India: The Enigma Of Design Infringement And Passing Off

Last Updated: 7 July 2017
Article by Intepat Team

There is no such aesthetic beauty similar to Taj Mahal in this whole world. Why so? Well, we all would have heard that Shah Jahan cut off his workers' hands so that there can be no replica of it. Knowingly or unknowingly this was recognition of the doctrine of Passing-off. Nobody can give up on their identity so easily, right?

The Doctrine of Passing off is already discussed in detail in one of our previous blog posts. So, I take it as an excuse to focus only on the correlation between design infringement and passing off remedy. The words of Lord Halsbury, "Nobody has any right to represent his goods as the goods of somebody else", give us a brief insight on the idea of passing off. One has to establish his goodwill, misrepresentation of his goods, and the damages thereof, to succeed in his passing off claim.

Design Infringement and Passing Off

Passing off was once considered to be a common law remedy available only to trademarks. But, an inclusion of the scope of passing off to designs leads to various interesting debates and questions in the IP arena. This article would help in understanding the conundrum with referrals to various case laws throughout it.

The key issues involved are:

-Availability of common law remedy of passing off under the Designs Act, 2000.

-Continuation of a mark as a design which has gained trademark status.

-Composite suit of Design Infringement and Passing off.

-Passing off suit against a design registrant.

Availability of common law remedy of passing off under the Designs Act, 2000

What is the first thing that pops into your mind when I say iPhone? There is no doubt that it is the design of such phones which are distinct from the rest, right? It is such designs which become the identity of any brand, and the very purpose of the passing off claim is to shield that identity.

Earlier, the common law remedy of passing off was available only to trademarks. It was for the first time in the case of SmithKline Beecham v. Hindustan Lever, the Delhi High Court held that passing off remedy is available also to the designs under the Designs Act. Justice Sharma in stating the reason has mentioned that it is to protect misrepresentation of designs by a third person, which have eventually become the identity of a brand. The larger bench of the Delhi High Court upheld the same in Micolube India v. Rakesh Kumar.

It is a well-settled law that the passing off is a common law remedy which exists over and above the protection of statutes. Then why were the courts hesitant to allow the same? The single judge ruling in the Micolube case states that there was lack of legislative intent in the Designs Act to provide the remedy of passing off. This absence of express provision in the Designs Act, unlike the Trade Marks Act, justified this issue for a long time. But, later the full bench in the same Micolube case was very much pragmatic. They held that the single judge framed the issue incorrectly, namely, 'Whether there exists any remedy of passing off under the Designs Act?' Then, the answer is pretty simple that there is no such remedy mentioned in the Designs Act.

I would agree with the full bench. As I have said earlier, passing off protects the identity of a brand. Then, if a design becomes such identity, it is more than appropriate to provide the same remedy to designs. The plaintiff in the case of Good Earth v. Krishna Mehta established that any consumer would recognize their brand with their designs, which made them succeed their suit claiming passing off against India Circus.

Continuation of a mark as a design which has gained trademark status

Section 19(1) (e) of the Designs Act clearly states that a registered design can be cancelled if it ceases to continue as a design. It is better to have a clear picture on the definition of design to understand this provision.

Section 2 has specifically given that only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article are designs under the Designs Act. It also specifically excludes the following from the ambit of this definition.

-Any trademark as defined in Trade Marks and Merchandise Act.

-Any mode or principle of construction which in substance a mere mechanical device.

-Property mark as defined in IPC

-Artistic work as defined in Copyrights Act.

This gives us an insight that when a design is a trademark, then it cannot be registered.

So, what if a design after registration has become a trademark by use?

Earlier, the courts had an interpretation that the very moment a design becomes a trademark by use then it no longer can enjoy protection under the Designs Act. It is ordinary for a distinct design of a brand to acquire reputation and serve as a trademark. Should the proprietor of the design brood over it?

The full bench had a different understanding of this interpretation. This reasoning broke the stereotype so far. This is simple in understanding that any design which was a trademark cannot be registered as a design, and whereas the design after registration becomes a trademark by use, it can continue to be a design. This is an overlap of the IP rights.

A design which has become a trademark is untouched by Section 19 of the Act. Section 2 excludes only the design which is a trademark at the time of application for registration of a design.

Composite suit of Design Infringement and passing off

It is still a mystery that when there can be composite suits of trademark infringement and passing off, or trademark infringement and copyright infringement, why is it impossible to file a composite suit for design infringement and passing off. The decision in Mohan Lal v. Sona Paint is straightforward that a composite suit for design infringement and passing off is not maintainable. They placed reliance on the Supreme Court's decision in Dabur India Limited v. KR Industries in which it was held that two causes of action cannot be clubbed into a composite suit, only where they do not arise within the jurisdiction of the same court.

The Court in Mohan Lal case has also disregarded Order 2 in Rule 3 of CPC, which permits joinder of causes of action. After all, the intention of CPC is to prevent multiple suits regarding a same issue.

However, last month the Delhi High Court in the case of Carlsberg Breweries has felt that the decision needed reconsideration and referred the matter to a larger bench. It is better to understand Design Infringement and Passing off of the same design as a string of actions rather than different causes of action. Though both have different grounds, as design infringement as novelty or not original, and passing off as misrepresentation, both affect the goodwill earned by the brand.

A revision in the maintainability of the composite suit is the need of the hour and would be hailed.

Passing off suit against a design registrant

The Bombay High Court in Whirlpool v. Videocon has upheld the scheme of Section 22 of the Designs Act which calls for the interpretation of "any person" as provided in this section. The term "any person" qualified with the phrase "other than the registered proprietor" created an ambiguity that whether it excludes any other registered proprietor or it makes liable all other persons other than the registered proprietor of such design.

Just because a monopoly right is given to a registered proprietor, he cannot infringe the rights of other registered proprietors, right? Passing off remedy never allows any "other person" to represent his goods as the goods of somebody else. This would widen the scope of maintainability of passing off in a design infringement. The same was emphasized in the practice of Indian design infringement and passing off suits with the help of courts.

Conclusion

Besides everything, I must agree that designs law regarding infringement is constantly evolving. A recent judgment of the Bombay High Court in Cello v. Modware has discussed the issue with a different facet envisioning the scope of mosaicing of prior art in designs.

Is it a herculean task for you to read the above piece? I sum it up for you.

-Yes, you can file a suit of passing off for protecting your design.

-Yes, your design is still protected under Designs Act even after it becomes a trademark.

-Yes, you can file a passing off suit against a design registrant.

-I guess you have to wait a little longer to file a composite suit of passing off and design infringement.

The laws are providing every means to protect your intellectual property. On your part, know and utilize it.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.