The Hon’ble High Court of Delhi in a Case of Crocs Inc. USA v. Aqualite India Limited (2019) SCC Online Del 7409, Para 38 on February, 2019 had clearly pronounced that, once party has acquired a registered Design in their name, then it completely forecloses any possibility of seeking relief under the relief of Passing-off of that registered Design as a Trademark or Trade Dress. The Single Judge held that “A registered Design confers on the Registrant, only the right to restrain another from infringing the design, and to not, also claiming the registered design as its Trademark/Trade dress, restrain another from passing off its goods as that of the registrant.” Therefore, the logical conclusion that followed from the judgment was requiring every potential registrant of Design at the inception to make a choice: either to seek registration of Design under Designs Act, 2000 and enjoy its rights initially for 15 years and to be renewed thereupon, or to seek protection as a Trademark or Trade Dress and enjoy the common law remedy of passing-off along with additional statutory protection, under Trademarks Act, 1999. The absolute proposition during which such an election was framed had the immediate effect of negating any registered Design of seeking relief of passing off as a Trademark/trade dress.

The court was moved by the very fact that enabling parties to hunt dual reliefs would be opening doors to “unnecessary extended protection beyond what’s necessary to make the required incentive or design activity.” The court also reasoned that since section 2(c) of the Designs Act, 2000 excluded a Trademark from the definition of Design and thus, leading to the conclusion that there are often no possibility of institution of suit on the bottom of passing off the registered Design as a trade dress/ trademark. The court relied on the full bench judgment of Mohan Lal Vs Sona Paint to arrive at a conclusion that for a party to seek passing off of a registered design as a trademark/ trade dress, the party had to point out something extra. Appling it reasoning to the facts of the case, the court had concluded that the design in the suit pertaining to the footwear covered the entire footwear. And since the facts revealed that nothing was added to the footwear, therefore, the plaintiff could not maintain a suit for passing off of the registered Design as a trade dress.

The Plaintiff aggrieved by the dismissal of suit preferred an appeal in the Hon’ble High court before Division Bench challenging the order of the lower court. The division bench in its interim order halted the above judgment to have any precedential effect and therefore negative the judgment stating that the suit for passing off of a registered design as a Trademark/ trade dress is maintainable. The implication of this order is that the stringency of the previous order hat rendered every registrant of registered Design incapable of seeking relief of passing off as a trade dress until the registrant shows “Something Extra” is negated. The reasoning of the court returned to the full bench judgment in Mohan Lal Vs Sona Paint, which pertained to three distinct questions. This included the precise question “whether there are often an availability of the remedy of passing off in absence of express saving or preservation of the common law by the Design Act, 2000 and more so when the rights and remedies under the Act are statutory in nature? The court has answered this question in an affirmative where the court had expressly formulated the answer as “if passing off of a registered Design as Trade dress is instituted, the plaintiff would need to demonstrate that the registered Design was employed by him as a Trademark which within the minds of buying public is related to his goods or services, which have acquired goodwill/reputation which is worth protecting. One of the key reasons behind this findings was that such positions serve public interest because it advances business interests of the owner of the trademark and second, it prevents confusion on source and origin of products. The above position has remained valid for the last six years. The reason on its strength was the likelihood that a registered design may in some instances come to accumulate such goodwill that it might begin to serve an identifying function to the public. In such cases the remedy of the passing off would ensure that the third parties are not able to dupe consumers. The implicit safeguard built in the above mentioned case being that the party contending that a registered Design is capable of being protected under the remedy of passing off as trade dress would need to first show that the party has acquired goodwill within the minds of the general public within the design. 

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