The overlap of design and trademark rights

The case of Crocs USA v Aqualite India & Ors (2019 SCC OnLine Del 7409) decided on February 18, 2019 answered a question on the overlap of design and trademark rights that had long vexed rights holders and practitioners.

The Indian Designs Act, like the Indian Patents Act, provides statutory protection for a limited period: registration of designs is for a 15-year period, after which they fall into the public domain. The legislative intent behind a design-specific statute is to spur innovation by providing exclusivity to statutory proprietors, lending an edge over the competition for a limited period.

The statute also encourages competitors to innovate and create novel and original articles that are appealing to consumers. The premise behind trademark laws, on the other hand, is to eliminate the chance of consumer confusion regarding the source of goods/services and to this end, trademark rights can be perpetual.

Further, as a common law country, India not only recognises statutory rights under the Indian Trade Marks Act, 1999, but it recognises the common law relief of passing off. This enables the protection of unregistered trademark rights—specifically, the law on passing off prevents an entity (mis)representing its goods or services as those of another.

Case study

Since the concept of passing off exists only in the Indian Trade Marks Act and not the Designs Act, the law on the relief of passing off vis-à-vis a registered design has always been unclear. A five-judge bench of the Delhi High Court in Carlsberg Breweries v Som Distilleries and Breweries (2018 SCC OnLine Del 12912) attempted to clarify the position by stating: “The Designs Act ... specifically exposes a registered design to cancellation when (e) it is not a design as defined under clause (d) of section 2. Section 2 of the Designs Act, defines ‘design’ as … the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article ... but does not include any trademark as defined in ... the Trade and Merchandise Marks Act, 1958. Therefore, if the registered design per se is used as a trademark, it apparently can be cancelled.”