‘Design Cannot Constitute Trademark’; Delhi HC Dismisses Passing Off Suit By Crocs Inc [Read Judgment]

Dismissing the suits filed by multinational footwear manufacturer Crocs, the Delhi High Court has held that suit for action against passing off solely based on a design registered under the Designs Act 2000 is not maintainable.

“In my opinion, 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”, held Justice Rajiv Sahai Endlaw.

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. Against some manufacturers, it filed separate suits for design infringement and passing off. It also filed some suits with composite actions of design infringement and passing off.

In the suits filed for design infringement, the Court had earlier declined interim injunction on the ground of prior publication of the design. In this backdrop, Crocs pressed for interim relief in the passing off suits.

While hearing the prayer for interim relief, the question of maintainability of passing off action on the basis of a registered design arose.

The plaintiff relied on the recent five judges’ bench decision of the High Court which held that composite suit for passing off and design infringement can be maintained. It argued that the three judges bench decision in Mohan Lal v Sona Paint which held that actions for passing off and design infringement cannot be maintained was overruled by a five judges’ bench in Carlsberg Breweries v Som Distilleries and Breweries Ltd.

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