India: Passing Off In Design

Last Updated: 1 June 2017
Article by N. Mahabir
  1. Design is considered a statutory right whereas passing off and trade mark are considered as sui generis right.  A statutory right entails its origin and extinguishment happens in terms of the statue.  Prior publication of a design is a ground for its revocation under Design Act.  On the other hand, Section 9 (3) prohibits registration of certain marks.  There is an overlap between design and trade mark in the matter of shape of articles.
  2. Way back in 1999 in the case of Smithkline Beecham Plc vs. Hindustan Lever Ltd.,the Delhi High Court accepted that there could be passing off in design dehors the Design Act.  The Court held:

    "13.I am, therefore, inclined to hold that passing off action is also available to case of design and such right could be enforced provided the same is available in accordance with law even in a case of design, for otherwise a latitude would be given to a manufacturer to misrepresent and to deceive unwary customers by manufacturing and selling its products as that of products of some other manufacturer or seller."
  3. Thereafter, the Courts have granted injunction where it was found that the act of the Defendant could lead to a misrepresentation, the Defendant was restrained.  In the case of Gorbatschow Vodka KG vs. John Distilleries Ltd., the Bombay High Court restrained the Defendant from using the same shape of a bottle, while holding:

    22. The test is whether the shape that has been adopted by the Plaintiff is one that is adopted capriciously, purely to give the article a distinctive appearance or characteristic of the goods of the manufacturer. If that be so, the manufacturer may be able to establish that he has a reputation and goodwill in the distinctive appearance of the article itself which would furnish a cause of action in passing off.
  4. The full bench of the Delhi High Court in the case of Micolube India Ltd. vs. Rakesh Kumar & Ors., by a majority held that a passing off action lies in the case of a design also.  The Court held that:

    1. A plaintiff could institute a suit for infringement of a design against a defendant, who was also a holder of a registered design. The expression "any person" found in Section 22 of the Designs Act would not exclude a subsequent registrant as, according to us, no such words of limitation are found in said Section.
    2. The plaintiff would be entitled to institute an action of passing off in respect of a design used by him as a trade mark provided the action contains the necessary ingredients to maintain such a proceeding. The argument that such a suit could be instituted only after the expiry of the statutory period provided under Section 11 of the Designs Act, does not find favour with us. This is for the reason that in a given fact situation the plaintiff may have commenced the use of the design as a trademark after its registration. While Section 2(d) of the Designs Act excludes from the definition of a design, any trademark which is defined as such in clause (v) of sub-Section (1) of Section 2 of the 1958 Act or property mark, as defined in Section 479 of the IPC, or any artistic work as defined in clause (c) of Section 2 of the Copyright Act - the use of the design as a trademark post its registration, is not stipulated as a ground for cancellation under Section 19 of the Designs Act.
  5. In the case of Eicher Goodearth Pvt. Ltd. vs. Krisha Mehta, the Delhi High Court restrained the Defendant from use of design on fabric material.
  6. In the recent case of Cello Household Products vs. Modware India, the Bombay High Court while restraining the Defendant from using same shape of bottles on the ground of infringement of design and passing off held that:

    "28. I must reject too Mr Tolia's argument of mosaicing. I believe it to be misapplied to this case. It is not a requirement of the law in infringement or passing off in relation to a design that every single aspect must be entirely newly concocted and unknown to the history of mankind. If that were so, we should never see any new or original design at all. It is a general rule that "mosaicing" of prior art, i.e., combining selected features in different prior art publications, is not permissible when assessing whether an invention is new..."
  7. Courts have protected shape of articles, which are novel on the ground of passing off.  In these cases, Court have considered the reputation of the product through the shape, novelty in the shape to evaluate whether the shape could be considered as having attained secondary meaning.
  8. It is important to register shapes as Design.  However, if a shape which is consumer facing, has novelty and unique attributes, it should be registered as a trade mark also.  Benefits of registration as a trade mark assists in stronger enforcement and protection of the shape.

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.

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