INTRODUCTION

Crocs Inc. USA v. Aqualite India Limited is a significant case addressing the intersection of design rights and trademark protection in India. The case examines whether a registered design can simultaneously enjoy protection as a trademark, particularly in the context of passing off actions. The dispute arose when Crocs Inc. attempted to protect its footwear design through both design registration and trademark rights, raising important questions about the scope and limitations of intellectual property protection for product designs.

The plaintiff, Crocs Inc. USA, was a well-known footwear manufacturer who had registered their distinctive footwear design. After failing to secure relief in design infringement suits, they filed separate suits for passing off against various footwear manufacturers. The case explores the delicate balance between different forms of intellectual property protection and their mutual exclusivity under Indian law.

FACTS

• Crocs Inc. had registered a design for their footwear (slipper) on June 21, 2017, bearing Design No. 294938.
• The design was claimed to be novel and original, consisting of specific surface patterns, cuts, ridges, and graphics that made the slipper design unique.
• The design was reportedly conceptualized and created by a UK-based design agency, M/s The Footsoldiers, on behalf of the plaintiff.
• After failing to secure relief in design infringement suits, the plaintiff filed separate suits for passing off against various footwear manufacturers.
• The plaintiff claimed both statutory rights through design registration and common law rights through prior publication.
• A market survey conducted on February 5, 2019, revealed that identical designs were available in the market.
• The defendants were producing footwear with similar designs but using their own brand names.

ISSUES

1. Whether a suit for passing off, solely based upon the shape of footwear already registered as a design under the Designs Act, 2000, is maintainable.
2. Whether a registered design can constitute a trademark, conferring rights to restrain others on the grounds of both design infringement and passing off.
3. Whether the interpretation of the Carlsberg Breweries case supports or contradicts the maintainability of passing off actions for registered designs.

ARGUMENTS FROM BOTH SIDES

Plaintiff’s Arguments:

1. The definition of “mark” under Section 2(m) of the Trade Marks Act includes the shape of goods.
2. The bar to a design being a trademark is only contained in the Designs Act and not in the Trade Marks Act.
3. The Trade Marks Act does not prohibit registration of a mark that is also a design.
4. The Carlsberg Breweries case supported the joinder of causes of action and did not prohibit passing off actions for registered designs.
5. The use of different brand names by defendants while copying the design does not defeat the action for passing off.

Defendants’ Arguments:

1. A passing-off action can only be maintained if something other than the registered design is claimed as a trademark.
2. The Carlsberg Breweries case did not overrule the Mohan Lal case principle regarding the requirement of additional elements beyond the registered design.
3. The plaintiff admitted to using the registered design as a shape/trademark/trade dress without pleading any additional features.
4. Allowing a design to be protected as a trademark would grant rights beyond those available through registration.

DECISION

The Delhi High Court examined the maintainability of passing off actions for registered designs in the context of footwear shape and design. The plaintiff’s argument centered on the inclusion of shape in the definition of “mark” under the Trade Marks Act and the absence of explicit prohibition against designs being registered as trademarks. However, after analyzing both parties’ contentions and relevant precedents, the Court found these arguments unpersuasive.

The Court rejected the contention that the absence of prohibition in the Trade Marks Act to a design being a trademark makes it irrelevant that what is claimed as a trademark is registered as a design. The Court emphasized that the legislative intent is clear from the prohibition contained in the Designs Act, and accepting the plaintiff’s contention would defeat this legislative intent. The Court held that once the legislative intent establishes that a trademark cannot be a design, the features of shape, configuration, pattern, ornament, or composition of lines or colors applied to any article, even if used as a trademark, cease to be a trademark upon registration as a design.

The Court further clarified that a registrant is to be deemed in law to have surrendered, abandoned, acquiesced, and waived all rights to use such features as a trademark. The Court reasoned that allowing otherwise would create an anomalous situation, with a prohibition existing against using a trademark as a design but no prohibition against using a design as a trademark. The Court emphasized that a registered design confers on the registrant only the right to restrain another from infringing the design and not to claim the registered design as its trademark/trade dress.

The Court concluded that if there are features other than those registered as a design and are shown to be used as a trademark with respect to which goodwill has been acquired, it is only those extra features that can be protected as a trademark. A registrant of a design would thus be entitled to maintain an action for passing off against another, not by showing that such another has adopted the registered design of the registrant but by showing that the registrant’s product, 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.

ANALYSIS

India’s intellectual property jurisprudence has benefited significantly from the Crocs decision, especially in clarifying the boundaries between design protection and trademark rights. The Court’s ruling establishes important guidelines for safeguarding design rights while maintaining the distinction between different forms of intellectual property protection. The ruling recognizes that while designs may be distinctive and capable of indicating the source, their protection must remain within the confines of the Design Act’s statutory framework.

A sophisticated understanding of intellectual property protection is evident in the Court’s methodology. It acknowledges that while designs may acquire distinctiveness through use, the legislative framework intentionally separates design protection from trademark protection to prevent perpetual monopolies over product designs. This interpretation offers crucial guidance for businesses in choosing between design and trademark protection for their product features, ensuring that they understand the implications and limitations of each form of protection.

Important procedural aspects of design protection are also clarified by the ruling. This strengthens the position of the Design Act as a comprehensive code for protecting industrial designs while preserving the separate domain of trademark protection for source identification. The way the Court handles the overlap between design and trademark protection establishes a useful precedent by preventing the extension of design protection through trademark claims while still allowing for the protection of additional distinctive elements that serve as source identifiers.

In essence, the Court’s decision fundamentally reinforces the judiciary’s role in maintaining clear boundaries between different forms of intellectual property protection while preserving the integrity of each system. The ruling strikes a crucial balance between protecting industrial designs for their limited statutory period and preventing the creation of perpetual monopolies through trademark protection. This interpretation offers precise guidelines for cases involving the intersection of design and trademark rights in the future, particularly in the context of product configurations and trade dress protection.

The case sets a noteworthy precedent for maintaining the distinction between different forms of intellectual property protection, especially at a time when businesses increasingly seek to leverage multiple forms of protection for their products. It highlights the need for careful consideration in choosing the appropriate form of protection for product features, recognizing that while both design and trademark protection offer valuable rights, they serve different purposes and cannot be used interchangeably to extend protection beyond statutory limits.