Nexis, 2017)
Footnotes
1. V.K. Ahuja, Law Relating to Intellectual Property Rights (3rd edn, Lexis Nexis, 2017)
2. Designs Act 2000 (India) s 2(d).
3. Ibid
4. Designs Act 2000 (India) s 22.
5. Designs Act 2000 (India) s 11.
6. H. Brill, 'The Election of Remedies Doctrine in Arkansas' (1983) Arkansas Law Review 385 https://scholarworks.uark.edu/lawpub/61 accessed 12 May 2024.
7. Trademarks Act 1999 (India) s 2(1)(zb).
8. Designs Act 2000 (India) s 2 (d)
9. Ibid
10. [1983 PTC 359]
11. 2000 (52) DRJ 55
12. AIR 2013 Del 143.
13. AIR 2013 DELHI 143
14. AIR 2019 DELHI 23
15. 2019 SCC OnLine Del 6808
16. Mondaq, 'Crocs Inc. v Bata India Ltd. and Others' (Mondaq, 19 February 2020) https://www.mondaq.com/india/trademark/902632/crocs-inc-v-bata-india-ltd-and-others accessed 27 May 2024.
17. Ibid.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.