CAN A DESIGN ALSO FUNCTION AS A TRADEMARK ?
The second case analysis on shoes is purely a coincidence. The above mentioned question in the title, was discussed in the case of Crocs Inc Usa v. Bata India Ltd & Ors
in High Court of Delhi, Order dated: January 24, 2019
Issue: Whether a design can also function as trademark?
The plaintiff was unsuccessful in a suit filed for design infringement as the designs on which the suit was filed were found to be not new or original and therefore the Plaintiff pressed for the injunction on the ground of passing off which is an action in common law. It was settled by an earlier judgment of five judge bench that 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 sustain. 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 argued by the Defendant that if the passing off is claimed of elements of the design as a trade mark, no passing off acton lies. Since the plaintiff itself relied on use of its registered designs as a shape trade mark and no additional features qualifying as trade dress, which are not part of the registered design have been pleaded or pointed out, the passing off suit is not maintainable. The court agreed with the Defendant that the plaintiff has not been able to show any extra features, besides the design, which is used as a trade mark.
The Court interpreted the legislative intent of the Design Act which is to grant limited monopoly by design registration and after the term of registration, it should be open for anyone to use the said design. The legislative intent will be defeated if the design after its term was allowed to be used as trademark. The court used the analogy of patents rights which is granted for a limited period and observed that the intention to give design protection for a limited time cannot be extended to protection in perpetuity by claiming trademark rights. Therefore, the court gave an opinion that not only the registered design cannot be a trade mark during the period of design registration but even thereafter.
Accordingly, the court held 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 to which goodwill has been acquired, it is only those extra features which can be protected as a trade mark. If there has been a copy of registered design, only an action for infringement under the Designs Act would lie.