*
IN THE
HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 18th February, 2019.
+
CS(COMM)
903/2018 & IA 16586/2018 (u/O XXXIX R-4 CPC)
CROCS
INC. USA ..... Plaintiff Through: Mr. Akhil Sibal, Sr. Adv. with Mr. S.K.
Bansal, Mr. Ajay Amitabh Suman, Mr.
Pankaj
Kumar, Mr. Kapil Giri, Mr. Vinay
Kumar
Shukla, Mohd. Sazeed Rayeen and
Mr.
Somnath Dey, Advs.
Versus
AQUALITE
INDIA LIMITED AND ANR ..... Defendants
Through: Mr. Peeyosh Kalra, Mr. C.A. Brijesh, Mr.
Rohan
Seth and Mr. Dhruv Grover, Advs.
AND
+
CS(COMM)
905/2016 & IA 8606/2016 (u/O XXXIX R-1&2 CPC)
CROCS INC
USA
..... Plaintiff Through: Mr. Akhil Sibal, Sr. Adv. with Mr. S.K.
Bansal, Mr. Ajay
Amitabh Suman, Mr.
Pankaj
Kumar, Mr. Kapil Giri, Mr. Vinay
Kumar
Shukla, Mohd. Sazeed Rayeen and
Mr.
Somnath Dey, Advs.
Versus
ACTION
SHOES PVT LTD & ANR ..... Defendants
Through: Mr. Kapil
Wadhwa, Ms. Deepika Pokharia,
Ms. Devyani Nath & Ms. Kaveri Jain,
Advs.
AND
CS(COMM) Nos.903/2018, 905/2016,
906/2016, 1415/2016, 569/2017 & 571/2017 Page
1 of 45
+
CS(COMM)
906/2016 & IA 8609/2016 (u/O XXXIX R-1&2 CPC)
CROCS INC
USA .... Plaintiff
Through: Mr. Akhil
Sibal, Sr. Adv. with Mr. S.K.
Bansal, Mr. Ajay Amitabh Suman, Mr.
Pankaj
Kumar, Mr. Kapil Giri, Mr. Vinay
Kumar
Shukla, Mohd. Sazeed Rayeen and
Mr.
Somnath Dey, Advs.
Versus
BIOWORLD MERCHANDISING INDIA LIMITED ..Defendant
Through: Mr. Anil
Dutt and Ms. Sutapa Jana, Advs.
AND
+
CS(COMM) 1415/2016 & IA 12767/2016 (u/O XXXIX R-1&2 CPC)
CROCS
INC. USA ..... Plaintiff
Through: Mr. Akhil
Sibal, Sr. Adv. with Mr. S.K.
Bansal, Mr. Ajay Amitabh Suman, Mr.
Pankaj
Kumar, Mr. Kapil Giri, Mr. Vinay
Kumar
Shukla, Mohd. Sazeed Rayeen and
Mr.
Somnath Dey, Advs.
Versus
LIBERTY
SHOES LTD & ORS ..... Defendants
Through: Mr. Jayant Mehta, Mr. Kapil Wadhwa, Ms.
Devyani Nath,
Ms. Kaveri Jain
and Ms.
Deepika
Pokharia, Advs.
AND
+
CS(COMM) 569/2017, IAs 1724 /2018 (u/O XI R-1 CPC) & 6809/2015 (u/O
XXXIX R-1&2 CPC)
CS(COMM) Nos.903/2018, 905/2016,
906/2016, 1415/2016, 569/2017 & 571/2017 Page
2 of 45
CROCS INC USA
Through:
..... Plaintiff
Mr. Akhil
Sibal, Sr. Adv. with Mr. S.K.
Bansal, Mr. Ajay Amitabh Suman, Mr.
Pankaj
Kumar, Mr. Kapil Giri, Mr. Vinay
Kumar
Shukla, Mohd. Sazeed Rayeen and
Mr. Somnath
Dey, Advs.
Versus
BATA
INDIA LTD & ORS ..... Defendants
Through: Mr. Neeraj
Grover, Mr. Anmol
Chadha,
Ms. Anushka Arora and Ms. Rudrartii
Kaur,
Advs.
AND
+
CS(COMM) 571/2017, IAs No.1726/2018 (u/O XI R-1(5) CPC) & IA
No.6811/2015 (u/O XXXIX R-1&2 CPC)
CROCS INC USA
Through:
..... Plaintiff
Mr. Akhil
Sibal, Sr. Adv. with Mr. S.K.
Bansal, Mr. Ajay Amitabh Suman, Mr.
Pankaj
Kumar, Mr. Kapil Giri, Mr. Vinay
Kumar
Shukla, Mohd. Sazeed Rayeen and
Mr.
Somnath Dey, Advs.
Versus
RELAXO
FOOTWEAR LTD ..... Defendant
Through: Mr.
Gaurav Miglani and Mr. Aanand Raj,
Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1.
Applications for interim relief,
in these suits for permanent injunction for restraining the defendant/s in each
of the suit from passing off its/their
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footwear as that of the plaintiff under the trade
mark ‗CROCS‘, by adopting and copying the shape trade mark/trade dress of the
plaintiff, and for ancillary reliefs were for consideration. Mr. Jayant Mehta,
arguing for all the defendants, while opposing the applications of the
plaintiff for interim relief on merits, also contended that the suits, on the
averments in the plaints therein, are not maintainable in the light of the
dicta of the Five Judge Bench of this Court in Carlsberg Breweries Vs. Som
Distilleries 2018 SCC OnLine Del 12912. The counsel for the plaintiff
and Mr. Akhil Sibal, Senior Advocate briefed by the counsel for the plaintiff
to address on the issue of maintainability, were also heard on the aspect of
maintainability.
2.
Thus, the very maintainability of
the suits is for adjudication and only if the suits are found to be
maintainable, the question of entitlement of the plaintiff to interim relief
will be considered, and counsels have been heard thereon also.
3.
Arguments, common in all the suits, have been heard
on 14th, 15th
February and today, with reference to
CS(COMM.)1415/2016 and the counsel for the plaintiff states that the plaint of
the plaintiff in the other suits, on aspects material for the purpose of
present judgment, is identical.
4.
The
counsel for the
plaintiff, in his
opening arguments on 14th
February, 2019, on enquiry, as to the status of the
long pending dispute between the parties with respect to the footwear of the
plaintiff known as ‗CROCS‘, informed (i) that the plaintiff initiated the
litigation for restraining some of the defendants from infringing the
registered design of the plaintiff with respect to ‗CROCS‘ footwear and from
passing of their
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goods as that of the plaintiff; (ii) composite
suits were filed against some of the defendants for infringement of design as
well as for passing off; (iii) however, on the Three Judge Bench of this Court
in Mohan
Lal Vs. Sona Paint & Hardwares (2013) 55 PTC
61 (Del) by majority holding that such composite suits did not lie, the
composite suits earlier filed were continued for the relief of infringement of
design only and these suits filed for the relief on the ground of passing off;
(iv) that suits against some of the defendants, from inception, were separately
filed on the ground of infringement of design and on the ground of passing off;
(v) that interim injunction was denied to the plaintiff in the suits on the
ground of infringement of design vide judgment reported as Crocs INC USA Vs. Liberty
Shoes Ltd. 2018 SCC OnLine Del 10325 in the said suits; (vi) the plaintiff
preferred appeals to the Division Bench of this Court against the denial of
interim injunction in the suits on the ground of infringement of design and
which appeal has also been dismissed on 24th January, 2019; and, (vii) however, it is the contention of the
plaintiff that notwithstanding the denial of interim injunction on the ground
of infringement of design, the plaintiff is entitled to interim injunction in
these suits on the ground of passing off.
5.
On enquiry from the counsel for
the plaintiff of the reason which prevailed before the Single Judge as well as
before the Division Bench for denying interim injunction to the plaintiff in
the suits on the ground of infringement of design, the counsel for the
plaintiff informed that the sole reason which prevailed was of ‗prior
publication of the design‘ but contended that the said prior publication found,
was not by any third party,
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but by the plaintiff itself and thus the said prima facie finding, though of the
Division Bench of this Court, does not come in the way of this Bench granting
interim injunction in these suits on the ground of passing off.
6.
On 14th February, 2019, it was enquired
from the counsel for the plaintiff that since the product/goods subject matter
of design registration and in respect of which passing off also is claimed are
the same and the plaintiff having been denied interim injunction in the suits
on the ground of infringement of design, what is the entitlement of the
plaintiff to interim injunction in these suits on the ground of passing off.
7.
The counsel for the plaintiff
contended that passing off is an action in a common law.
8.
It was enquired from the counsel
for the plaintiff, whether in common law, design was understood as a trade mark
and even if so, whether the said action in common law survives codification of
the law relating to designs, particularly if in the statute, the rights in a
design are restricted. It was further enquired, when the law relating to trade
marks was codified in India and in the world.
9.
The counsel for the plaintiff
stated that the law of trade marks was codified in India for the first time in
the year 1940, and to his knowledge, for the first time in the world, in United
Kingdom in the year 1938. With respect to the other query, it was argued that
the question is no longer res integra in view of the majority judgment of the
Three Judge Bench of this Court in Mohan Lal supra.
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10.
It was further enquired from the
counsel for the plaintiff, that the Designs Act 2000, as per its preamble being
an Act to consolidate and amend the law relating to protection of designs,
whether not was a complete Code in itself and just like it has been held in
relation to Copyright Act 1957, in The Warner Entertainment Company L.P. V. RPG
Netcom
(2007) 140 DLT 758, Entertainment Network (India)
Ltd. Vs. Super Cassette Industries Ltd. (2008) 13
SCC 30 and Krishika Lulla Vs. Shyam Vithalrao Devkatta (2016) 2 SCC 521
and
Navigators Logistics Ltd. Vs. Kashif Qureshi (2018) 254 DLT 307, that
it is a statutory right and no copyright exists outside the
statute, why should it not so be held in respect to design also. The reasoning
of the Three Judge Bench in Mohan Lal (supra) for holding
otherwise was also enquired.
11.
The counsel for the plaintiff, during the hearing
on 14th
February
2019 also informed that shape was included as a
trade mark for the first time in the Trade Marks Act, 1999. The same led to a
further query that, that being a position, how could an action on the ground of
passing off in relation to a design or a shape, lie under common law, if under
the common law design or shape was not understood as a trade mark. It was
enquired, whether there were any judgments of prior to codification of law
relating to trade mark, protecting design or shape as a trade mark. Attention
of the counsels was also drawn to my judgment in OK Play India Limited Vs.
Mayank
Agarwal (2016) 233 DLT 234, though following the precedent but expressing
reservations about rights in a design/shape, outside the Designs Act.
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12.
The counsel for the plaintiff
contended that under the Trade Marks Act of the years 1940 and 1958 also,
design/shape was being treated as a trade mark, without it being so expressly
provided in the Acts. The counsel for the plaintiff, on 15th February, 2019, in support of
shape being a trade mark under the common law, first drew attention to SRMB
Srijan Private
Limited Vs. Shree Gopal Concrete Private Limited MANU/WB/0182/2019. However, the same relates to a suit of the year 2019
and does not disclose that shape/design, under the common law of prior to the
codification of the law relating to trade marks, was understood as a trade
mark.
13.
The counsel for the plaintiff
next drew attention to Apollo Tyres Ltd. Vs.
Pioneer Trading Corporation 2017 (72) PTC 253 (DEL) to contend that
even the tread pattern on a tyre is protected. However, the same also does not
reveal recognition in common law of prior to codification, of shape/design as a
trade mark.
14.
The counsel for the plaintiff
next drew attention to Section 27(2) of the Trade Marks Act, 1999 but which
merely provides that nothing contained therein shall affect rights of action
against any person for passing off goods or services as the goods of another
person or as services provided by another person or the remedies in respect
thereof.
15.
However, the same also is not
found to be an answer to recognition in common law of design/shape as a trade
mark.
16.
The counsel for the plaintiff
then drew attention to paragraph 27 of the majority opinion in Mohal
Lal (supra) disagreeing with the view in
Tobu
Enterprises (P) Ltd. Vs. Joginder Metal Works AIR 1985
Del 244
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906/2016, 1415/2016, 569/2017 & 571/2017 Page
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holding that the remedy of passing off action qua a
design used as a trade mark is not available. It was held that in order to
institute a suit, right has not to be necessarily found in a statute enacted by
a Legislature and that unless a statute expressly or by necessary implication
prohibited the jurisdiction of a Court to entertain a suit, a Civil Court
cannot refuse to entertain a suit. Attention was also invited to Selvel
Industries Vs. Om Plast (India) MANU/MH/1120/2016 and
to
B.K. Engineering Co. Vs. UBHI Enterprises AIR 1985 Del 210.
17.
On 15th February, 2019, I enquired from
the counsel for the plaintiff, whether the Five Judge Bench in Carlsberg
Breweries supra had interfered with the reasoning of the majority
opinion in Mohan Lal supra as to the maintainability of a passing off
action.
18.
The counsel for the plaintiff
contended, that the reference to the Five Judge Bench in Carlsberg Breweries supra
was confined to the joinder of causes of action of the suits on the ground of
infringement of design and on the ground of passing off.
19.
The counsel for the plaintiff,
else argued that it is not in dispute (a) that the plaintiff is the first user
of the subject shape/design and none of the defendants claim use prior to that
by the plaintiff; and, (b) that the shape/design of the subject footwear of the
plaintiff and defendants is the same. It was contended that the plaintiff is
thus entitled to interim restraint against the defendants, in these suits on
the ground of passing off, though has been denied interim injunction in the
suits on the ground of infringement of design. Though the counsel for the
plaintiff went into some
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more detailing on the aspect of interim injunction, but the same will be
adverted to, if the suits are found to be maintainable.
20.
Finding the defendants in each of
the suit to be represented by different advocate/s and being of the opinion
that hearing counsels for all the defendant/s would delay hearing and lead to
multiplicity, while adjourning the hearing on 14th February, 2019, the counsels for
the defendants were requested to confer, with only one of the counsels making
the legal submissions, and the other counsels confining their arguments to
peculiar facts of their respective case.
21.
Mr. Jayant Mehta, Advocate,
making legal submissions on behalf of all the defendants on 15th February, 2019, in response to
my query contained in para 17 above, at the outset, drew attention to
paragraphs 1 to 5, 40 to 42, 44 and 45 of Carlsberg Breweries supra.
22.
Per paragraph 1, the question referred to in Carlsberg Breweries
supra was ―whether the decision in Mohan
Lal Vs. Sona Paint 2013 (55) PTC 61 (Del)(FB) – hereafter ―Mohan
Lal‖ on the aspect of maintainability of a composite suit in relation
to infringement of a registered design and for passing off, where the parties
to the proceedings are same needs re-consideration by a larger bench in the
light of Order II Rule 3 CPC, which permits joinder of causes of action‖.
Paragraph 2 shows that four of the five judges were in agreement with the
conclusions as well as analysis and reasoning of the fifth Judge on the Bench,
but the four Judges deemed it necessary to state additional reasons. Paragraph
4 records that Mohan Lal decided principally the question, whether a passing
off remedy is maintainable in the context of a complaint for infringement of
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copyright in the design and notices that one of the
questions for adjudication in Mohan Lal was ―Whether the
conception of passing off as available under the Trade Marks can be joined with
the action under the Designs Act when the same is mutually inconsistent with
that of remedy under Designs Act, 2000?‖. Paragraph 5 of the judgment
reproduces the reasoning given in Mohan Lal for holding that the cause
of action for an action for infringement of design and for an action of passing
off available under Trade Mark were different.
23.
I may at this stage only, also
refer to paragraph 20 of Carlsberg Breweries supra which
shows that the matter was considered under the following two points:-
―(a) Is the court compelled by
anything in law to reject a plaint for misjoinder, if two causes of action
cannot be clubbed:
(b)
Are the two causes of action, i.e. a claim for design infringement and
the other for passing off, so disparate or dissimilar that the court cannot try
them together in one suit;‖
24.
The Five Judge Bench, qua the
first of the aforesaid points concluded in paras 40 & 41 of the judgment,
that the conclusion in Mohan Lal, that two causes of
action, one for relief in respect of passing off and other in respect of design
infringement cannot be joined, was erroneous and overruled the same.
Thereafter, the Five Judge Bench, from paragraph 42 onwards, proceeded to
decide the second of the aforesaid two points.
25.
The contention of the defendants
before the Five Judge Bench, qua the second point aforesaid, as recorded in
paragraph 42 of the judgment was, that the conclusion in Mohan Lal was correct
because (i) there are significant differences between the causes of action
relating to design
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infringement
on the one hand and those based on the allegations of passing
off on
the other hand; (ii) while design infringement is based on a statutory
right,
passing off is a common law injury; (iii) the basis of former is design
of an
article for sale, whereas the latter is based on misrepresentation; (iv) a
design
infringement suit alleges that the design is novel, not based on any
previous
publication in India, whereas the passing off suit has to establish
that the
shape or mark has developed substantial goodwill and reputation
and
adoption of a deceptively or confusingly similar design or shape by the
defendants; and,
(v) that the
defences to the
two actions are
entirely
different. Dealing with the said
contentions, the Five Judge Bench in
paragraphs
44 and 45 of the judgment held as under:-
―44. A
registered design owner, this court notices, facially satisfies the test of
novelty (of the product’s design) and that it was not previously published. For
registration, the article must contain uniqueness or novelty in regard to
elements such as shape, configuration, pattern, ornament or composition of
lines of colours applied to any article; further there must be a visual appeal
to the article (i.e. the aesthetic appeal). However, if the defendant
establishes that indeed there was no novelty, or that a similar design had been
published earlier, in the public domain, the infringement claim would be
repelled. In respect of a passing of claim distinctiveness of the elements of
the mark, its visual or other presentation and its association with the trader
or owner needs to be established. The factual overlap here is with respect to
the presentation – in the design, it is the novelty and aesthetic presentation;
in a passing off action, it is the distinctiveness (of the mark) with the
attendant association with the owner. To establish infringement (of a design)
fraudulent imitation of the article (by the defendant) has to be proved.
Likewise, to show passing off, it is necessary for the owner of the mark to
establish that the defendant has misrepresented to the public (irrespective of
intent) that its
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goods are that of the plaintiff’s;
the resultant harm to the plaintiff’s reputation is an actionable claim.
45.
This court is also of the opinion that the Full Bench ruling in Mohan
Lal (supra) made an observation, which is inaccurate: it firstly correctly noted that
registration as a design is not possible, of a trade mark; it, however later
noted that ―post registration under Section 11 of the Designs Act, there can be
no limitation on its use as a trademark by the registrant of the design. The
reason being: the use of a registered design as a trade mark, is not provided
as a ground for its cancellation under Section 19 of the
Designs Act.‖ This
observation ignores that
the Designs Act,
Section
19(e) specifically exposes a registered design to cancellation when ―(e) it is
not a design as defined under clause (d) of section 2.‖ The reason for this
is that Section 2 of the Designs
Act,
defines ―design‖ as ―…the features of shape, configuration, pattern, ornament
or composition of lines or colours applied to any article….; but does not
include any trade mark as defined in clause
(v) of sub-section (1) of section 2 of the Trade
and Merchandise
Marks
Act, 1958….‖ Therefore, if the registered design per se is used as a trade
mark, it apparently can be cancelled. The larger legal formulation in Mohan Lal
(supra), that a passing off action i.e. one which is not limited or restricted
to trademark use alone, but the overall get up or ―trade dress‖ however, is
correct; as long as the elements of the design are not used as a trademark, but
a larger trade dress get up, presentation of the product through its packaging
and so on, given that a ―passing off‖ claim can include but is also broader
than infringement of a trademark, the cause of action against such use lies.‖
(emphasis added)
26.
The counsel for the defendants
then drew attention to the design registration of the plaintiff with Annexures
as follows:-
―
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The novelty of the article
resides in the shape and configuration of the footwear and in the pattern
applied thereto as shown in the accompanying representations.
No claim is made by virtue of
this registration in respect of any mode or principle of construction of the
footwear.
F.S. GROSER
of GROSER & GROSER
AGENT FOR THE APPLICANTS
Date: November 23, 2004
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906/2016, 1415/2016, 569/2017 & 571/2017 Page
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The novelty of the article
resides in the shape and configuration of the footwear and in the pattern
applied thereto as shown in the accompanying representations.
No claim is made by virtue of
this registration in respect of any mode or principle of construction of the
footwear.
F.S. GROSER
of GROSER & GROSER
AGENT FOR THE APPLICANTS
Date: November 23, 2004
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906/2016, 1415/2016, 569/2017 & 571/2017 Page
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The novelty of the article
resides in the shape and configuration of the footwear and in the pattern
applied thereto as shown in the accompanying representations.
No claim is made by virtue of
this registration in respect of any mode or principle of construction of the
footwear.
F.S. GROSER
of GROSER & GROSER
AGENT FOR THE APPLICANTS
Date: November 23, 2004
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906/2016, 1415/2016, 569/2017 & 571/2017 Page
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The novelty of the article
resides in the shape and configuration of the footwear and in the pattern
applied thereto as shown in the accompanying representations.
No claim is made by virtue of
this registration in respect of any mode or principle of construction of the
footwear.
F.S. GROSER
of GROSER & GROSER
AGENT FOR THE APPLICANTS
Date: November 23, 2004‖
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906/2016, 1415/2016, 569/2017 & 571/2017 Page
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27.
The counsel for the defendants,
then drew attention to paragraphs 4 to 7 of the plaint as under:-
―4. That
in the course of its business, the plaintiff has devised several unique shapes/trade
dress in relation to its said goods and business, some of which have become
distinctive of the plaintiff’s source, origin and authority. In the year 2004
the plaintiff has conceived and adopted one of such unique shape of its
footwear (referred to as said CROCS SHAPE TRADEMARK/TRADEDRESS) and true
representation whereof has been given herein below:
5.
That the plaintiffs said CROCS SHAPE TRADEMARK / TRADEDRESS is comprised
of several distinctive feature which is inclusive of following features:
(i).
The placement unique curved shaped strip on the vamp.
(ii).
Placement of unique toe box and toe cap.
(iii). The unique shaped heal
guard, heal guard strap, outer sole, middle sole, clip holding, placement of
clogs on the footwear.
(iv). The presence of unique
space trusstic, heal tip, toe tip at the bottom of the portion of the footwear.
(v). The unique compositions of
pattern and lines on the top inner side and bottom outer surface of the
footwear.
The
plaintiff’s said CROCS SHAPE TRADEMARK / TRADE DRESS is comprised of all of the
afore mentioned features both
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individually as well as
collectively and also as a whole shape of the footwear and shall be referred
accordingly in this proceeding.
6.
That in India in the year 29.11.2004 the plaintiff has also applied for
obtaining design registration for the said CROCS SHAPE TRADEMARK with priority
date as 28.05.2004. The same is registered in India under No.197685 which is
duly registered in its favour in India under the Designs Act, 2000. The said
design registration is legal, regular and in full force. The renewal in
relation to the aforementioned design registration is also duly filed with the
Design Office
7.
That the plaintiff is using the said registered Design as a SHAPE
TRADEMARK / TRADE DRESS in relation to its said goods and business. The plaintiff is using the said
CROCS SHAPE TRADEMARK as a trademark within the meaning of Sections 2(1)(m) and
2(1)(zb) of the Trade Marks Act, 1999 and is being so used by the Plaintiff in
relation to its goods in course of trade. The said CROCS SHAPE TRADEMARK being
applied to the footwear of the Plaintiff duly distinguishes it from the source
and origin of the Plaintiff and indicates a trade connection with the Plaintiff
as proprietor thereof. Thus, the plaintiff’s said CROCS SHAPE
TRADEMARK / TRADE DRESS is an inherently strong
trademark.‖
(emphasis added)
28.
The counsel for the defendants
contended, that per Carlsberg Breweries supra, 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 include but is also broader than infringement of a trade mark,
the cause of action against
such use lies‖. It was argued,
that 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. It
was further argued that the registered design of the plaintiff as per
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averments in the plaint takes within its ambit, everything,
leaving no larger trade dress get up. It was contended that thus, when passing
off is claimed of elements of the design as a trade mark, no passing off action
lies. It was contended that paragraph 7 (supra) of the plaint contains an
express admission of the plaintiff using the registered design as a shape/trade
mark/trade dress and the plaintiff has neither pleaded nor argued as to what is
the overall get up and trade dress beyond the registered design, qua which
passing off is claimed. It was argued that no additional features qualifying as
trade dress, which are not part of the registered design, have been pleaded or
pointed out.
29.
The counsel for the defendants
next drew attention to paragraph 1:28 of McCarthy on Trademarks and Unfair
Competition 4th Edition opining that when a competitor claims exclusive rights in a
product shape by invoking the rules of trade dress law, the hovering presence
of patent laws counsels a strict adherence to the requirements of trade dress
validity and infringement, lest a backdoor patent be granted under the guise of
trade dress law. It was contended that if what is registered as a design is
also given protection as a trade mark, it would not only run counter to the
rights for a limited period in a design but through a backdoor permit rights as
a trade mark which are not registrable under the Designs Act. Reference was
also made to Publication International Ltd. Vs. Landoll 164 F.3d 337 [7th
Cir. 1998] but which is found to be of no relevance
on the aspect of maintainability of the suit though may be of relevance on the
aspect of interim injunction.
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30.
The remaining arguments of Mr.
Jayant Mehta, Advocate common to all suits, were on the aspect of interim
injunction, which will be adverted to later, if need arises. Similarly, the
arguments of counsel for the defendant/s peculiar to each of the suits were
with respect to interim relief and will be adverted to later, if need arises.
31.
The counsel for the plaintiff, in
rejoinder on the aspect of maintainability contended on 15th February, 2019, (i) that the
definition of
‗mark‘ in Section 2(m) of the Trade Marks Act
includes shape of goods; (ii) that Section 2(d) of the Designs Act defines
shape as meaning only the features of shape etc. which in the finished article
appeal to and are judged solely by the eye but does not include any trade mark;
(iii) that the bar to a design being a trade mark is contained in the Designs
Act and not in the Trade Marks Act; (iv) that the Trade Marks Act does not say
that if the shape is registered as a design, it cannot be a trade mark; (v)
that thus the cancellation can be only of a design, if it is a trade mark and
not of the trade mark; and, (vi) that the concurring opinion of one of the five
Judges in Carlsberg Breweries supra and with which the other four Judges
have
expressed agreement, in paragraph 67 proceeds on complete identity of
subject matter of passing off and infringement of design, as distinct from
overall get up and trade dress not constituting a design, as held by the four
Judges in paragraph 45 supra of Carlsberg Breweries.
32.
On the counsel for the plaintiff
submitting so, it was enquired from the counsel for the plaintiff, whether it
was permissible to the plaintiff to take mutually inconsistent pleas and that
once it is accepted that there can be no passing off in relation to a
registered design and it is contended that it
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is the design which is liable to be cancelled,
whether not the plaintiff is required to elect, whether to proceed with its
claim against the defendants, of infringement under the Designs Act or on the
ground of passing off and how is it open to the plaintiff to, after contending
that it is only the design which is liable to be cancelled and not the trade
mark, claim rights as a design as well as a trade mark.
33.
The senior counsel for the
plaintiff today, in furtherance has contended (a) that the reference to five
judge bench in Carlsberg Breweries
supra was confined to, whether passing off action
simultaneously with the infringement of design action is maintainable; (b) that
Carlsberg
Breweries supra is thus not a judgement on what is attributed to it by
the counsel for the defendants; (c) that what is attributed by the counsel for
the defendants to the opinion of the four Judges in Carlsberg Breweries supra
is same as what was the minority opinion in Mohan Lal supra, holding
that no passing off action is maintainable; (d) that the plaintiff is thus not
required to elect, as was suggested on 15th February, 2019; (e) attention is invited to paragraphs 19, 20.1, 20.2,
21 & 22 of majority opinion Mohan Lal supra;
(f)
that four Judges, in Carlsberg
Breweries, in paragraph 45 supra held the observation in the majority
opinion in Mohan Lal, ―post registration under
Section 11 of the Designs Act, there can be no
limitation on its use as a trade mark by the registrant of the design. The
reason being: the use of a registered design as a trade mark, is not provided
as a ground for its cancellation under Section 19 of the Designs Act‖, to be
erroneous; (g) that the said observation is to be found in paragraph 22.8 of Mohan
Lal supra but the said observation was only about registration and not
about passing
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off, and thus Carlsberg Breweries supra cannot be
interpreted as holding that there can be no passing off action in relation to a
shape trade mark; (h) that there is no property right in any trade mark and no
property right is conferred even by registration of a trade mark; reliance in
this regard is placed on Mind Gym Limited Vs. Mindgym Kids Library
Private Limited 2014 SCC OnLine 1240 holding that a passing off action
is a remedy for the invasion of a right of property, not in the mark, name or
get up improperly used, but in the business or goodwill likely to be injured by
the misrepresentation made by passing off one person‘s goods as the goods of
another; goodwill, as the subject of property rights, is incapable of
subsisting by itself; it has no independent existence apart from the business
to which it is attached; it is local in character and divisible; if the
business is carried on in several countries a separate goodwill attaches to it
in each; (i) that the construction placed by the defendants on the passages
aforesaid of Carlsberg Breweries is perverse; (j) that the mere fact that
the opinion of the four Judges in Carlsberg Breweries affirms the
majority opinion in Mohan Lal, is sufficient to held that a passing off action is
maintainable relating to a design; and, (k) that merely because each of the
defendants, while copying the design of the plaintiff, instead of the brand
name of the plaintiff put their own brand name on the product, does not defeat
the action for passing off as was suggested by the counsel for the defendants
in his arguments on merits in opposition to the application for interim relief;
in para 28 of Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna
Pharmaceutical Laboratories AIR 1965
SC 980 it was held that added matter is irrelevant.
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34.
The counsel for the plaintiff has
added, that this Court in Colgate Palmolive Company Vs. Anchor
Health and Beauty Care Pvt. Ltd. 2003 (23) PTC 478 (Del) has
held that ―trade dress involves the total image of a
product and may include features such as size,
shape, colour combinations, texture, or graphics‖ and held that trade dress
protection is broader in scope than trade mark protection, both because it
protects aspects of packaging and product design that cannot be registered for
trade mark protection and because evaluation of trade dress infringement claim
requires the Court to focus on the plaintiff‘s entire selling image, rather
than the narrower single facet of trade mark. Reference is also made to
paragraph 7.25 of McCarthy on Trademarks and Unfair Competition 3rd Edition Vol. I opining that the
term trade dress has now been stretched to include the shape and design of the
product itself; the field of law once referred to as unfair competition by
product simulation, has now been folded into that corner of trademark and unfair
competition law called ―trade dress‖; the prior distinction between ‗package‘
or ‗container‘ and ‗product configuration‘ has become blurred. Reference is
also made to N. Ranga Rao and Sons Vs. Anil Garg 2006
(32)
PTC 15 (Del), referring to Kellogg
Company Vs. Pravin Kumar Bhadabhai 1996 PTC (16) 187 and
Schweppes LD Vs. Gibbens, (1905) 22
RPC 601 holding that ―broad dissimilarities need to
be compared‖ and finally referring to Cadila Health Care Ltd. Vs. Cadila
Pharmaceuticals Ltd. (2001) 5 SCC 73 holding that
―what has to be seen in the case of passing-off action is the
similarity between competing marks‖ and concluding that Schweppes LD supra to be
not good law. Reference was finally made to paragraph 8.02 of Vol. I, 3rd Edition of McCarthy supra
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opining that intentional copying of trade dress is surrogate evidence of
secondary meaning.
35.
The remaining arguments of
counsel for the plaintiff, again were on merits and which will be adverted to
if need for determination thereon arises.
36.
The counsel for the defendants has added, (I) that
the passages of
Carlsberg Breweries supra reproduced above ―flow in context‖; (II) that unless
the relief of passing off in relation to design is restricted as has been held
in Carlsberg
Breweries in the passages quoted above, it will result in ―evergreening
of design‖; and, (III) that if a shape of good/product is registered as a trade
mark, under Section 2(d) of the Designs Act, it cannot be registered as a
design and to hold, that if it is vice-versa, an action for passing of would be
maintainable, would amount to conferring rights better than as may be available
by registration and the same has been negatived in Carlsberg Breweries.
37.
As would be evident from the
aforesaid contentions, the counsel/senior counsel for the plaintiff have been
unable to controvert the argument of the counsel for the defendants that the
plaintiff is alleging passing off by the defendants of their goods as that of
the plaintiff by copying the registered design of the plaintiff and nothing
else and that reliefs on the ground of infringement of design as well as on the
ground of passing off are on the same facts. The plaintiff, from its pleadings
has been unable to point out any other feature/element or part of the larger
trade dress, get up of the product of plaintiff, other than the elements of its
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registered design, by adopting which the defendants are passing off
their goods as that of the plaintiff. What is thus for adjudication is:
(A)
Whether a registered design of a
plaintiff can constitute a trade mark to confer on such plaintiff a right to
restrain another, not on the ground of infringement of its design but on the
ground of passing off its goods as that of the plaintiff by adopting the
registered design of the plaintiff, or to confer on such plaintiff a right to
restrain another on the ground of both, infringement of design and passing off;
and,
(B)
Whether the passages quoted above
of Carlsberg
Breweries adjudicate the said controversy and even if the answer is in
the affirmative, whether the said passages are contrary to Mohan Lal and
if so to what effect.
38.
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. My reasons for concluding so
follow:-
A.
A perusal of the statement of
objects and reasons for enactment of the Designs Act, 2000 shows the same to
have been enacted with the objective of balancing the interest in, on the one
hand ensuring effective protection to registered designs and to promote design
activity in order to promote the design element in an article of production and
on the other hand ―to
ensure
that the law does not unnecessarily extend protection
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beyond what is necessary to create the required
incentive for design activity, while removing impediments to the free use of available
designs.‖
B.
The Designs Act, 2000, as per its
preamble is an act to consolidate and amend the law relating to protection of
designs and came into force on 11th May, 2001, when though the Trade Marks Act, 1999 had been enacted but
not come into force (it came into force subsequently on 15th September, 2003). Use of the
words ―to consolidate and amend‖ indicate the Act to be a complete code in
itself relating to the law of designs.
C.
The Designs Act, in the definition Section 2(d)
thereof defines
‗design‘ as meaning ―only the features of shape,
configuration, pattern, ornament or composition of lines or colours applied to any
article….which in the finished article to appeal to and are judged solely by
the eye; but does not include….any trade mark as defined in clause (v) of
sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43
of 1958) or property mark as defined in section 479 of the Indian Penal Code
(45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright
Act, 1957 (14 of 1957)‖.
D.
As per the definition of design
in the Designs Act, if the feature of shape, configuration, pattern, ornament
or composition of lines or colours applied to any article is being used as a
trade mark, it cannot be registered as a design.
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E.
While Section 2(1)(v) of the 1958
Act relating to trade marks defined ‗trade mark‘ as under:
―2(1)(v) ―trade mark‖ means—
(i)
in relation to Chapter X (other than section 81), a registered trade
mark or a mark used in relation to goods for the purpose of indicating or so as
to indicate a connection in the course of trade between the goods and some
person having the right as proprietor to use the mark; and
(ii)
in relation to the other provisions of this Act, a mark used or proposed
to be used in relation to goods for the purpose of indicating or so as to
indicate a connection in the course of trade between the goods and some person
having the right, either as proprietor or as registered user, to sue the mark
whether with or without any indication of the identity of that person, and
includes a certification trade mark registered as such under the provisions of
Chapter VIII‖
Section 2(1)(zb) of the 1999 Act relating to trade marks defines ‗trade
mark‘ as under:
―2(1)(zb)
―trade mark‖ means a mark capable of being represented graphically and which is
capable of distinguishing the goods or services of one person from those of
others and may include shape of goods, their packaging and combination of
colours; and
(i)
in relation to Chapter XII (other than section 107), a registered trade
mark or a mark used in relation to goods or services for the purpose of
indicating or so as to indicate a connection in the course of trade between the
goods or services, as the case may be, and
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some person having the right as
proprietor to use the mark; and
(ii)
in relation to other provisions of this Act, a mark used or proposed to
be used in relation to goods or services for the purpose of indicating or so to
indicate a connection in the course of trade between the goods or services, as
the case may be, and some person having the right, either as proprietor or by
way of permitted user, to use the mark whether with or without any indication
of the identity of that person, and includes a certification trade mark or
collective mark‖
Chapter X
referred to in 1958 Act and Chapter XII referred to in 1999
Act, both
relate to offences,
penalties and procedure
and are thus
not
applicable.
F.
Both provisions aforesaid use the word ‗mark‘ and
which in the
1958 Act was defined in Section 2(1)(j) thereof as
including ―a device, brand, heading, label, ticket, name, signature, word,
letter or numeral or any combination thereof‖ and in Section 2(1)(m) of the
1999 Act is defined as including in addition
―shape of
goods, packaging or combination of colours‖.
G.
It will thus be seen that save
for the difference in the definition of ‗mark‘, there is no other difference
found in the definition in the 1958 Act and in the 1999 Act of a trade mark.
H.
I have wondered, whether owing to
the shape of goods being not included in the definition of ‗trade mark‘ in the
1958 Act
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which was in force when the Designs Act came into
force with the definition aforesaid of design, the prohibition to a trade mark
being a design does not apply to shape trade mark i.e. though any other kind of
trade mark cannot be a design, a shape trade mark can be a trade mark as well
design and protection is available as both.
I.
It is however the contention of
the counsel for the plaintiff itself that even prior to the 1999 Act i.e. under
the 1958 Act, shape, configuration, pattern, ornament or composition of lines
or colours applied to any article was treated as a trade mark and on another
adopting the same, an action on the ground of passing off or infringement was
maintainable. Going by the said contention, the change in the definition of
‗trade mark‘ from that in 1958 Act to that in 1999 Act would be immaterial.
J.
Even otherwise, the consistent
principle of construction of statutes and enunciated, earlier in Section 38 of
the Interpretation Act, 1850 and reiterated in some modification in Section 8
of the General Clauses Act, 1897 is, that where any statute is re-enacted with
or without modification, then reference in any other statute to any provision
of the repealed statute, unless a different intention appears, has to be
construed as a reference to the provision so re-enacted. Reliance, if any
required in this context, can be placed on National Sewing Thread Co. Ltd. Vs. James
Chadwick and Bros. Ltd. AIR 1953 SC 357, State of Uttar Pradesh Vs. M.P.
Singh AIR
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1960 SC 569, The Senior Electric Inspector Vs. Laxmi
Narayan
Chopra AIR 1962 SC 159, K.P. Varghese Vs. Income Tax Officer,
Ernakulam (1981) 4 SCC 173 and Sales Tax Officer, Kanpur Vs. Union of
India 1995 Suppl. (1) SCC
410. I am unable to find anything in the Designs
Act to indicate that the reference therein to the 1958 Act was not, in
accordance with the said general principle, intended as reference to the
re-enacted 1999 Act.
K.
Further, if it were to be held
that while one category of trade marks cannot be registered as a design,
another category of trade marks can be so registered and enjoy protection, both
as a trade mark and as a design, the same would amount to, without any reason,
discriminating between two kinds of trade mark.
L.
Thought has also crossed my mind
that even if the contention of the counsel for the plaintiff, of shape being
protected as a trade mark under the common law, though no case law has been
shown in this regard, were to be correct, whether the meaning of trade mark in
an action of passing off can be wider than the meaning of trade mark in the
1958 Act or the 1999 Act relating to Trade Marks; since the bar in Section 2(d)
supra to design being not a trade mark is with reference to definition thereof
in the 1958 Act. It was so suggested by Senior counsel for plaintiff by
contending that the observations in para no.22.8 of majority opinion in Mohan
Lal supra was ―only about registration and not about passing off‖. However,
the answer
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thereto is to be found in Section 27 of the 1958
Act as well as 1999 Act and which remains unchanged. The same, though provides
that no proceedings with respect to infringement of an un-registered trade mark
lie but also provides that the fact that no proceedings for infringement can
lie would not affect the rights of action for passing off or the remedies in
respect thereof. Section 27, while so providing, does not separately define
trade mark for an action of passing off and the definition of trade mark,
whether in an action for infringement or in an action for passing off would be
the same i.e. as in Section 2(1)
(v) of the 1958 Act and as in Section 2(1)(zb) of
the 1999 Act. I am thus unable to accept the contention of senior counsel for
the plaintiff that Carlsberg Breweries supra holds as erroneous only the
observation in Mohan Lal supra ―about registration and not about passing off‖.
M.
The contention of the counsel for
the plaintiff, that owing to the prohibition of a design being a trade mark
being contained in the Designs Act and the absence of any prohibition in the
Trade Marks Act to a design being a trade mark, in an action for infringement
of a trade mark or passing off, it is irrelevant that what is claimed as a
trade mark is registered as a design, cannot be accepted. The intention of the
Legislature is clear from the prohibition contained in the Designs Act, and to
accept the contention of the counsel for the plaintiff would defeat the
legislative intent and the legislative intent in
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enactment of the statute has to be respected. Once
the legislative intent is that a trade mark cannot be a design, the features of
shape, configuration, pattern, ornament or composition of lines 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, and a registrant is to
be deemed in law to have surrendered, abandoned, acquiesced and waived all
rights to use such features as a trade mark. Else, there would be an anomalous
situation, with there being in existence a prohibition to use a trade mark as a
design but there being no prohibition to use of a design as a trade mark and
such anomaly cannot be attributed to any law making authority. A prohibition
contained in one statute has to be given effect to, while interpreting all
other statutes.
N.
The Full Bench of the High Court
of Bombay recently in Shivram Dodanna Shetty Vs. Sharmila Shivram
Shetty 2016 SCC OnLine Bom 9844, while interpreting the provisions of the
Hindu Marriage Act, 1955 and the Family Courts Act, 1984, held it to be a well
settled rule of interpretation that if one construction leads to a conflict,
whereas on another construction, two Acts can be harmoniously constructed, then
the later must be adopted; on such interpretation, the object of both the
enactments would be fulfilled and there would be no conflict. The Full Bench of
this Court also in Joginder Kumar Singla Vs. Govt. of NCT of Delhi (2005)
117 DLT 220, while
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dealing with the provisions of the Delhi
Development Act, 1957, and the Delhi Municipal Corporation Act, 1957, held that
it is the duty of the Courts to avoid a head on clash between the provisions in
two Acts and to construe the provisions which appear to be in conflict with
each other in such a manner as to harmonise them so that the purpose and object
of the legislation is achieved. Supreme Court, in State of Goa Vs. Western
Builders (2006) 6 SCC 239 held that when two enactments are
overlapping each other on the same area, then courts should be cautious in
interpreting those provisions; it should not exceed the limit provided by
statute; the extent of exclusion is however, really a question of construction
of each particular statute and general principles applicable are subordinate to
the actual words used by legislature; if two Acts can be read harmoniously
without doing violation to the words used therein, then there is no prohibition
in doing so. Else, in
Tata Consultancy
Services Vs. State
of Andhra Pradesh
(2005) 1 SCC 308 it was reiterated that the Courts
will reject that construction which will defeat the plain intention of the
legislature even though there may be some inexactitude in the language used;
reducing the legislation futility shall be avoided and in a case where the
intention of the legislature cannot be given effect to, the Courts would accept
the bolder construction for the purpose of bringing about an effective result.
It was further held that the Courts, when rule of purposive construction is
gaining momentum, should be very reluctant to
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hold that Parliament has achieved nothing by the language it used when
it is tolerably plain what it seeks to achieve.
O.
That brings me to the argument of
the senior counsel for the plaintiff of, the action in passing off being not
based on any rights in a trade mark but on deception, misrepresentation and
usurpation of goodwill. The senior counsel for the plaintiff, by contending so
sought to dis-associate the action brought by these suits from the law relating
to trade mark and in response whereto, the counsel for the defendants referred
to McCarthy supra opining, that ―copying is not only good, it is a federal
right—a necessary complement to the patent system‘s grant of limited
monopolies…effective competition and the penumbra of the patent laws require
that competitors be able to slavishly copy the design of a successful product‖
and that business people ―erroneously equate competition by copying with unfair
conduct….but federal law encourages wholesale copying, the better to drive down
prices. Consumers rather than producers are the objects of the law‘s
solicitude‖.
P.
On deeper consideration, I am
unable to accept the said contention also of the senior counsel for the
plaintiff. The action for misrepresentation and deception, as the senior
counsel for the plaintiff qualifies an action in passing off, is afterall in
protection of some right and which right, is as the first adopter of the mark.
The purport of the law of trade marks, whether in an action for passing off or
infringement, is
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to secure the rights of the first adopter. Goodwill
is also a right and there can be no goodwill dis-associated from the features
of shape, configuration, pattern, ornament or composition of lines of colours
applied to any article divorced from that article or product. Thus,
irrespective of whether there are any property rights in a trade mark,
protection, in an action for passing off, is sought of a trade mark. Moreover,
once the law relating to trade marks has been codified, saving the action for
passing off in respect of unregistered trade marks, it is not open to contend
that an action for passing off is divorced from rights as a trade mark. I am
also not convinced that trade mark is not a property. Trade mark is a species
of non-tangible properties which have come to be known as ‗intellectual
property‘ and rights wherein are known as ‗intellectual property rights‘.
Intellectual properties today, in twenty first century, are far more valuable than
tangible properties. Mind Gym Limited supra referred to
by the senior counsel for the plaintiff merely quotes a passage from Star
Industrial Co. Ltd. Vs. Yap Kwee Kor 1976 FSPLR 256 and which in turn
refers to the dicta in
Attorney
General Spalding & Bros. Vs. A.W. Gamage Ltd.
(1914-15) All ER Rep 147 pronounced in the era of
tangible properties. We are today living in the world of even banks accepting
intellectual properties as security for advancing finance!
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Q.
The Legislature in its wisdom
choose to legislate separately for features of shape, configuration, pattern,
ornament or composition of lines or colours applied to any article, which were
earlier construed as trade mark and protected so, by enacting the Designs Act,
2000 and granting protection to them for a maximum period of 20 years. To hold,
that though the legislative intent is to protect such features from use by
another, for a limited period of 20 years only and to after the expiry of the
said 20 years, allow the same to be used by others, the said features, though
not permitted to be used as a trade mark during the period of registration,
after the said period qualify as a trade mark and are protected from use by
other, would again, in my opinion, defeat the legislative intent. Just like the
legislature, deemed it appropriate to grant / allow patent rights for a limited
period, and not in perpetuity, like trade mark, similarly the legislature having
deemed it appropriate to allow / grant limited period exclusivity to designs,
which also qualify as trade marks, the limited period protection cannot be
extended to protection in perpetuity.
R.
In my view, the only inference
from a harmonious reading of the law relating to trade mark and the law
relating to designs is, that what is registered as a design cannot be a trade
mark, not only during the period of registration as a design but even
thereafter.
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S.
However it still remains to be
seen, whether the conclusion I have reached above is contrary to the majority
view in Mohan Lal supra. Because, if it is so,
then what I have concluded will merely be my rumblings and I will
continue to be bound by the dicta of the larger bench.
T.
The reference to the larger bench
in Mohan
Lal supra was inter alia on
―whether there can be an availability of remedy of passing off in absence of express saving or preservation of the
common law by the Designs Act, 2000 and more so when the rights and remedies
under the Act are statutory in nature‖. The majority concluded in para no.22,
(I) that a design can be used as a trade mark and if by virtue of its use,
goodwill is generated in the course of trade or business, it can be protected
by an action in the nature of passing off; (II) a design which is registered
under the Design Act may not have the statutory rights which a registered trade
mark has under the Trade Marks Act, but it would certainly have the right to
take remedial steps to correct a wrong committed by a defendant by instituting
a passing off action; however if such an action is instituted, the plaintiff
would have to demonstrate that the registered design was used by him as a trade
mark which, in the minds of the purchasing public is associated with his goods
or services which, have acquired goodwill/reputation which is worth protecting.
While giving reasons in paragraphs 22.1 to 22.8 of the judgment as reported in
2013 (55) PTC 61 (Del) (FB) for
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the said conclusion, (a) reliance in paragraph 22.2
was placed on McCarthy, in turn referring to foreign judgments not in the
context of the Indian statutes aforesaid and I do not find in the subsequent
paragraphs any reason as to how the foreign view/judgment applied in the Indian
context; (b) in paragraph 22.4, it was observed, that though once the statutory
period of registration of a design expires, it falls in public domain and
anyone can use the same but only if ensures that there is no confusion caused
as to the source and origin of the goods and services; (c) in paragraph 22.6,
it was added that ―this logic applies based on the principle that trade mark is
something which is extra, which is added on to the goods to denote origin,
while a design forms part of the goods‖; (d) in para no.22.7, reference was
made to Smith Kline & French Laboratories
Ltd. Vs. Sterling-Winthrop Group Ltd. (1975) 1 W.L.R. 914 holding ―A design forms part of the
goods themselves. A trade mark is something which is extra, which is added to
the goods for the purpose of denoting the origin of the goods, and, speaking
generally of trade mark and design, the same thing is not a trade mark and a
design‖ and, ―the ―extra‖ added to the goods is the colour applied to one half
of the capsule and the various colours applied to the individual pellets within
the capsules‖; and, (e) finally, in paragraph 22.8, it was reasoned that though
having regard to the definition of a design in the Designs Act, ―it may not be
possible to register simultaneously the same mater as a design and a trade
mark. However post
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registration under Section 11 of the Designs Act, there can be no
limitation on its use as a trade mark by the registrant of the design‖.
U.
Paragraph 22 of the majority
opinion in Mohan Lal supra to which alone attention was invited, cannot be
read de hors the reasons given in
paragraphs 22.1 to 22.8 thereunder. A closer scrutiny of said reasons shows
that the conclusions recorded in paragraph 22 are not absolute.
V.
A closer reading of the majority
opinion in Mohan Lal shows the same also to be holding that what is usable
and protectable as a trade mark is ―something extra‖ or more than what is registered
as a design. The majority opinion in Mohan Lal supra cannot be read as
holding what is registered as a design, can also be used as a trade mark and is
protectable as a trade mark. What is generally believed by the legal community
as the majority view in Mohan Lal supra, is thus not found
on a detailed reading of the judgment and is perhaps on a ―general impression‖
of the judgment.
W.
The plaintiff in the present case
has not been able to show any extra, besides the design, which is used as a
trade mark.
X.
As far as the conclusion, in
majority opinion in Mohan Lal supra, in paragraph 22.8, of a design being usable as
a trade mark post registration is concerned, I may add that, in my opinion, the
goodwill acquired during the period of registration,
when there is a statutory bar to its use as a trade mark,
cannot
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be considered and in my opinion anyone claiming
protection as a trade mark will have to show the rights as accruing with effect
from post registration. In the present cases however we are not concerned with
the said question inasmuch as the registrations as design in favour of
plaintiff are still valid.
Y.
I thus answer the first of the
aforesaid questions by holding 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 whereto
goodwill has been acquired, it is only those extra features which can be
protected as a trade mark. A registrant of a design would thus be entitled to
maintain an action for passing off against other, not by showing that such
another has adopted the registered design of the registrant but by showing that
the product of such registrant, besides the registered design, also has
other/extra features and goodwill in respect whereof has accrued and which
extra features have been adopted / copied by another. For copying registered
design however, only an action for infringement under the Designs Act would
lie.
39.
The present suits are premised on
the registered design also constituting a trade mark per se and thus are not maintainable as per
Mohan Lal supra also. The plaintiff has not
pleaded anything extra, other than the registered design, which
is used and has goodwill as a trade mark and which can be protected in these
actions for passing off.
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40.
Though in view of analysis of Mohan
Lal supra and as per which also the present suits are not maintainable,
the need to delve into the second question formulated above does not arise but
for the sake of completeness, I proceed to adjudicate the same.
41.
As
would immediately be
obvious at this
stage, the passage
of
Carlsberg Breweries supra quoted above do not lay down anything different from what was
held by the majority in Mohan Lal supra. The four of the
five Judges of the Five Judges Bench in Carlsberg Breweries supra when
observed that ―the larger legal formulation in Mohan Lal supra that a
passing off action i.e. one which is not limited or restricted to trade mark
use alone, but the overall get up or ―trade dress‖ however, is correct‖ have
also analysed Mohan Lal supra as done by me above and which is amply clear
from the words immediately falling i.e. ―as long as the elements of the 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 include but is also broader than infringement of a trade mark, the cause of
action against such use lies‖ which are nothing but echoing paragraphs 22.6 and
22.7 of the majority opinion in Mohan Lal supra. Paragraph 45 of Carlsberg
Breweries supra thus cannot be held as striking a different note than
majority view in Mohan Lal supra.
42.
Thus, Carlsberg Breweries supra
is not contrary to the majority opinion in Mohan Lal supra.
43.
However, even if it were to be
otherwise, the consistent view is that even the obiter dictum of a Full Bench is entitled to a great weight and the
binding effect of a prior decision does not depend upon, whether a
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particular argument was considered therein or not,
provided that the point with reference to which argument was subsequently
advanced was actually decided. Reference in this regard may be made to Philip
Jeyasingh Vs.
The Joint Registrar of Co-operative Societies, Chidambaranar Region,
Tuticorin 1992 SCC OnLine Mad 30.
44.
I have already noted above that
the four judges in Carlsberg Breweries, per paragraph 20 thereof,
considered the reference under two heads, the second of which is ―are
the two causes of action, i.e. a claim for
design infringement and the other for passing off,
so disparate or dissimilar that the court cannot try them together in one
suit‖. Paragraphs 44 & 45 of the judgment quoted above are in the context
of answering the said point and it cannot be said that are beyond the
reference.
45.
The Division Bench of the High
Court of Bombay, in Naseemunisa Begum Vs. Shaikh Abdul Rehman 2001
SCC OnLine Bom 234, while disagreeing with the contention
that the issue referred to the Full Bench being a limited one, the other
matters which are described by the Full Bench were not covered in that issue
and therefore decision given by the Full Bench is not binding on a smaller
bench, reasoned that the decision given by the Full Bench is always binding on
the smaller benches and it is not proper for the smaller benches to go into the
question whether the Full Bench was called upon to decide those issues and the
decision given by the Full Bench cannot be called as obiter dicta because all
relevant questions had to be considered before giving a decision on the point
referred to the Full Bench. Reliance was placed on Pabitra Mohan Dash Vs. State of
Orissa
(2001) 2 SCC 480. To the same effect is the view of the High Court
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of Calcutta in Sunil Kumar Das Vs. Director of Public
Instruction, W.B. 2010 SCC OnLine 2218. I respectfully agree and hold
that even if passages in Carlsberg Breweries supra relied
upon by the counsel for the defendants were to be held to be beyond the
reference, I would still remain bound and decide in accordance therewith.
46.
It being not in dispute that the
passing off pleaded in the plaint is by use by the defendants of what is
registered by the plaintiff as a design, in terms of Mohan Lal as well as Carlsberg
Breweries supra, the same is not permissible in law. The suits thus, as
per averments in the plaints therein, are not maintainable and liable to be
dismissed.
47.
The suits having been held to be
not maintainable, the need to deal with the claim for interim injunction
therein, though arguments were heard thereon also, does not arise.
48.
Resultantly, the suits are dismissed.
49.
The counsel for the defendants,
during his arguments had also contended that costs as applicable to commercial
suits should follow.
50.
I have considered the aforesaid
request but am not inclined to accede to the same because of the state of law,
as aforesaid. It cannot be said that the plaintiff was not bona fide agitating its rights on the ground of passing off. Law
indeed on the subject was in a state of flux. All counsels have argued on the
premise of Mohan Lal supra permitting an action for passing off in respect
of a registered design. This indeed is the general impression held by nearly
all. Clarity and certainty has emerged only from Carlsberg Breweries
supra and from reading of reasons in paras no.22.1 to 22.8 supra
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for conclusions reached by majority in para no.22
of Mohan
Lal supra which are indeed widely worded. Thus, no costs. However, if
the plaintiff pursues its claim on the ground of passing off further, it shall
be open to the defendants to, before the Appellate Court contend that the
defendants, in the event of succeeding in the appeal, are entitled to costs of
the suits also.
Decree
sheet be drawn up.
RAJIV SAHAI ENDLAW, J.
FEBRUARY 18, 2019
ak/bs..
(corrected
and released on 5th March,
2019)
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