Delhi High Court
M/S Crocs Inc Usa vs M/S Bata India & Ors on 1 July, 2025
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 16 April 2025
Pronounced on: 1 July 2025
+ RFA (OS) (Comm) 22/2019
M/S CROCS INC USA .....Appellant
Through: Mr. J. Sai Deepak, Sr. Adv.
with Mr. S.K. Bansal, Mr. Ajay Amitabh
Suman, Mr. Gaurav Gogia, Mr. Deepak
Shrivastava and Mr. R. Abhishek, Advs.
versus
M/S BATA INDIA & ORS .....Respondents
Through: Mr. Neeraj Grover, Ms.
Mohona Sarkar and Mr. Kashish Vij, Advs.
+ RFA (OS) (Comm) 23/2019
M/S CROCS INC USA .....Appellant
Through: Mr. J. Sai Deepak, Sr. Adv.
with Mr. S.K. Bansal, Mr. Ajay Amitabh
Suman, Mr. Gaurav Gogia, Mr. Deepak
Shrivastava and Mr. R. Abhishek, Advs.
versus
M/S LIBERTY SHOES LTD & ORS .....Respondents
Through: Mr. Saikrishna Rajagopal, Mr.
Julien George, Mr. Arjun Gadhoke, Ms.
Deepika Pokharia and Ms. N. Parvati, Advs.
+ RFA (OS) (Comm) 24/2019
M/S CROCS INC USA .....Appellant
Through: Mr. J. Sai Deepak, Sr. Adv.
with Mr. S.K. Bansal, Mr. Ajay Amitabh
Suman, Mr. Gaurav Gogia, Mr. Deepak
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 1 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
Shrivastava and Mr. R. Abhishek, Advs.
versus
AQUALITE INDIA LIMITED & ANR .....Respondents
Through: Mr. CA Brijesh, Mr. Ishith
Arora, Ms. Simranjot Kaur, Advs.
+ RFA (OS) (Comm) 25/2019
M/S CROCS INC USA .....Appellant
Through: Mr. J. Sai Deepak, Sr. Adv.
with Mr. S.K. Bansal, Mr. Ajay Amitabh
Suman, Mr. Gaurav Gogia, Mr. Deepak
Shrivastava and Mr. R. Abhishek, Advs.
versus
M/S BIOWORLD MERCHANDISING INDIA LTD
& ANR .....Respondents
Through: Mr. Anil Dutt, Adv. for R-1
+ RFA (OS) (Comm) 26/2019
M/S CROCS INC USA .....Appellant
Through: Mr. J. Sai Deepak, Sr. Adv.
with Mr. S.K. Bansal, Mr. Ajay Amitabh
Suman, Mr. Gaurav Gogia, Mr. Deepak
Shrivastava and Mr. R. Abhishek, Advs.
versus
M/S RELAXO FOOTWEAR LTD .....Respondent
Through: Mr. Gaurav Miglani, Adv.
+ RFA (OS) (Comm) 27/2019
M/S CROCS INC USA .....Appellant
Through: Mr. J. Sai Deepak, Sr. Adv.
with Mr. S.K. Bansal, Mr. Ajay Amitabh
Suman, Mr. Gaurav Gogia, Mr. Deepak
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 2 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
Shrivastava and Mr. R. Abhishek, Advs.
versus
M/S ACTION SHOES PVT LTD & ORS .....Respondents
Through: Nemo
+ FAO (OS) (Comm) 358/2019 & CM APPL. 53349/2019
DART INDUSTRIES INC & ANR .....Appellants
Through: Mr. Hemant Singh, Ms. Mamta
Rani Jha, Ms. Shruttima Ehersa, Mr. Rohan
Ahuja and Ms. Diya Viswanath, Advs.
versus
VIJAY KUMAR BANSAL & ORS .....Respondents
Through: Mr. N. Mahabir, Mr PC Arya,
Ms. Parveen Arya, Ms. Noopur Biswas, Mr.
Udit Gupta, Advs.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
HON'BLE MR. JUSTICE AJAY DIGPAUL
JUDGMENT
% 01.07.2025
C. HARI SHANKAR, J.
1. These appeals arise out of two orders passed by a learned Single
Judge of this Court. A tabular representation of the appeals and the
orders against from which they arise may be presented thus:
Appeal No. Name CS (Comm) Date of impugned
No. judgment
FAO (OS) Dart Industries 837/2016 17 July 2019
(Comm) Inc & Anr. v
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 3 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
358/2019 Vijay Kumar
Bansal & Ors.
RFA (OS) Crocs Inc USA v 569/2017 18 February 2019
(Comm) 22/2019 Bata India Ltd. &
Ors.
RFA (OS) Crocs Inc USA v 1415/2016 18 February 2019
(Comm) 23/2019 Liberty Shoes
Ltd. & Ors.
RFA (OS) Crocs Inc USA v 903/2018 18 February 2019
(Comm) 24/2019 Aqualite India
Ltd. & Anr.
RFA (OS) Crocs Inc USA v 906/2016 18 February 2019
(Comm) 25/2019 Bioworld
Merchandising
India Ltd. & Anr.
RFA (OS) Crocs Inc USA v 571/2017 18 February 2019
(Comm) 26/2019 Relaxo Footwear
Ltd.
RFA (OS) Crocs Inc USA v 905/2016 18 February 2019
(Comm) 27/2019 Action Shoes Pvt.
Ltd. & Ors.
2. By the common judgment under challenge, dated 18 February
2019, passed in CS (Comm) 903/2018, CS (Comm) 905/2016, CS
(Comm) 906/2016, CS (Comm) 1415/2016, CS (Comm) 569/2017
and CS (Comm) 571/20171, the learned Single Judge has dismissed all
five suits as not maintainable. As such, the learned Single Judge has
held that it is not necessary to examine the applications filed by the
appellant – plaintiff in the said suits, under Order XXXIX Rules 1 and
2 of the Code of Civil Procedure, 19082.
3. In RFA (OS) (Comm) 22-27/20193, preferred by Crocs Inc
USA4, challenging the aforesaid judgment dated 18 February 2019 of
the learned Single Judge, a Division Bench of this Court, on 29 May
1 “the Crocs suits” hereinafter
2 “CPC“, hereinafter
3 “the Crocs appeals” hereinafter
4 “Crocs”, hereinafter
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 4 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
2019, while adjudicating CM Appls 22655/2019, 22660/2019,
22664/2019, 22667/2019, 22670/2019 and 22674/2019, expressed a
prima facie view disagreeing with the view expressed by the learned
Single Judge in his judgment dated 18 February 2019 supra.
4. In that view of the matter, while adjudicating CS (Comm)
837/20165, on 17 July 2019, the learned Single Judge has, noting the
fact that the Division Bench of this Court had, on 29 May 2019,
expressed prima facie disagreement with his judgment dated 18
February 2019, proceeded to adjudicate IA 15881/2011, filed by the
appellant – plaintiff Dart Industries Inc6 in that case, on merits. The
learned Single Judge has rejected the prayer for interim injunction and
has merely directed the defendants in the Dart suit to file particulars of
sales of the impugned product.
5. There is, however, no dispute that if we were to uphold the
judgment of the learned Single Judge in the Crocs suits, it would mean
that the Dart suit would also be liable to be dismissed as not
maintainable.
6. The correctness of the judgment dated 18 February 2019, in the
Crocs suits, therefore, arises directly or indirectly for consideration in
all these appeals. The learned Single Judge has, vide the said
judgment, dismissed the Crocs suits as not maintainable. In the event,
that this Court agrees with the learned Single Judge, matters must rest
there, insofar as the said suits are concerned, and the Crocs appeals,
5 “the Dart suit” hereinafter
6 “DART”, hereinafter
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 5 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
preferred thereagainst have necessarily to be dismissed.
7. In the event that the Court holds the learned Single Judge to
have been an error in rendering the judgment dated 18 February 2019,
the Crocs suits would have then to be remanded for further
proceedings and the Court would, in that event, have to examine the
correctness of the judgment dated 17 July 2019 of the learned Single
Judge in IA 15881/2011 in the Dart suit on merits.
8. As the issue of maintainability of the suits is, therefore, an issue
which arises directly or indirectly for consideration in all these
appeals, with the consent of learned Counsel for the parties, we have
heard arguments on the said issue at exhaustive length.
9. We, therefore, reserved judgment in RFA (OS) (Comm)
22/2019, RFA (OS) (Comm) 23/2019, RFA (OS) (Comm) 24/2019.
RFA (OS) (Comm) 25/2019, RFA (OS) (Comm) 26/2019 and RFA
(OS) (Comm) 27/2019, as they arise from suits which stand dismissed
by the learned Single Judge, and reserved judgment in FAO (OS)
(Comm) 358/2019 on the aspect of maintainability, while renotifying
the appeal awaiting the outcome thereof.
10. Mr. J. Sai Deepak, learned Senior Counsel, assisted by Mr. S.K.
Bansal and Mr. Ajay Amitabh Suman appeared for Crocs and Mr.
Hemant Singh appeared for Dart.
11. Mr. Saikrishna Rajagopal, learned Counsel appeared for the
respondents in RFA (OS) (Comm) 23/2019, Mr. Neeraj Grover,
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 6 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
learned Counsel appeared for the respondents in RFA (OS) (Comm)
22/2019. Mr. Mahabir, appeared for the respondents in FAO (OS)
(Comm) 358/2019 and Mr. Anil Dutt, learned Counsel appeared for
Respondent 1 in RFA (OS) (Comm) 25/2019.
12. The only issue to be decided is, therefore, whether the Crocs
suis were maintainable, and, therefore, whether the learned Single
Judge was correct in holding otherwise. The issue being purely legal,
and involving, as it is, construction and understanding of precedents
laid down by this Court, we do not wish to burden this judgement with
any exhaustive recounting of the submissions advanced by learned
Counsel, enlightening though they undoubtedly were.
The Crocs appeals
13. For the sake of convenience, we deem it appropriate to refer to
the dispute in the context of the Crocs appeals, as it is the judgment
dated 18 February 2019 passed in the Crocs suits, from which these
appeals emanate, which dismissed the suits as not maintainable.
14. We proceed to commence our discussion of these appeals by
reference to the plaint. For the sake of convenience, we would be
referring to CS (Comm) 1415/2016.
15. The plaint
15.1 The averments of Crocs in CS (Comm) 1415/2016 were as
follows.
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 7 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
(i) Crocs was the proprietor of Design Registration 197685
dated 28 May 2004 in respect of “footwear”, under the Designs
Act, 2000. Given the limited nature of the dispute in the present
appeals, it is not necessary to advert to all the specifics of the
Design Registration. Suffice it to state that the front perspective
of the footwear forming subject matter of dispute as provided in
the Certificate of Registration issued by the Registrar of
Designs was as under :
The certificate certified that novelty of the design resided in its
shape and configuration, in its various perspective views.
(ii) The aforesaid design/trade dress had acquired worldwide
reputation and was a source identifier of Crocs. The plaint
referred to the said trade dress representing the unique shape of
the footwear as the “CROCS SHAPE TRADEMARK/TRADE
DRESS”7. Admittedly, however, Crocs did not possess any
registration of the aforesaid trade dress as a trademark under the
Trade Marks Act, 1999.
(iii) The Crocs trade dress had earned, over a period of time,
enforceable perpetual rights in common law in favour of Crocs
over the trademark/trade dress. Crocs, as a consequence,7 Referred to, hereinafter, for the sake of convenience, as “the Crocs trade dress”
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 8 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
possessed the exclusive right to use the said trademark/trade
dress.
(iv) In or around the first week of June 2015, the footwear
manufactured by the defendant Liberty Shoes Limited8,
identical in shape and appearance to the registered design of
Crocs’ footwear, came to Crocs’ notice. Crocs also came to
know that Liberty was selling the said footwear online through
e-commerce websites as well as its own website
www.libertyshoes.com. Crocs, therefore, filed CS 155/2015
before the District Court, Patiala House alleging infringement,
by Liberty, of Design 197685, as also passing off, by Liberty, of
its footwear, as the footwear of Crocs, by adopting a trade dress
which was identical to that registered in Crocs’ favour vide
Design 197685. The said suit is presently pending.
(v) In the interregnum, a Full Bench of this Court of three
learned Judges rendered its judgment in Mohan Lal v Sona
Paints & Hardwares9. One of the issues before the Full Bench
was whether it was permissible to sue for passing off, on the
basis of a trademark which formed subject matter of a Design
Registration under the Designs Act. The Full Bench held that an
action for passing off would lie, but that separate suits would
have to be filed for design infringement and passing off. In that
view of the matter, Crocs instituted the present individual suit
against Liberty and others.
8 ‘Liberty’, hereinafter
9 200 (2013) DLT 322 (FB)
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 9 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
(vi) The plaint, in the present suit, alleged that the defendants
were manufacturing and selling footwear identical in
appearance to the Crocs trade dress. The following paragraphs
from the plaint merit reproduction:
“3 The Plaintiff Company was founded by Scott
Seamans, Lyndon Duke Hanson, and George Boedecker,
who in the year 2002 coined the word/markalong-with it the device/logo of and adopted CROCS
as an integral part of their trade name M/s. Crocs Inc.4 That in the course of its business, the plaintiff has
devised several unique shapes/trade dress in relation to its
said goods and business, some of which have become
distinctive of the plaintiffs source, origin and authority. In
the year 2004 the plaintiff has conceived and adopted one
of such unique shape of its footwear (referred to as said
CROCS SHAPE TRADEMARK/TRADEDRESS) and true
representation whereof has been given herein below :
The plaintiffs CROCS SHAPE TRADEMARK/TRADE
DRESS.
*****
7 That the plaintiff is using the said registered Design
as a SHAPE TRADEMARK/TRADE DRESS in relation
to its said goods and business. The plaintiff is using the said
CROCS SHAPE TRADEMARK as a trademark within the
meaning of Sections 2(1)(m) and 2(1)(zb) of the Trade
Marks Act, 1999 and is being so used by the’ Plaintiff in
relation to its said goods in course of trade. The said
CROCS SHAPE TRADEMARK being applied to the
footwear of the Plaintiff duly distinguishes it from the
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 10 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
source and origin of the Plaintiff and indicates a trade
connection with the Plaintiff as proprietor thereof. Thus,
the plaintiffs said CROCS SHAPE
TRADEMARK/TRADE- DRESS is an inherently strong
trademark.
8 That the plaintiff has been using the said CROCS
SHAPE TRADEMARK/TRADE DRESS after 28.05.2004
continuously, extensively, exclusively openly and
commercially in the course of trade as a owner and
proprietor and that the plaintiff is the proprietor of the same
within the provisions of the Trade Marks Act 1999.
9 That the Plaintiff has been carrying on its said
business which covers 90 countries across the world
through a wide distribution network of wholesalers and
retailers, as also through its subsidiaries, affiliates,
licensees, distributors, and through e-commerce and by
virtue whereof the plaintiffs said business is consistently
growing under its said CROCS SHAPE
TRADEMARK/TRADE DRESS.
10 That the Plaintiff is also carrying on its business
extensively in relation to its said goods and business under
the said CROCS SHAPE TRADEMARK/TRADE DRESS
in more than 90 countries through its various affiliates,
associates, subsidiaries, licensees, etc. and also through its
websites, worldwide under the domain name
www.crocs.com and in India under the domain name
www.crocsindia.com.
11 That the Plaintiff has regularly and continuously
been promoting its said distinctive said CROCS SHAPE
TRADEMARK/TRADE DRESS through extensive
advertisements, publicities, promotions and marketing
research and the Plaintiff has been spending enormous
amounts of moneys, efforts, skills and time thereon. The
Plaintiff has been doing so through various means and
modes including through the visual, print and electronic
media, in leading Newspapers, trade literature &
magazines, word of mouth, over the internet, etc. and all of
which have tremendous reach, availability and circulation
world over including in India.
*****
23. The said Defendants, in the course of trade has
adopted the identical shape of footwear as a trademark in
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 11 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
relation to its impugned goods and business. (referred to as
the impugned ACTION SHAPE TRADEMARK/TRADE
DRESS).
24. That the plaintiff is aggrieved of use/intended use of
identical/similar SHAPE TRADEMARK/TRADE DRESS
in relation to its impugned footwear. This action is brought
against the defendants from using the identical SHAPE of
footwear as a trademark in relation to impugned goods. The
term impugned SHAPE TRADEMARK/TRADE DRESS
shall be construed accordingly in these proceedings.
25. That from bare perusal of both the products in
question, the dishonesty of the defendants are apparent. The
defendants have copied all the features of plaintiffs said
CROCS SHAPE TRADEMARK/TRADE DRESS.
26. The defendants’ adoption of impugned SHAPE
TRADEMARK/TRADE DRESS in respect of identical
goods is dishonest, malafide and fraudulent. The
defendants, besides adoption of impugned SHAPE trade
mark/trade dress, have also blatantly copied the essential
and striking features of plaintiffs said SHAPE trade
mark/label. The defendants’ malafide and dishonesty is
apparent, manifest and striking. The defendants are
misrepresenting in the market and trade and misguiding the
market and trade at large that the impugned goods are in
fact coming from the plaintiff. (All references to the
defendants’ impugned use of impugned SHAPE
TRADEMARK/TRADE DRESS be taken to include both
actual and/or threatened use thereof).
27. That the impugned SHAPE
TRADEMARK/TRADE DRESS of the Defendants is
entirely identical to that of the Plaintiffs said CROCS
SHAPE TRADEMARK/TRADE DRESS. The Defendants
have copied all the essential and basic features of the
Plaintiffs said CROCS SHAPE TRADEMARK/TRADE
DRESS footwear and its copyrights and thereafter given to
its impugned footwear the same shape as that of the
Plaintiff. The overall impression, appearance and
demeanour, usage, adoption and application of the
impugned SHAPE TRADEMARK/TRADE DRESS by the
Defendants is identical with and/ or deceptively similar to
that of the plaintiff and is thus fraudulent, dishonest and
deceitful.
28. The defendant’s impugned adoption and use of the
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 12 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
impugned ACTION SHAPE TRADE MARK in relation to
their respective products is without the leave and
permission of the plaintiff and the defendants are not the
proprietor of the impugned SHAPE
TRADEMARK/TRADE DRESS. The defendants have no
right to use them in any manner being in violation of the
plaintiffs common law rights therein. The defendants are
guilty of passing off.
29. The defendants by their impugned adoption and use
of the impugned SHAPE TRADEMARK/TRADE DRESS
in relation to the impugned goods are pirating the plaintiffs
said SHAPE TRADEMARK/TRADE DRESS and are also
guilty of passing off and enabling others to pass off their
goods and business as that of the plaintiff and are thus
violating the plaintiffs rights in the plaintiffs said SHAPE
TRADEMARK/TRADE DRESS.
30. The defendants are fully aware of or ought to be
aware of the plaintiffs right , goodwill, reputation, use and
all benefits in the plaintiffs said SHAPE TRADEMARK at
the time of their impugned adoption and use. The’
resemblance between the rival SHAPE
TRADEMARK/TRADE DRESS is so close that it can
hardly occur except by deliberate imitation. The defendants
are called upon to explain as to how they hit upon the
impugned SHAPE TRADEMARK/TRADE DRESS. The
defendants’ impugned adoption and use thereof is tainted at
inception and is a pirate and fraudulent use of the plaintiffs
said SHAPE TRADEMARK/TRADE DRESS.
31. The defendants have adopted and started using the
impugned design in relation to their impugned products
dishonestly, fraudulently and out of positive greed with a
view to take advantage of and to trade upon the plaintiffs
established goodwill, reputation and proprietary rights
therein. By the defendants’ impugned adoption and use,
deception and confusion in the market is ensuing or is
likely to so ensue. The plaintiffs said design are otherwise
being diluted and eclipsed thereby. Any person not
knowing clearly the relationship between the parties to this
action is bound to be confused by the defendants’ impugned
adoption and use and might do business with the defendants
thinking that he is dealing with the plaintiff or that some
strong, vital and subtle links exist between the plaintiff and
the defendants.
32. Due to the defendant’s impugned activities, the
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 13 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
plaintiff is suffering huge losses both in business and in
reputation and such losses are incapable of being assessed
in monetary terms. Unwary purchasers in market and trade
are being deceived and defrauded as to the origin of the
goods and business. The defendant’s gains are the plaintiffs
losses. The plaintiff has no access to the defendants’
accounts and the defendants are liable to render their
accounts to the plaintiff and to make good to the plaintiff
the profit and business earned by them. Without prejudice
to the rendition of accounts and in alternative thereto, the
defendants are liable to pay damages to the plaintiff, which
the plaintiff is conservatively and restrictively ascertaining
at Rs.1,00,05,000/- (Rupees Crore and Five Thousand
Only), although the Plaintiff is entitled to a larger amount.
The plaintiff crave leave to reserve its right under the
provision of Order 2 Rule 2 CPC to pray for suitable
additional damages at the appropriate stage in the
proceedings. In any case it is submitted that the impugned
activities of the defendants are illegal and void-ab-initio,
being in violation of the plaintiffs afore mentioned right.
33 That the plaintiff become aware of the defendant’s
impugned adoption and use from the market and trade in
about the First week of June, 2015 when the plaintiff came
across the availability of the defendant’s impugned goods in
the market of Delhi. The plaintiff aggrieved thereby,
immediately launched enquiry(s) in the market and
ascertained that the defendant’s impugned goods are being
sold through out country and also over the internet through
various online market places and e-commerce websites,
including on web, sites of defendants namely
www.libertyshoes.com. At that point of time plaintiff made
inquiry revealed that the defendants had only recently
started commercially using, soliciting, selling, publishing,
exposing, etc. the impugned goods in relation to the
impugned goods and were doing so in the markets of Delhi.
At that point of time the plaintiff filed Suit bearing CS No.
155 of 2015 before the District Court, Patiala House, New
Delhi, seeking to restrain the defendants inter-alia against
infringement of registered design under no. 197685 and
also passing off. Vide order dated 15.07.2015 the plaintiff
herein was granted ex-parte injunction in its favour.
Subsequently vide order dated 09.05.2016 passed in the suit
bearing CS. No. 701 of 2015, the matter was transferred to
Hon’ble High Court of Delhi by virtue of operation of
Section 22 (4) of the Design Act and renumbered as
C.S.(Comm) No. 772 of 2016. The same is pending
adjudication before the Hon’ble Delhi High Court. The
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 14 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
defendants are having all the intention to use the impugned
shape trademark/trade dress .
34 That the present suit is being filed in view of law
laid down by the Hon’ble Delhi High Court in Judgment
namely Mohan Lal , Proprietor of M/s Mourya Industries
Versus Sona Paint & Hardware reported as 2013 (55)
PTC 61 (DEL) (FB), whereby the Hon’ble Delhi High
Court has returned the finding that composite suit for
infringement of registered trademark and passing off would
not lie. However the suit for infringement of registered
design and suit for passing off of design as a shape trade
mark shall be tried together in case. In view of the afore
said Judgment, the plaintiff is filing then instant suit on the
basis of common law right in the said design as a SHAPE
TRADEMARK. The instant suit can be tried together along
with suit bearing C.S:(Comm) No.772 of 2016.
*****
PRAYER
39. That under the facts and circumstances of the
present case, plaintiff most respectfully prays as under:
a) For a decree of permanent injunction
restraining the defendants by themselves as also
through their individual proprietors/partners, agents,
representatives, distributors, assigns, heirs,
successors, stockiest( s) and all others acting for and
on their behalf from manufacturing, marketing,
supplying, using, selling, soliciting, exporting,
displaying, advertising on the internet or by any
other mode or manner or having intention to use the
impugned SHAPE TRADEMARK/TRADE DRESS
or any other shape trademark/trade dress which are
deceptively similar to or fraudulent and/or obvious
imitation of the Plaintiffs said CROCS SHAPE
TRADEMARK/TRADE DRESS in relation to
footwear and related/allied products and from doing
any other acts or deeds amounting to or likely to
violate the common law right in the plaintiffs said
CROCS SHAPE TRADEMARK/TRADE DRESS.
b) Restraining the defendants from disposing
off or dealing with their assets including their
premises at the addresses mentioned in the Memo of
Parties and their stocks-in-trade or any other assets
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 15 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
as may be brought to the notice of the Hon’ble Court
during the course of the proceedings and on the
Defendants’ disclosure thereof and which the
Defendants are called upon to disclose and/ or on its
ascertainment by the Plaintiff as the Plaintiff is not
aware of the same as per Section 135(2)(c) of the
Trade Marks Act,1999 as it could adversely affect
the Plaintiffs ability to recover the costs and
pecuniary reliefs thereon.
c) For an order for delivery up of all the
impugned finished and unfinished material bearing
the impugned and violative impugned SHAPE
TRADEMARK/TRADE DRESS in relation to the
impugned or any other deceptively similar
impugned SHAPE TRADEMARK/TRADE DRESS
including its blocks, moulds and goods etc. to the
plaintiff for the purposes of destruction and erasure.
d) For an order for rendition of accounts of
profits earned by the Defendants by their impugned
illegal trade activities and a decree for the amount
so found in favour of the Plaintiff on such rendition
of accounts.
e) In the alternative to accounts for a decree for
grant of damages of Rs. 1,00,05,000/- from the
defendants jointly and severely to the plaintiff.
f) For an order for costs of proceedings.”
15.2 Para 35 of the plaint, which set out the manner in which the
cause of action had arisen, read thus:
“35. The cause of action for the present suit has been set out in
the preceding paras. The cause of action has arisen when the
plaintiff become aware of the defendant’s impugned adoption and
use from the market and trade in about the First week of June,
2015, as the plaintiff came across the availability of the defendant’s
impugned goods in the market of Delhi. The cause of action further
accrued on 15.07·2015 when the plaintiff was granted ex-parte
injunction in Suit bearing CS. No. 155 of 2015. The cause of action
is still continuing and is accruing day-by-day and shall continue to
so accrue on daily basis as the defendants are having intention to
use the impugned SHAPE TRADEMARK/TRADE DRESS in
Signature Not Verified relation to impugned goods and business.”
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 16 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
16. The Written Statement
16.1 The averments in the written statement filed by Liberty by way
of response to the plaint, to the extent they are at all of consequence,
may be noted thus:
(i) The design pertaining to Design Registration 197685
already stood invalidated in other jurisdictions outside India, to
which there was no reference in the plaint.
(ii) Crocs was not the originator of the said design.
(iii) The shape, form and style of Crocs’ footwear had a pre-
existing clog design, which was in the public domain and had
been worn and used in several countries in varying forms. The
design was such that it offered comfort and support to the foot.
Various third parties had been using the same design before and
after 2004. It, therefore, lacked novelty. No exclusivity over
the shape of the Crocs trade dress could, therefore, be claimed
by Crocs.
(iv) Details relating to these facts had been concealed in the
plaint.
(v) Having itself copied the shape forming subject matter of
its registered design from third parties, Crocs could not claim
any prior reputation or goodwill in the said shape.
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 17 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
(vi) Crocs had not produced any evidence of having used the
shape as a trademark or of the shape having become a source
identifier of Crocs’ footwear, to the extent that it was identified
only with the footwear manufactured by Crocs.
(vii) Liberty was not seeking to pass off its footwear as that of
Crocs. Rather, the brand name “LIBERTY” with the sub-brand
“GLIDER” were prominently displayed on the footwear. There
was, therefore, no likelihood of confusion between the two
products.
(viii) No misrepresentation could, therefore, be alleged against
Liberty.
(ix) The shape asserted by Crocs was not a “trademark”
within the meaning of Section 2(1)(m)10 read with 2(1)(zb)11 of
the Trade Marks Act, 1999. It was not capable of distinguishing
the goods of Crocs from those of others.
(x) There was no evidence of the shape having acquired any
10 (m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging or combination of colours or any combination thereof;
11 (zb) “trade mark” means a mark capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from those of others and may include shape of goods, their
packaging and combination of colours; and–
(i) in relation to Chapter XII (other than Section 107), a registered trade mark or a mark used
in relation to goods or services for the purpose of indicating or so as to indicate a connection in the
course of trade between the goods or services, as the case may be, and some person having the right
as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation
to goods or services for the purpose of indicating or so to indicate a connection in the course of
trade between the goods or services, as the case may be, and some person having the right, either as
proprietor or by way of permitted user, to use the mark whether with or without any indication of
Signature Not Verified the identity of that person, and includes a certification trade mark or collective mark;
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 18 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
secondary meaning so as to be identified only with Crocs or of
having become indicative of Crocs’ footwear.
(xi) Crocs had, in fact, merely copied the clog shape of
footwear, used by others much prior in point of time, and added
a strap to it.
16.2 Predicated on these submissions, Liberty submitted that no
sustainable cause of action had been made out in the plaint which was,
therefore, liable to be dismissed.
16.3 Notably, in the written statement, there was no specific
objection taken to the maintainability of the suit instituted by Crocs on
the ground that no suit for passing off could lie in respect of a design
which is registered under the Designs Act. In other words, the sole
ground on which the learned Single Judge has, in the impugned
judgment dated 18 February 2019, dismissed the suit, actually finds no
mention in the written statement filed by Liberty.
The replication
16.4 Crocs filed a replication to the written statement filed by
Liberty. All allegations in the written statement were denied. Crocs
asserted that it was the originator of the Crocs trade dress and that it
had in fact taken action for design piracy against others who were
using similar trade dresses. The submission that the Crocs trade dress
was indelibly associated with Crocs’ footwear and was, therefore, a
source identifier, was reiterated. Beyond this, it is not necessary to
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 19 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
refer to the averments in the replication, which do not particularly
affect the outcome of the present proceedings.
17. The Impugned Judgment
17.1 Though no application was filed by Liberty, praying for
dismissal of the suit filed by Crocs under Order VII Rule 11 12 of the
CPC or Order XIIIA of the CPC as amended by the Commercial
Courts Act, 2015, the learned Single Judge has, by the impugned
judgment dated 18 February 2019, dismissed the suit. Fundamentally,
in doing so, the learned Single Judge has relied on the judgment of a
Five Judge Bench of this Court in Carlsberg Breweries A/S v Som
Distilleries and Breweries Ltd13, primarily on the following
enunciation, contained in para 43 of the said decision:
“43 This court is also of the opinion that the Full Bench ruling
in Mohan Lal (supra) made an observation, which is inaccurate: it
firstly correctly noted that registration as a design is not possible,
of a trade mark; it, however later noted that “post registration under
Section 11 of the Designs Act, there can be no limitation on its use
as a trademark by the registrant of the design. The reason being:
the use of a registered design as a trade mark, is not provided as a
ground for its cancellation under Section 19 of the Designs Act.”
This observation ignores that the Designs Act, Section 19 (e)
specifically exposes a registered design to cancellation when “(e) it
12 11. Rejection of plaint. – The plaint shall be rejected in the following cases:–
(a) where it does not disclose a cause of action;
(b) where the relief claimed is undervalued, and the plaintiff, on being required by the Court
to correct the valuation within a time to be fixed by the Court, fails to do so;
(c) where the relief claimed is properly valued but the plaint is written upon paper
insufficiently stamped, and the plaintiff, on being required by the Court to supply the requisite
stamp-paper within a time to be fixed by the Court, fails to do so;
(d) where the suit appears from the statement in the plaint to be barred by any law;
(e) where it is not filed in duplicate;
(f) where the plaintiff fails to comply with the provisions of Rule 9;
Provided that the time fixed by the Court for the correction of the valuation or supplying
of the requisite stamp-papers shall not be extended unless the Court, for reasons to be recorded, is
satisfied that the plaintiff was prevented by any cause of an exceptional nature from correcting the
valuation or supplying the requisite stamp-papers, as the case may be, within the time fixed by the
Court and that refusal to extend such time would cause grave injustice to the plaintiff.
13 256 (2019) DLT 1 (FB)
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 20 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
is not a design as defined under clause (d) of section 2.” The reason
for this is that 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 trade mark as defined in clause (v) of sub-
section (1) of section 2 of the Trade and Merchandise Marks Act,
1958 …..” Therefore, if the registered design per se is used as a
trade mark, it apparently can be cancelled. The larger legal
formulation in Mohan Lal (supra), that a passing off action i.e.,
one which is not limited or restricted to trademark use alone, but
the overall get up or “trade dress” however, is correct; as long as
the elements of the design are not used as a trademark, but a larger
trade dress get up, presentation of the product through its
packaging and so on, given that a “passing off” claim can include
but is also broader than infringement of a trademark, the cause of
action against such use lies.”
17.2 On the basis of the above paragraph from Carlsberg, the
learned Single Judge has, in the impugned judgment, held that no
passing off action can be founded on a trade mark or trade dress which
is in its entirety registered as a design under the Designs Act. On
facts, the learned Single Judge finds that the subject matter of the
passing off action laid by Crocs against Liberty – as also against the
other defendants in the accompanying suits – was no more, and no
less, than the design in respect of which it already held a registration
under the Designs Act. This, according to the learned Single Judge, is
completely impermissible, in view of the decision in Carlsberg. As,
according to the learned Single Judge, there is no other basis for the
suits, all the suits have been dismissed for want of any maintainable
cause of action. The following paragraphs from the impugned
judgment manifest this view:
“40. As would be evident from the aforesaid contentions, the
counsel/senior counsel for the plaintiff have been unable to
controvert the argument of the counsel for the defendants that the
plaintiff is alleging passing off by the defendants of their goods as
that of the plaintiff by copying the registered design of the plaintiff
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 21 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
and nothing else and that reliefs on the ground of infringement, of
design as well as on the ground of passing off are on the same
facts. The plaintiff, from its pleadings has been unable to point out
any other feature/element or part of the larger trade dress, get up
of the product of plaintiff, other than the elements of its registered
design, by adopting which the defendants are passing off their
goods as that of the plaintiff. What is thus for adjudication is:
(A) Whether a registered design of a plaintiff can
constitute a trade mark to confer on such plaintiff a right to
restrain another, not on the ground of infringement of its
design but on the ground of passing off its goods as that of
the plaintiff by adopting the registered design of the
plaintiff, or to confer on such plaintiff a right to restrain
another on the ground of both, infringement of design and
passing off; and,(B) Whether the passages quoted above of Carlsberg
Breweries adjudicate the said controversy and even if the
answer is in the affirmative, whether the said passages are
contrary to Mohan Lal and if so to what effect.
41. In my opinion, a registered design confers on the
registrant, only the right to restrain another from infringing the
design and not to, also claiming the registered design as its trade
mark/trade dress, restrain another from passing off its goods as
that of the registrant, by copying the registered design. My reasons
for concluding so follow:–
A. A perusal of the statement of objects and reasons
for enactment of the Designs Act, 2000 shows the same to
have been enacted with the objective of balancing the
interest in, on the one hand ensuring effective protection to
registered designs and to promote design, activity in order
to promote the design element in an article of production
and on the other hand “to ensure that the law does not
unnecessarily extend protection beyond what is necessary
to create the required incentive for design activity, while
removing impediments to the free use of available
designs.”
B. The Designs Act, 2000, as per its preamble is an act
to consolidate and amend the law relating to protection of
designs and came into force on 11th May, 2001, when
though the Trade Marks Act, 1999 had been enacted but
not come into force (it came into force subsequently on
15th September, 2003). Use of the words “to consolidate
and amend” indicate the Act to be a complete code in itself
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 22 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
relating to the law of designs.
*****
D. As per the definition of design in the Designs Act, if
the feature of shape, configuration, pattern, ornament or
composition of lines or colours applied to any article is
being used as a trade mark, it cannot be registered as a
design.
*****
K. Further, if it were to be held that while one category
of trade marks cannot be registered as a design, another
category of trade marks can be so registered and enjoy
protection, both as a trade mark and as a design, the same
would amount to, without any reason, discriminating
between two kinds of trade mark.
L. Thought has also crossed my mind that even if the
contention of the counsel for the plaintiff, of shape being
protected as a trade mark under the common law, though
no case law has been shown in this regard, were to be
correct, whether the meaning of trade mark in an action of
passing off can be wider than the meaning of trade mark in
the 1958 Act or the 1999 Act relating to Trade Marks; since
the bar in Section 2(d) supra to design being not a trade
mark is with reference to definition thereof in the 1958 Act.
It was so suggested by Senior counsel for plaintiff by
contending that the observations in para no. 22.8 of
majority opinion in Mohan Lal supra was only about
registration and not about passing off. However, the answer
thereto is to be found in Section 27 of the 1958 Act as well
as 1999 Act and which remains unchanged. The same,
though provides that no proceedings with respect to
infringement of an un-registered trade mark lie but also
provides that the fact that no proceedings for infringement
can lie would not affect the rights of action for passing off
or the remedies in respect thereof. Section 27, while so
providing, does not separately define trade mark for an
action of passing off and the definition of trade mark,
whether in an action for-. infringement or in an action for
passing off would be the same i.e. as in Section 2(1)(v) of
the 1958 Act and as in Section 2(1)(zb) of the 1999 Act. I
am thus unable to accept the contention of senior counsel
for the plaintiff that Carlsberg Breweries supra holds as
erroneous only the observation in Mohan Lal supra about
registration; and not about passing off.
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 23 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
M. The contention of the counsel for the plaintiff, that
owing to the prohibition of a design being a trade mark
being contained in the Designs Act and the absence of any
prohibition in the Trade Marks Act to a design being a
trade mark, in an action for infringement of a trade mark or
passing off, it is irrelevant that what is claimed as a trade
mark is registered as a design, cannot be accepted. The
intention of the Legislature is clear from the prohibition
contained in the Designs Act, and to accept the contention
of the counsel for the plaintiff would defeat the legislative
intent and the legislative intent in enactment of the statute
has to be respected. Once the legislative intent is that a
trade mark cannot be a design, the features of shape,
configuration, pattern, ornament or composition of lines or
colours applied to any article, even if used as a trade mark,
cease to be a trade mark on registration being granted to the
same as a design, and a registrant is to be deemed in law to
have surrendered, abandoned, acquiesced and waived all
rights to use such features as a trade mark. Else, there
would be an anomalous situation, with there being in
existence a prohibition to use a trade mark as a design but
there being no prohibition to use of a design as a trade mark
and such anomaly cannot be attributed to any law making
authority. A prohibition contained in one statute has to be
given effect to, while interpreting all other statutes.
*****
O. That brings me to the argument of the senior
counsel for the plaintiff of, the action in passing off being
not based on any rights in a trade mark but on deception,
misrepresentation and usurpation of goodwill. The senior
counsel for the plaintiff, by contending so sought to dis-
associate the action brought by these suits from the law
relating to trade mark and in response whereto, the counsel
for the defendants referred to McCarthy supra14 opining,
that “copying is not only good, it is a federal right — a
necessary complement to the patent system’s grant of
limited monopolies… effective competition and the
penumbra of the patent laws require that competitors be
able to slavishly copy the design of a successful product”
and that business people “erroneously equate competition
by copying with unfair conduct….but federal law
encourages wholesale copying, the better to drive down
prices. Consumers rather than producers are the objects of14 McCarthy on Trade Marks and Unfair Competition 4 th Edition
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 24 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
the law’s solicitude”.
P. On deeper consideration, I am unable to accept the
said contention also of the senior counsel for the plaintiff.
The action for misrepresentation and deception, as the
senior counsel for the plaintiff qualifies an action in passing
off, is after all in protection of some right and which right,
is as the first adopter of the mark. The purport of the law of
trade marks, whether in an action for passing off or
infringement, is to secure the rights of the first adopter.
Goodwill is also a right and there can be no goodwill dis-
associated from the features of shape, configuration,
pattern, ornament or composition of lines of colours
applied to any article divorced from that article or product.
Thus, irrespective of whether there are any property rights
in a trade mark, protection, in an action for passing off, is
sought of a trade mark. Moreover, once the law relating to
trade marks has been codified, saving the action for passing
off in respect of unregistered trade marks, it is not open to
contend that an action for passing off is divorced from
rights as a trade mark. I am also not convinced that trade
mark is not a property. Trade mark is a species of non-
tangible properties which have come to be known as
‘intellectual property’ and rights wherein are known as
“intellectual property rights”. Intellectual properties today,
in twenty first century, are far more valuable than tangible
properties. Mind Gym Limited15 supra referred to by the
senior counsel for the plaintiff merely quotes a passage
from Star Industrial Co. Ltd. v Yap Kwee Kor16, and which
in turn refers to the dicta in Attorney General Spalding &
Bros. v A.W. Gamage Ltd.17, pronounced in the era of
tangible properties. We are today living in the world of
even banks accepting intellectual properties as security for
advancing finance.
Q. The Legislature in its wisdom choose to legislate
separately for features of shape, configuration, pattern,
ornament or composition of lines or colours applied to any
article, which were earlier construed as trade mark and
protected so, by enacting the Designs Act, 2000 and
granting protection to them for a maximum period of 20
years. To hold, that though the legislative intent is to
protect such features from use by another, for a limited
period of 20 years only and to after the expiry of the said
20 years, allow the same to be used by others, the said
15 Mind Gym Ltd v Mindgym Kids Library Pvt Ltd, (2014) 58 PTC 270
16 1976 FSPLR 256
17 (1914-15) All ER Rep 147
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 25 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
features, though not permitted to be used as a trade mark
during the period of registration, after the said period
qualify as a trade mark and are protected from use by other,
would again, in my opinion, defeat the legislative intent.
Just like the legislature, deemed it appropriate to
grant/allow patent rights for a limited period, and not in
perpetuity, like trade mark, similarly the legislature having
deemed it appropriate to allow/grant limited period
exclusivity to designs, which also qualify as trade marks,
the limited period protection cannot be extended to
protection in perpetuity.
R. In my view, the only inference from a harmonious
reading of the law relating to trade mark and the law
relating to designs is, that what is registered as a design
cannot be a trade mark, not only during the period of
registration as a design but even thereafter.
S. However it still remains to be seen, whether the
conclusion I have reached above is contrary to the majority
view in Mohan Lal supra. Because, if it is so, then what I
have concluded will merely be my rumblings and I will
continue to be bound by the dicta of the larger bench.
T. The reference to the larger bench in Mohan
Lal supra was inter alia on “whether there can be an
availability of remedy of passing off in absence of express
saving or preservation of the common law by the Designs
Act, 2000 and more so when the rights and remedies under
the Act are statutory in nature”. The majority concluded in
para no. 22,- (I) that a design can be used as a trade mark
and if by virtue of its use, goodwill is generated in the
course of trade or business, it can be protected by an –
action in the nature of passing off; (II) a design which is
registered under the Design Act may not have the statutory
rights which a registered trade mark has under the Trade
Marks Act, but it would certainly have the right to take
remedial steps to correct a wrong committed by a defendant
by instituting a passing off action; however if such an
action is instituted, the plaintiff would have to demonstrate
that the registered design was used by him as a trade mark
which, in the minds of the purchasing public is associated
with his goods or services which, have acquired
goodwill/reputation which is worth protecting. While
giving reasons in paragraphs 22.1 to 22.8 of the judgment
as reported in (2013) 55 PTC 61 (Del) (FB) for the said
conclusion, (a) reliance in paragraph 22.2 was placed on
McCarthy, in turn referring to foreign judgments not in the
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 26 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
context of the Indian statutes aforesaid and I do not find in
the subsequent paragraphs any reason as to how the foreign
view/judgment applied in the Indian context; (b) in
paragraph 22.4, it was observed, that though once the
statutory period of registration of a design expires, it falls
in public domain and anyone can use the same but only if
ensures that there is no confusion caused as to the source
and origin of the goods and services; (c) in paragraph 22.6,
it was added that “this logic applies based on the principle
that trade mark is something which is extra, which is added
on to the goods to denote origin, While a design forms part
of the goods”; (d) in para no. 22.7, reference was made
to Smith Kline & French Laboratories Ltd. v Sterling-
Winthrop Group Ltd.18, holding “A design forms part of
the goods themselves. A trade mark is something which is
extra, which is added to the goods for the purpose of
denoting the origin of the goods, and, speaking generally of
trade mark and design, the same thing is not a trade mark
and a design” and, “the extra” added to the goods is the
colour applied to one half of the capsule and the various
colours applied to the individual pellets within the capsules;
and, (e) finally, in paragraph 22.8, it was reasoned that
though having regard to the definition of a design in the
Designs Act, “it may not be possible to register
simultaneously the same mater as a design and a trade
mark. However post registration under Section 11 of the
Designs Act, there can be no limitation on its use as a trade
mark by the registrant of the design”.
U. Paragraph 22 of the majority opinion in Mohan
Lal supra to which alone attention was invited, cannot be
read de hors the reasons given in paragraphs 22.1 to 22.8
thereunder. A closer scrutiny of said reasons shows that the
conclusions recorded in paragraph 22 are not absolute.
V. A closer reading of the majority opinion in Mohan
Lal shows the same also to be holding that what is usable
and protectable as a trade mark is “something extra” or
more than what is registered as a design. The majority
opinion in Mohan Lal supra cannot be read as holding
what is registered as a design, can also be used as a trade
mark and is protectable as a trade mark. What is generally
believed by the legal community as the majority view
in Mohan Lal supra, is thus not found on a detailed reading
of the judgment and is perhaps on a “general impression”
of the judgment.
18 (1975) 1 WLR 914
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 27 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
W. The plaintiff in the present case has not been able to
show any extra, besides the design, which is used as a trade
mark.
X. As far as the conclusion, in majority opinion
in Mohan Lal supra, in paragraph 22.8, of a design being
usable as a trade mark post registration is concerned, I may
add that, in my opinion, the goodwill acquired during the
period of registration, when there is a statutory bar to its
use as a trade mark, cannot be considered and in my
opinion anyone claiming protection as a trade mark will
have to show the rights as accruing with effect from post
registration. In the present cases however we are not
concerned with the said question inasmuch as the
registrations as design in favour of plaintiff are still valid.
Y. I thus answer the first of the aforesaid questions by
holding 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 whereto goodwill has been acquired,
it is only those extra features which can be protected as a
trade mark. A registrant of a design would thus be entitled
to maintain an action for passing off against other, not by
showing that such another has adopted the registered design
of the registrant but by showing that the product of such
registrant, 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. For copying registered design however, only an
action for infringement under the Designs Act would lie.
42. The present suits are premised on the registered design also
constituting a trade mark per se and thus are not maintainable as
per Mohan Lal supra also. The plaintiff has not pleaded anything
extra, other than the registered design, which is used and has
goodwill as a trade mark and which can be protected in these
actions for passing off.
43. Though in view of analysis of Mohan Lal supra and as per
which also the present suits are not maintainable, the need to delve
into the second question formulated above does not arise but for
the sake of completeness, I proceed to adjudicate the same.
44. As would immediately be obvious at this stage, the passage
of Carlsberg Breweries supra quoted above do not lay down
anything different from what was held by the majority in Mohan
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 28 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
Lal supra. The four of the five Judges of the Five Judges Bench
in Carlsberg Breweries supra when observed that “the larger legal
formulation in Mohan Lal supra that a passing off action i.e. one
which is not limited or restricted to trade mark use alone, but the
overall get up or “trade dress” however, is correct” have also
analysed Mohan Lal supra as done by me above and which is
amply clear from the words immediately falling i.e. as long as the
elements of the 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 include
but is also broader than infringement of a trade mark, the cause of
action against such use lies” which are nothing but echoing
paragraphs 22.6 and 22.7 of the majority opinion in Mohan
Lal supra. Paragraph. 45 of Carlsberg Breweries supra thus
cannot be held as striking a different note than majority view
in Mohan Lal supra.
45. Thus, Carlsberg Breweries supra is not contrary to the
majority opinion in Mohan Lal supra.
46. However, even if it were to be otherwise, the consistent
view is that even the obiter dictum of a Full Bench is entitled to a
great weight and the binding effect of a prior decision does not
depend upon, whether a particular argument was considered
therein or not, provided that the point with reference to which
argument was subsequently advanced was actually decided.
Reference in this regard may be made to Philip Jeyasingh v The
Joint Registrar of Co-operative Societies, Chidambaranar
Region, Tuticorin19.
47. I have already noted above that the four judges in
Carlsberg Breweries, per paragraph 20 thereof, considered the
reference under two heads, the second of which is “are the two
causes of action, i.e. a claim for design infringement and the other
for passing off, so disparate or dissimilar that the court cannot try
them together in one suit”. Paragraphs 44 & 45 of the judgment
quoted above are in the context of answering the said point and it
cannot be said that are beyond the reference.
48. The Division Bench of the High Court of Bombay,
in Naseemunisa Begum v Shaikh Abdul Rehman20, while
disagreeing with the contention that the issue referred to the Full
Bench being a limited one, the other matters which are described
by the Full Bench were not covered in that issue and therefore
decision given by the Full Bench is not binding on a smaller bench,
reasoned that the decision given by the Full Bench is always
19 1992 SCC OnLine Mad 30
20 2001 SCC OnLine Bom 234
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 29 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
binding on the smaller benches and it is not proper for the smaller
benches to go into the question whether the Full Bench was called
upon to decide those issues and the decision given by the Full
Bench cannot be called as obiter dicta because all relevant
questions had to be considered before giving a decision on the
point referred to the Full Bench. Reliance was placed on Pabitra
Mohan Dash v State of Orissa21. To the same effect is the view of
the High Court of Calcutta in Sunil Kumar Das v Director of
Public Instruction, W.B.22. I respectfully agree and hold that even
if passages in Carlsberg Breweries supra relied upon by the
counsel for the defendants were to be held to be beyond the
reference, I would still remain bound and decide in accordance
therewith.
49. It being not in dispute that the passing off pleaded in the
plaint is by use by the defendants of what is registered by the
plaintiff as a design, in terms of Mohan Lal as well as Carlsberg
Breweries supra, the same is not permissible in law. The suits thus,
as per averments in the plaints therein, are not maintainable and
liable to be dismissed.
50. The suits having been held to be not maintainable, the need
to deal with the claim for interim injunction therein, though
arguments were heard thereon also, does not arise.”
18. The five-Judge Bench in Carlsberg was constituted on the basis
of an order dated 2 May 2017 passed by a learned Single Judge,
whereby an earlier judgment of a Full Bench of three Hon’ble Judges
of this Court in Mohan Lal, on the aspect of maintainability of a
composite suit in relation to infringement of a registered design and
passing off, between the same parties, was, or was not, maintainable in
the light of Order II Rule 3(1)23 of the CPC.
19. In order to adjudicate on the issue in controversy, it would be
21 (2001) 2 SCC 480
22 2010 SCC OnLine Cal 2218
23 3. Joinder of causes of action. –
(1) Save as otherwise provided, a plaintiff may unite in the same suit several causes of action
against the same defendant, or the same defendants jointly; and any plaintiffs having causes of
action in which they are jointly interested against the same defendant or the same defendants jointly
Signature Not Verified may unite such causes of action in the same suit.
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 30 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
necessary first to advert to the judgment of the three-Judge Full Bench
in Mohan Lal; thereafter to proceed to the judgment of the five- Judge
Full Bench in Carlsberg and thereafter, test the correctness of the
impugned judgment of the learned Single Judge in the light of these
decisions and the rival submissions of learned counsel before us.
20. Mohan Lal
20.1 Before therefore adverting to the impugned judgment of the
learned Single Judge, we may first examine the decision of the three-
Judge Full Bench of this Court in Mohan Lal.
20.2 The batch of suits in which the decision of the three-Judge
Bench in Mohan Lal came to be passed was originally filed before the
District Court. In the said suits, an application was filed under Section
22(4)24 of the Designs Act, seeking transfer of the suits to the High
Court, as the validity of the design asserted by Mohan Lal in the suits
was questioned in the written statement filed by the defendants. The
suits were, accordingly, transferred to the Original Side of this Court,
and placed before a learned Single Judge.
20.3 The learned Single Judge of this Court, before whom the suits
came to be listed, felt that there was a cleavage of opinion on various
aspects among various Benches of this Court, which needed to be
resolved by a Full Bench. The following issues were, therefore,
24 (4) Notwithstanding anything contained in the second proviso to sub-section (2), where any ground on
which the registration of a design may be cancelled under Section 19 has been availed of as a ground of
defence and sub-section (3) in any suit or other proceeding for relief under sub-section (2), the suit or such
other proceeding shall be transferred by the court, in which the suit or such other proceeding is pending, to
the High Court for decision.
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 31 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
identified by the learned Single Judge as needing resolution by a Full
Bench:
“I. Whether the suit for infringement of registered Design is
maintainable against another registered proprietor of the design
under the Designs Act, 2000?
II Whether there can be an availability of remedy of passing
off in absence of express saving or preservation of the common law
by the Designs Act, 2000 and more so when the rights and
remedies under the Act are statutory in nature?
III Whether the conception of passing off as available under
the Trade Marks can be joined with the action under the Designs
Act when the same is mutually inconsistent with that of remedy
under the Designs Act, 2000?”
20.4 Of the aforesaid three issues, arising for consideration, as
identified in para 4 of Mohan Lal, Issue I is of no consequence to us.
The discussion hereinafter would, thereafter, be with respect to the
findings of the three-Judge Bench with respect to Issues II and III.
20.5 Re. Issue II
20.5.1 Mohan Lal first identified the ingredients of a passing off
action thus, in para 19 of the report:
“19 In order to answer the second issue, one would have to
briefly delve into what constitutes a passing off action. A passing
off action simply put is an action filed to vindicate one’s claim that
the defendant by employing misrepresentation (whether intentional
or not) is seeking to represent to the public at large that his goods
are those of the claimant and such a mis-representation has caused
or is likely to cause substantial damage to the goodwill/reputation
which is attached to the plaintiff’s goods. Therefore, in a passing
off action the plaintiff would have to establish the following
ingredients: –
(i) that there is goodwill or reputation attached to the
goods or services which the plaintiff offers, in the mind of
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 32 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
the purchasing public, i.e., the consumers, who associate or
are in a position to identify such goods or services by virtue
of trademark used, which could include the get-up, trade-
dress, signs, packaging, label, etc.
(ii) that the defendant has employed mis-representation
which has made the consumers believe that the defendants
goods are those of the plaintiff. It is no defence in an action
of passing off that the mis-representation was unintentional
or lacked fraudulent intent;
(iii) And lastly, that the defendant’s action has caused
damage or is calculated to cause damage; [see Reckitt &
Colman Products Limited v Borden Inc. (Jif
25
Lemon case) and Erven Warnink B.V. v J. Towend &
Sons (Hull Ltd.) (Advocaat case)26].”
20.5.2 Mohan Lal thereafter proceeded to hold that, by a juxtaposed
reading of the definition of “trade mark” in Section 2(1)(zb)27 of the
Trade Marks Act and the definition of “design” in Section 2(d)28 of
the Designs Act, it followed “that a design can be used as a trade mark
and if by virtue of its use, goodwill is generated in the course of trade
or business, it can be protected by an action in the nature of passing
off’. Thus, the three-Judge Bench was clear in its view that there was
no proscription on the use of a registered design as a trademark. If
25 (1990) RPC 341
26 (1980) RPC 31
27 (zb) “trade mark” means a mark capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from those of others and may include shape of goods, their
packaging and combination of colours; and–
(i) in relation to Chapter XII (other than Section 107), a registered trade mark or a mark used
in relation to goods or services for the purpose of indicating or so as to indicate a connection in the
course of trade between the goods or services, as the case may be, and some person having the right
as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation
to goods or services for the purpose of indicating or so to indicate a connection in the course of
trade between the goods or services, as the case may be, and some person having the right, either as
proprietor or by way of permitted user, to use the mark whether with or without any indication of
the identity of that person, and includes a certification trade mark or collective mark;
28 (d) “design” means only the features of shape, configuration, pattern, ornament or composition of lines
or colours applied to any article whether in two dimensional or three dimensional or in both forms, by an
industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the
finished article appeal to and are judged solely by the eye; but does not include any mode or principle of
construction or anything which is in substance a mere mechanical device, and does not include any trade
mark as defined in clause (v) of sub-section (1) of Section 2 of the Trade and Merchandise Marks Act,
1958 or property mark as defined in Section 479 of the Indian Penal Code or any artistic work as defined in
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 33 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
such use generated goodwill in the design used as a trademark, that
goodwill could be subject matter of protection in a passing off action.
20.5.3 Thereafter, dealing with the contentions advanced by the
defendant before it, Mohan Lal proceeded to hold as under in paras
22, 22.1 and 22.2 of the report:
“22. In our view, the aforesaid contentions are flawed for the
reason that while the Trade Marks Act confers certain statutory
rights qua a registered trade mark, it does not deprive a user of an
unregistered trade mark the right to protect the misuse of his mark
by a defendant who is in possession of a registered trade mark.
Therefore, in so far as a design, which is registered under the
Designs Act is concerned, it may not have the statutory rights,
which a registered trade mark has, under the Trade Marks Act, it
would certainly have the right to take remedial steps to correct a
wrong committed by a defendant by instituting a passing off action.
If such an action is instituted, the plaintiff would have to
demonstrate that the registered design was used by him as a trade
mark which, in the minds of the purchasing public is associated
with his goods or services which, have acquired
goodwill/reputation which is worth protecting. Quite naturally,
result of such an action, would depend upon whether or not the
plaintiff is successful in proving the essential ingredients involved
in a passing off action, to which we have already made a reference
hereinabove.
22.1 Therefore, the argument that since there is no saving clause
in the Designs Act as found in Section 27(2) of the Trade Marks
Act, and consequently such a remedy ought not to be made
available qua a registered design, which is used as a trade mark, is
in our view, completely without merit. As is obvious, such a
passing off action would be based on a plea that: the design, which
is an unregistered mark, was being used by the plaintiff for the
purposes of business; and that the plaintiff’s goods and/or services
had acquired a reputation and/or goodwill, which were identified in
the minds of the consumers, by associating the design/the mark,
with the goods and/or services. In other words, the plea would be
that the design which was being used as a mark identified the
plaintiff, as the source of the goods supplied or services offered.
clause (c) of Section 2 of the Copyright Act, 1957;
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 34 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
22.2 The plaintiff, in our opinion, would not have to look to the
Designs Act, for instituting such an action.”
20.5.4 The following propositions flow from these passages from the
judgment in Mohan Lal:
(i) Registration as a trade mark confers, on the registrant,
statutory rights available under the Trade Marks Act.
(ii) Though these statutory rights may not be available if the
trade mark is not registered, the owner of an unregistered trade
mark nonetheless retains the right to protect the mark from
misuse by defendant, even if the defendant is in possession of a
registered trade mark. That right could be by way of a passing
off action.
(iii) To sustain such a passing off action, however, the
plaintiff would have to demonstrate that
(a) the registered design was used by him as a trade
mark,
(b) the trade mark was, in the minds of the purchasing
public, associated with the plaintiff’s goods or services,
and
(c) this had resulted in accumulation of
goodwill/reputation which was worthy of protection.
(iv) As this right emanated from the goodwill which had been
generated in the trade mark, which was registered as a design
under the Designs Act, the absence of any saving clause in the
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 35 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
Designs Act, protecting passing off actions, similar to that
contained in Section 27(2)29 of the Trade Marks Act made no
difference.
(v) The passing off action would be made on the plea that the
design, which was an unregistered mark of the plaintiff, was
used by the plaintiff for the purposes of its business and had
acquired, in the course of such business, reputation and/or
goodwill, in the minds of the consumer, which rendered the
mark a source identifier for the plaintiff.
(vi) To sustain such a challenge, the plaintiff would not need
to take recourse to the Designs Act.
20.5.5 Mohan Lal went on to clarify that, once the statutory period of
protection available to a registered design, of a maximum of 15 years,
had expired, the registered design would fall in the public domain.
Any user would, then, use the registered design, provided such use did
not result in confusion in the minds of the public, between the goods
and services of the defendants and those of the plaintiff.
20.5.6 Mohan Lal proceeds, thereafter, to note that Section 2(d) of the
Designs Act excludes, from its scope, a trademark falling within
Section 2(1)(v)30 of the erstwhile Trade and Merchandise Marks Act,
29 (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off
goods or services as the goods of another person or as services provided by another person, or the remedies in
respect thereof.
30 (v) “trade marks” means–
(i) in relation to Chapter X (other than Section 81), a registered trade mark or a mark used in
relation to goods for the purpose of indicating or so as to indicate a connection in the course of
Signature Not Verified trade between the goods and some person having the right as proprietor to use the mark; and
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 36 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
195831. At the same time, Section 2 (zb) of the Trade Marks Act 1999
specifically includes, within the ambit of the definition of “trade
mark”, shape of goods. Thus, what is registered as a design may
ordinarily not be registered as a trademark under the Trade Marks Act.
The judgment, however, proceeds, after referring to the decision of the
House of Lords in Smith Kline & French Laboratories Ltd v
Sterling-Winthorp Group Ltd32, to observe thus, in para 22.8:
“22.8 Therefore, having regard to the definition of a design under
Section 2(d) of the Designs Act, it may not be possible to register
simultaneously the same mater as a design and a trade mark.
However, post registration under Section 11 of the Designs Act,
there can be no limitation on its use as a trademark by the
registrant of the design. The reason being : the use of a registered
design as a trade mark, is not provided as a ground for its
cancellation under Section 19 of the Designs Act.”
Carlsberg Breweries, as we shall see, refers to the above extracted
enunciation of the law, in para 22.8 of Mohan Lal as “inaccurate”.
20.6 Re. Issue III
20.6.1 Adverting, next, to Issue III, the three Judge Bench in Mohan
Lal observed, at the very outset of the discussion, that the cause of
action, in respect of a suit for design infringement and a suit for
passing off based on the design, use to a trademark, was different and
that, therefore, it was necessary to file separate suits.
(ii) in relation to the other provisions of this Act, a mark used or proposed to be used in
relation to goods for the purpose of indicating or so as to indicate a connection in the course of
trade between the goods and some person having the right, either as proprietor or as registered user,
to use the mark whether with or without any indication of the identity of that person, and includes a
certification trade mark registered as such under the provisions of Chapter VIII;
31 “the 1958 Act” hereinafter
32 (1975) 1 WLR 914
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 37 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
20.6.2 This aspect was clarified, in greater detail, in paragraphs 24.1
to 24.3 and 25 of the report, thus:
“24.1 In our view, in a suit filed by a plaintiff to protect his
statutory rights, flowing from registration obtained under the
Designs Act would decidedly based on elements which are found in
Section 2(d) and 11 read with the exclusions provided in Section 4
of the Designs Act. Ordinarily, the plaintiff would aver that he had
secured for himself a design as defined in Section 2(d) in respect of
which a certificate of registration has been issued, the registration
is valid in terms of the provisions of Section 11, the plaintiff is the
inventor (or in a given case a lawful assignee) of the design which
is new or novel or significantly distinguishable from any known
designs or any combination of known designs, and that, the
defendant is applying the plaintiff’s registered design or its
fraudulent or obvious imitation without his consent or license. The
suit is brought to injunct piracy of the registered design by the
defendant in terms of Section 22 of the Designs Act.
24.2 As against this the broad pleading in a passing off action
would be that the plaintiff is using its design as a trademark. The
plaintiff sells his goods or offers his services as the case may be
under the said trademark. The goods and services have acquired a
goodwill and reputation. In the minds of the purchasing public, the
trademark is associated with the plaintiff. The defendant seeks to
represent (by using the mark of the plaintiff or a mark which is
deceptively similar to the plaintiff’s mark) falsely that the goods
sold or services offered by the defendant are those of the plaintiff.
This misrepresentation has caused injury or is calculated to cause
injury to the plaintiff. A cause of action simply put means every
fact which the plaintiff will have to prove if traversed, in order to
obtain a judgment in his favour. (see Read v Brown33).
24.3 Thus, the cause of action in the infringement suit under the
Designs Act could be different from that which obtained in a
passing off action. The fundamental edifice of a suit for
infringement under the Designs Act would be the claim of
monopoly based on its registration, which is premised on
uniqueness, newness and originality of the design. Whereas, the
action for passing off is founded on the use of the mark in the trade
for sale of goods and/or for offering service; the generation of
reputation and goodwill as a consequences of the same; the
association of the mark to the goods sold or services offered by the
plaintiff and the misrepresentation sought to be created by the
defendant by use of the plaintiff’s mark or a mark which is33 (1888) 22 QBD 128
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 38 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
deceptively similar, so as to portray that the goods sold or the
services offered by him originate or have their source in the
plaintiff. It is trite to say that different causes of action cannot be
combined in one suit [See Dabur India Limited v K.R.
Industries34 paragraph 34].
25. Having regard to the nature of the two actions, in our
opinion, the two actions cannot be combined. Though as indicated,
at the beginning of discussion of this issue if the two actions are
instituted in close proximity of each other the court could for the
sake of convenience try them together, though as separate causes,
provided it has jurisdiction in the matter.”
(Emphasis supplied)
Thus, in these paragraphs, the decision in Mohan Lal noted the clear
difference between the elements of a suit filed for protection of
statutory rights flowing from a design registration, which was
essentially to injunct piracy, in terms of Section 22(1)35 of the Designs
At, and a suit for passing off. In the case of the latter suit, the cause of
action would be predicated on the goodwill and reputation earned by
the mark under which the goods or services are offered. The Plaintiff
would have to demonstrate that the mark had acquired goodwill and
reputation and that, certainly, the use of a similar mark by the
defendant was resulting in the defendant passing of its goods as those
of the Plaintiff. The three Judge Bench identified the “fundamental
edifice” of design infringement suit as being “the claim of monopoly
34 (2008) 10 SCC 595
35 22. Piracy of registered design. –
(1) During the existence of copyright in any design it shall not be lawful for any person–
(a) for the purpose of sale to apply or cause to be applied to any article in any class
of articles in which the design is registered, the design or any fraudulent or obvious
imitation thereof, except with the licence or written consent of the registered proprietor,
or to do anything with a view to enable the design to be so applied; or
(b) to import for the purposes of sale, without the consent of the registered
proprietor, any article belonging to the class in which the design has been registered, and
having applied to it the design or any fraudulent or obvious imitation thereof; or
(c) knowing that the design or any fraudulent or obvious imitation thereof has been
applied to any article in any class of articles in which the design is registered without the
consent of the registered proprietor, to publish or expose or cause to be published or
exposed for sale that article.
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 39 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
based on its registration, which is premised on uniqueness, newness
and originality of the design”, whereas an action for passing off “is
founded on the use of the mark in the trade for sale of goods and/or
for offering service; the generation of reputation and goodwill as a
consequence of the same; the Association of the mark to the goods
sold or services offered by the Plaintiff and the misrepresentation
sought to be created by the defendant by use of the Plaintiff’s mark or
a mark which is deceptively similar, so as to portray that the goods
sold or the services offered by him originate or have their source in
the Plaintiff”. At the face of it, therefore, it is clear that the most basic
ingredients of a design infringement suit, and a suit for injunction
against passing off are different, with one seeking to protect a
statutory right flowing from registration and the second seeking to
protect the goodwill and reputation earned by the Plaintiff is reason of
the use, buy it, of the mark under which it provides its goods or
services.
20.6.3 The issue that arises for consideration is whether, merely
because the mark happens to have been registered as a design, the
latter action would not be maintainable in law.
20.6.4 It certainly does not appear that Mohan Lal says so, either
expressly or by necessary implication.
20.7 The three Judge Bench provided its final conclusions, on the
issue as framed by it, in para 34 of the report, which read thus:
“34. On various issues raised we may crystallize our opinion as
Signature Not Verified follows.
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 40 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
(i) 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.
(ii) 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.
(ii)(a) In this context we must note the argument of Ms
Singh, learned amicus, that passing off action may perhaps
be maintainable provided the mark has attained secondary
meaning. In our opinion, the issue before us is limited to
whether a remedy by way of passing off action would be
available qua a registered design used as a trademark by the
plaintiff – we are not inclined to comment on the quality of
evidence which may be required, if at all, to be produced by
the plaintiff to prove whether the mark has acquired the
necessary secondary distinctive meaning, for him to secure
success, in the action instituted in that behalf.
(iii) We are also of the view that a composite suit for
infringement of a registered design and a passing off action
would not lie. The Court could, however, try the suits
together, if the two suits are filed in close proximity and/or
it is of the view that there are aspects which are common to
the two suits. The discretion of the court in this matter
would necessarily be paramount.”
(Emphasis supplied)
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 41 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
21. Carlsberg Breweries
21.1 The decision in Carlsberg Breweries, rendered by a bench of
five Hon’ble Judges of this Court, arose out of a somewhat unusual
reference, by a learned Single Judge of this Court, by order dated 2
May 2017, as to whether the decision in Mohan Lal, on the aspect of
maintainability of a composite suit in relation to infringement of a
registered design and for passing of, where the parties to the
proceedings were the same, needed reconsideration by a larger bench
in the light of Order II Rule 3 of the CPC, which permitted joinder of
causes of action. The five Judge Bench noted the questions formulated
by the three Judge Bench in Mohan Lal, and particularly emphasised
Question III, reproduced in para 19.3 supra.
21.2 In para 2 of the its judgment, the five Judge Bench observes
thus:
“2. We had the benefit of the draft judgment by Valmiki. J.
Mehta, J. We agree with his conclusions as well as his analysis and
reasoning. However, we are of opinion that it is also necessary to
state additional reasons while recording the same conclusions.”
Thus, there is no real “majority” view in Carlsberg. The judgment of
Ravindra Bhat J (as he then was), authored on behalf of four of the
learned Judges who adorned the Bench, merely provided “additional
reasons” for the conclusions at which the opinion authored by
Valmiki J. Mehta J arrived. Both, therefore, are in a sense majority
and binding views, and have to be read conjointly, as providing
cumulative reasons to arrive at the same conclusions.
21.3 We intend, therefore, to first allude to the opinion of Mehta J.
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 42 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
But, prior thereto, it is essential to reproduce the final order of the
Court on the reference made to it, as thus contained in para 70 of the
judgment:
“70. For the views expressed above, the reference is hereby
answered by holding that a composite suit that joins two causes of
action – one for infringement of a registered design and the other for
passing of, of the plaintiff’s goods – is maintainable.”
Thus, it is clear that the only question answered by the five Judge
Bench in Carlsberg was the issue of whether a composite suit,
combining an action for infringement of a registered design and an
action for passing off of the plaintiff’s goods, was maintainable. In
UOI v Dhanwanti Devi36, the Supreme Court holds:
“10. Therefore, in order to understand and appreciate the
binding force of a decision it is always necessary to see what were
the facts in the case in which the decision was given and what was
the point which had to be decided. No judgment can be read as if it
is a statute. A word or a clause or a sentence in the judgment
cannot be regarded as a full exposition of law.”
(Emphasis supplied)
21.4 The issues which were before the five Judge Bench stand thus
distilled in para 20 of the report in Carlsberg:
“(a) Is the court compelled by anything in law to reject a plaint
for misjoinder, if two causes of action cannot be clubbed;
(b) Are the two causes of action, i.e. a claim for design
infringement and the other for passing off, so disparate or
dissimilar that the court cannot try them together in one suit;”
The declaration of the law in Carlsberg has, therefore, to be
appreciated and understood in the light of the issues which were
36 (1996) 6 SCC 44
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 43 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
before the five Judge Bench, and the question which was finally
answered.
21.5 Of the two issues identified as arising before the five Judge
Bench in Carlsberg, it is apparent that issue (b) is more relevant, for
the purposes of the controversy at hand, than issue (a). Neither is,
however, the precise issue which arises before us, and which squarely
arose in Mohan Lal, which is whether an action for passing off can
lie on the basis of subject matter with respect to which the plaintiff
holds a valid and subsisting design registration.
21.6 With respect to issue (a), the five Judge Bench overruled the
decision of the three Judge Bench in Mohan Lal thus, in para 39 of
the report:
“39. These are, if one may say so, the express bar or exceptions
to the rule in Order II Rule 3. The other bar is the kind visualized
in Section 80 CPC, a threshold procedural step without following
which a suitor cannot enter the court (which the Supreme Court
characterized in Prem Lata Nahata37 (supra) as a “bar”).
Furthermore, the CPC also provides internal evidence that
misjoinder per se is not a bar to jurisdiction, and that objection
cannot invalidate a decree on appeal (Section 99-again highlighted
in Prem Lata Nahata). Lastly, the provision in Order II Rule 6
enables the court to segregate different causes, if it is inconvenient
to try them together, or it is likely to embarrass it.”
Re: Issue (b)
21.7 The judgment of Valmiki J Mehta J
37 Prem Lata Nahata and Another v Chandi Prasad Sikaria, (2007) 2 SCC 551
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 44 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
21.7.1 Mehta J’s opinion, in Carlsberg, commences thus, in para 4938:
“The issue which is called for decision by this Full Bench of five
judges is whether in one composite suit there can be joinder of two
causes of action, one cause of action being of infringement by the
defendant of a design of the plaintiff which is registered under
the Designs Act, 2000 and the second cause of action being of
passing off by the defendant of his/its goods/articles as that of the
plaintiff. It is noted that in case a plaintiff in a suit does not have a
design which has the benefit of being a validly registered design
under the Designs Act, then such a plaintiff cannot maintain an
action for infringement of a registered design by the defendant,
and such a plaintiff can then only sue on the cause of action of the
defendant passing off its goods/articles as that of the plaintiff.”
(Emphasis supplied)
The right of a plaintiff, who is the proprietor of a registered design, to
sue for passing off, thus stands recognized by Mehta J at the very
beginning of his opinion. The existence of a right to sue for passing
off is not, therefore, disputable. The only issue is whether this right is
not available if the subject matter of the passing off action happens to
be the subject matter of the design registration.
21.7.2 Paras 50 to 55 of the opinion of Mehta J, thereafter, expound
on the general issue of composite suits joining more than one cause of
action and on the effect, on the said issue, of the judgment of the
Supreme Court in Dabur India Ltd v K.R. Industries. Thereafter,
Mehta J proceeds to observe thus:
“57. We must at this stage however hasten to observe that in the
case of Mohan Lal (supra) the majority opinion not only relied
upon the observations of Dabur India Limited (supra) for holding
that there cannot be joinder of causes of action of infringement of a
registered design and passing off, inasmuch as in paras 24.3 and 25
of the judgment in the case of Mohan Lal (supra) it was held by
the majority that the nature of two actions and the fundamental38 as reported in SCC OnLine
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 45 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
edifices of two causes of action of infringement and passing off
were different, i.e. in effect the majority opinion in the case
of Mohan Lal (supra) held that there would arise no common
questions of law and fact between the two causes of action of
infringement of a registered design and passing off, and once there
would arise no common questions of law and fact, therefore it was
held that there cannot be a composite suit joining the two causes of
action of infringement of registered design and passing off.
58. The issue therefore which is required to be squarely
addressed by this Full Bench is as to whether there would arise
common questions of facts and law in the two causes of action of
infringement of registered design and passing off so that these two
causes of action can be joined under Order II Rule 3 CPC, and
which is an issue which was not decided either in Dabur India
Ltd.‘s case (supra) or in the case of Dhodha House (supra)39.
(Emphasis supplied)
Mehta J goes on to reiterate the same view thus, in paras 59 and 60:
“59. The ratio of the judgment in the case of Prem Lata
Nahata (supra) is that with respect to entitlement or otherwise of
joinder of causes of action, the question to be asked is as to
whether the evidence to be led in the two causes of action would
be common, and if the substantial evidence of two causes of action
would be common, then there can be joinder of causes of action
under Order II Rule 3 CPC. Putting it negatively if the evidence is
for the most part different of the two causes of action, then there
cannot be joinder of causes of action.
60. Therefore since the crux of the matter for joinder of causes
of action under Order II Rule 3 CPC is to see if common questions
of law and facts arise in two separate causes of action and
whereupon there can be joinder of causes of action under Order II
Rule 3 CPC in one composite suit which joins two causes of
action, therefore we now proceed to examine as to whether there
would exist common questions of law and fact in the two causes of
action of infringement of registered design and passing off.”
Thus, Mehta J identifies the issue for consideration before the Bench
in Carlsberg as being whether “there would exist common questions
of law and fact in the two causes of action of infringement of
39 Dhodha House v S.K.Maingi, (2006) 9 SCC 41
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 46 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
registered design and passing off”. Para 61 reiterates this position:
“61. Let us now accordingly examine as to what are the bundle
of facts, or the bundle of material facts, in the two causes of action
of infringement of a registered design and passing off, and as to
whether there would arise common questions of law and fact in the
two bundle of facts of the two causes of action of infringement of
registered design and passing off.”
21.7.3 Mehta J thereafter proceeds to address, and answer, the issue
referred to the five Judge Bench thus:
“65. In a suit for infringement of registered design the
requirement is of pleading existence of a registered design. Once a
design is registered in favor of person under the Designs Act then
such a person in whose name the design is registered, has for a
period of ten years (plus five years) exclusive right to manufacture
the goods/articles as per the registered design vide Sections 1140
and 2241 of the Designs Act.
40 11. Copyright on registration. –
(1) When a design is registered, the registered proprietor of the design shall, subject to the
provisions of this Act, have copyright in the design during ten years from the date of registration.
(2) If, before the expiration of the said ten years, application for the extension of the period of
copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of
the prescribed fee, extend the period of copyright for a second period of five years from the
expiration of the original period of ten years.
41 22. Piracy of registered design. –
(1) During the existence of copyright in any design it shall not be lawful for any person–
(a) for the purpose of sale to apply or cause to be applied to any article in any class
of articles in which the design is registered, the design or any fraudulent or obvious
imitation thereof, except with the licence or written consent of the registered proprietor,
or to do anything with a view to enable the design to be so applied; or
(b) to import for the purposes of sale, without the consent of the registered
proprietor, any article belonging to the class in which the design has been registered, and
having applied to it the design or any fraudulent or obvious imitation thereof; or
(c) knowing that the design or any fraudulent or obvious imitation thereof has been
applied to any article in any class of articles in which the design is registered without the
consent of the registered proprietor, to publish or expose or cause to be published or
exposed for sale that article.
(2) If any person acts in contravention of this section, he shall be liable for every
contravention–
(a) to pay to the registered proprietor of the design a sum not exceeding twenty-
five thousand rupees recoverable as a contract debt, or
(b) if the proprietor elects to bring a suit for the recovery of damages for any such
contravention, and for an injunction against the repetition thereof, to pay such damages as
may be awarded and to be restrained by injunction accordingly:
Provided that the total sum recoverable in respect of any one design under clause (a) shall
not exceed fifty thousand rupees:
Provided further that no suit or any other proceeding for relief under this sub-section shall
Signature Not Verified be instituted in any court below the court of District Judge.RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 47 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
66. In a suit alleging infringement of registered design, the
defences which are available to a defendant essentially are three
fold, firstly of their being prior publication of the registered design
and which design is found in the public domain, secondly of
whether the registered design even if is different/variation of a
design existing in public domain yet the difference(s)/variation(s)
do not cause the design of the plaintiff to be a new or original
design because plaintiff’s design is only a trade variation of an
existing design or that such variations do not give newness or
originality to the plaintiff’s goods/articles adopting the design, and
thirdly as to whether the article being sold by the defendant is a
fraudulent or obvious imitation of the article of the plaintiff
containing the registered design. It bears note that the words
“fraudulent or obvious imitation” which are found in Section 22 of
the Designs Act, have their flavour similar to the words
identity/identical or deceptively similar as are found in Section 29
of the Trade Marks Act.
67. In a passing off action filed by a plaintiff, the plaintiff
has/claims ownership of a design because of shape, features,
combination of colours, etc. of the goods of the plaintiff being used
by plaintiff as a trademark, and that such user is so duly envisaged
as legal as per the definitions of the expressions ‘mark’ and
‘trademark’ in Sections 2(1)(m)42 and (zb) of the Trade Marks Act
and that the transaction of sale by the defendant of its articles
containing the same shape or features or combination of colours
etc. etc. results in the sale by the defendant of its goods being
passed off as that of the plaintiff.
Therefore once the transaction of sale is the same
transaction which will be in question in both the causes of action of
infringement of a registered design and passing off, a substantial
part of the bundles of facts of the two actions will be same as to
whether or not the article being sold by the defendant of a
particular design is or is not a fraudulent or obvious imitation
(identical or deceptively similar) to the article of the plaintiff,
therefore, there will clearly exist common set of facts with respect
to the actions of passing off and the defence of the defendant of the
defendant’s goods/articles not being a fraudulent or obvious
imitation by the defendant of the articles/goods of the plaintiff,
resulting in arising of common questions of law and fact in the two
actions of infringement of the registered design and passing off.
68. On account of existence of common questions of law and
fact between the two causes of action of infringement of a
registered design and passing off, therefore to a considerable
42 (m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral,
shape
Signature Not Verified of goods, packaging or combination of colours or any combination thereof;
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 48 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
extent, the evidence of the two causes of action will be common. In
such a situation to avoid multiplicity of proceedings there should
take place joinder of the two causes of action of infringement of a
registered design and passing off against the same defendant in one
suit, otherwise multiplicity of proceedings will result in waste of
time, money and energy of the parties and also of the courts.
69. The reference is answered by holding that one composite
suit can be filed by a plaintiff against one defendant by joining two
causes of action, one of infringement of the registered design of the
plaintiff and the second of the defendant passing off its goods as
that of the plaintiff on account of the goods of the defendant being
fraudulent or obvious imitation i.e. identical or deceptively similar,
to the goods of the plaintiff.”
(Emphasis supplied)
21.7.4 Thus, Mehta J acknowledges, and accepts, the position (in para
67 supra), that, in a passing off action,
(i) the plaintiff “has/claims ownership of a design because
of shape, features, combination of colours etc. of the goods of
the plaintiff being used by the plaintiff as a trade mark”,
(ii) these shape, features and combination of colours are
“duly envisaged as legal as per the definitions of ‘mark’ and
‘trade mark’ in Sections 2(1)(m) and (zb) of the Trade Marks
Act, and
(iii) that the sale, by the defendant, of its articles “containing
the same shape or features of combination of colours etc etc
results in the sale of its goods being passed off as that of the
plaintiff”.
Para 68 goes on to hold that the overlap of the bundles of facts which
are relevant to the allegations of passing off and design
infringement/piracy arises because “a substantial part of the bundles
of facts of the two acts will be the same as to whether the article
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 49 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
being sold by the defendant of a particular design is or is not a
fraudulent or obvious imitation (identical or deceptively similar) to
the article of the plaintiff”.
21.7.5 The opinion of Mehta J, therefore, clearly envisages, as
permissible, a passing off action predicated on the use, by the
defendant, of the shape, features, combination of colours, and the like,
which constitute and comprise the registered design of the plaintiff.
These paragraphs, therefore, indicate, without any equivocation
whatsoever, that a passing off action, predicated on the identity or
deceptive similarity of the shape, features, combination of colours,
etc., of the defendant’s goods, with the registered design of the
plaintiff, is permissible.
21.7.6 By virtue of para 2 of the judgment in Carlsberg, therefore,
this position must be taken to have the approval, not just of Mehta J
alone, but of all the five learned Judges constituting the Bench.
21.8 The judgment of Bhat J (for himself and on behalf of the
remaining three learned Judges)
21.8.1 In the context of the present dispute, it is important to
reproduce paras 42 to 46 of the judgment of Bhat J, as the issue in
controversy essentially turns on interpretation of these paragraphs:
42. The defendants had argued that the reasoning in Mohan
Lal (supra) with respect to impermissibility of joinder of the
claims vis-à-vis design infringement and passing off, is sound. In
this regard it was argued that there are significant differences
between causes of action relating to design infringement on the one
hand, and those based on allegations of passing off. Defendants
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 50 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
had argued that (i) design infringement is based on a statutory
right, whereas passing off is a common law injury; (ii) the basis of
the former is design of an article, for sale, whereas the latter is
based on misrepresentation; (iii) Similarly, a design infringement
suit alleges that the design is novel, not based on any previous
publication in India, whereas the passing off suit has to establish
that the shape or mark has developed substantial goodwill and
reputation and adoption of a deceptively or confusingly similar
design or shape by the defendant. (iv) The defenses, likewise, are
entirely different, submitted counsel: whereas in design
infringement suit, cancellation based on lack of novelty or
existence of previous publication can be the basis of defenses, the
lack of any distinctiveness (of the plaintiff’s mark or design), prior
user, bona fide use, or lack of plaintiff’s goodwill are defenses in
the passing off suit. (v) Lastly it was stated that although the court
of competent jurisdiction under Section 20 of the Designs Act is
identical to that in passing off, as soon as a defense of cancellation
is claimed by the defendant in a design infringement suit, it has to
be transferred to the High Court under Section 22(2) of the Designs
Act.
43. In regard to both causes of action, suits claims are(i) against
the same defendant or set of defendants, and; (2) in respect of the
same set of acts and transactions. The only difference is that the
relief claimed is different. The question is whether Mohan
Lal’s understanding on the inconsistency and disparateness as to
the relief being fundamental to the frame of the suit, would defeat a
composite action, per se.
44. A registered design owner, this court
notices, facially satisfies the test of novelty (of the product’s
design) and that it was not previously published. For registration,
the article must contain uniqueness or novelty in regard to elements
such as shape, configuration, pattern, ornament or composition of
lines of colours applied to any article; further there must be a visual
appeal to the article (i.e. the aesthetic appeal). However, if the
defendant establishes that indeed there was no novelty, or that a
similar design had been published earlier, in the public domain, the
infringement claim would be repelled. In respect of a passing of
claim, distinctiveness of the elements of the mark, its visual or
other presentation and its association with the trader or owner
needs to be established. The factual overlap here is with respect to
the presentation – in the design, it is the novelty and aesthetic
presentation; in a passing off action, it is the distinctiveness (of the
mark) with the attendant association with the owner. To establish
infringement (of a design) fraudulent imitation of the article (by the
defendant) has to be proved. Likewise, to show passing off, it is
necessary for the owner of the mark to establish that the defendant
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 51 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
has misrepresented to the public (irrespective of intent) that its
goods are that of the plaintiff’s; the resultant harm to the plaintiff’s
reputation is an actionable claim.
45. This court is also of the opinion that the Full Bench ruling
in Mohan Lal (supra) made an observation, which is inaccurate : it
firstly correctly noted that registration as a design is not possible,
of a trade mark; it, however later noted that “post registration
under Section 11 of the Designs Act, there can be no limitation on
its use as a trademark by the registrant of the design. The reason
being : the use of a registered design as a trade mark, is not
provided as a ground for its cancellation under Section 19 of the
Designs Act.” This observation ignores that the Designs Act,
Section 19(e) specifically exposes a registered design to
cancellation when “(e) it is not a design as defined under clause (d)
of section 2.” The reason for this is that 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 trade mark as defined in
clause (v) of sub-section (1) of section 2 of the Trade and
Merchandise Marks Act, 1958…..” Therefore, if the registered
design per se is used as a trade mark, it apparently can be
cancelled. The larger legal formulation in Mohan Lal (supra), that
a passing off action i.e one which is not limited or restricted to
trademark use alone, but the overall get up or “trade
dress” however, is correct; as long as the elements of the design
are not used as a trademark, but a larger trade dress get up,
presentation of the product through its packaging and so on, given
that a “passing off” claim can include but is also broader than
infringement of a trademark, the cause of action against such use
lies.
46. It is evident that there is a similarity between the nature of
inferences and conclusions that are presented to the court, in the
two causes of action. Significantly, the complaint of passing off as
well as that of design infringement emanate from the same fact:
sale or offer for sale, by the defendant of the rival product. In this
context, it is relevant to notice that the expression “cause of action”
was explained in this incisive manner in Kusum Ingots &
Alloys v Union of India43, as:
“every fact which would be necessary for the plaintiff to prove,
if traversed, in order to support his right to the judgment of the
Court. Negatively put, it would mean that everything which, if
not proved, gives the defendant an immediate right to
judgment, would be part of cause of action.”
43 (2004) 6 SCC 254
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 52 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
21.8.2 The following position emerges when one carefully reads paras
42 to 46 of Carlsberg Breweries:
(i) The very fact of registration of a design under the
Designs Act facially satisfies the test of novelty and absence of
prior publication. Section 444 of the Designs Act specifically
states so.
(ii) Entitlement to registration of a design under the Designs
Act requires cumulative satisfaction of two criteria, viz.
(a) the existence of uniqueness or novelty with respect
to shape, configuration, pattern, ornament or composition
of lines or colours applied to an article, and
(b) visual/aesthetic appeal of the article.
(iii) If the defendant is able to establish the absence of either
of these criteria, i.e. if the defendant is able to establish either
that the asserted design lacks novelty or that a similar design
has been published in the public domain prior in point of time,
the infringement action has to fail. This, too, flows from
Section 22(3)45 read with Section 19(1)46 of the Designs Act.
44
4. Prohibition of registration of certain designs. – A design which –
(a) is not new or original; or
(b) has been disclosed to the public any where in India or in any other country by publication
in tangible form or by use or in any other way prior to the filing date, or where applicable, the
priority date of the application for registration; or
(c) is not significantly distinguishable from known designs or combination of known designs;
or
(d) comprises or contains scandalous or obscene matter,
shall not be registered
45 (3) In any suit or any other proceeding for relief under sub-section (2), every ground on which the
registration of a design may be cancelled under Section 19 shall be available as a ground of defence.
46 19. Cancellation of registration. –
Signature Not Verified (1) Any person interested may present a petition for the cancellation of the registration of a
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 53 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
(iii) For a passing off claim to succeed, the plaintiff has to
establish the distinctiveness of the elements of the mark and its
visual or other presentation, and association of the mark with
the trader or owner.
(iv) The factual overlap between a passing off action and an
action for design infringement is in the presentation. In a
design, the presentation is with respect to the novelty of the
design and its aesthetic appeal, whereas, in a passing off action,
the presentation has to establish distinctiveness of the mark and
association of the mark with the owner.
(v) While, to succeed in a claim of design
infringement/piracy, fraudulent imitation of the design, in the
defendant’s article, has to be proved, in a passing off action, the
owner of the mark has to establish that the defendant has mis-
represented to the public that its goods are those of the plaintiff.
If this is established, an actionable claim in favour of the
plaintiff results.
(vi) Thus, in para 42 of Carlsberg Breweries, Bhat J has
identified the ingredients of a passing off action and of a design
infringement action as being distinct and different, though there
design at any time after the registration of the design, to the Controller on any of the following
grounds, namely:–
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior to the date of
registration; or
(c) that the design is not a new or original design; or
(d) that the design is not registrable under this Act; or
Signature Not Verified (e) that it is not a design as defined under clause (d) of Section 2.RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 54 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
is some degree of overlap in the matter of presentation of the
design.
(vii) Para 43 of the report commences with the comment that
the three Judge Bench in Mohan Lal made an observation,
which was inaccurate. In our opinion, the use of the word
‘inaccurate’ is deliberate. It is not a word, which is commonly
employed while referring to a precedent. If the 5-Judge Bench
has chosen, instead of clearly overruling the observation of the
three Judge Bench in Mohan Lal to which reference follows,
and has instead merely characterized the observation as
‘inaccurate’, we are of the opinion that the terminology adopted
by the five-Judge Bench has been consciously adopted.
(viii) Apropos the inaccuracy in the observations contained of
the three Judge Bench in Mohan Lal, Carlsberg Breweries first
notes that Mohan Lal correctly observed that a trademark could
not be registered as a design.
(ix) The ‘inaccuracy’ in the decision in Mohan Lal, as noted
in Carlsberg Breweries is with respect to the observations
contained in para 22.8 of Mohan Lal47 that ‘post registration
under Section 11 of the Designs Act, there can be no limitation
on its use as a trademark by the registrant of the design. The
reason being the use of a registered design as a trademark is not
provided as a ground for its cancellation under Section 19 of the
Designs Act.
47 as reported in DLT
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 55 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
(x) The five Judge Bench was of the view that the afore
extracted observation from para 22.8 of Mohan Lal was
inaccurate as it failed to take into account clause (e) of Section
19 of the Designs Act. Section 19(e) exposed the registered
design to cancellation if it was not a design as defined in
Section 2(d) of the Designs Act. Section 2(d) specifically
excluded, from the definition of “design”, any trademark as
defined in Section 2(1)(v) of the 1958 Act. Thus, if a registered
design was used as a trademark that constituted a ground for
cancellation of the design. As such, the five-Judge Bench was
of the view that the three-Judge Bench in Mohan Lal was
inaccurate in observing that post registration of a design under
Section 11 of the Designs Act, there was no limitation on its use
as a trademark by the registrant of the design as the use of a
registered design as a trademark did not constitute a ground for
cancellation of the design under Section 19 of the Designs Act.
(xi) However, the five-Judge Bench proceeded to hold that
the “larger legal formulation” in Mohan Lal, “that a passing
off action i.e. one which is not limited or restricted to trademark
use alone but the overall get up or trade dress, however, is
correct; as long as the element of design are not used as a
trademark but a larger trade dress, get up, presentation of the
product through its packing and so on given that a ‘passing off’
claim can include but is also broader than infringement of a
trademark, the cause of action against such use lies”.
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 56 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
(xii) If there is a “larger legal formulation”, there must also be
a smaller legal formulation. The word “larger” is comparative,
and means nothing in the absence of something smaller. What
then, is the “smaller” legal formulation in Mohan Lal, as
compared to the “larger” legal formulation to which para 43
alludes?
(xiii) The “smaller” legal formulation is obviously the
formulation which immediately precedes the “larger legal
formulation” to which para 43 refers, which is the “inaccurate”
observation, in Mohan Lal, that “that ‘post registration under
Section 11 of the Designs Act, there can be no limitation on its
use as a trade mark by the registrant of the design”. This
“smaller legal formulation”, according to the opinion of Bhat J,
is “inaccurate”, because, by conjoint operation of Sections 19(e)
read with 2(d) of the Designs Act, any such use would expose
the design to the possibility of cancellation.
(xiv) The impugned judgment before us does not comment on
the validity of Crocs’ registered design, or any possibility of its
vulnerability to cancellation; ergo, this “smaller legal
formulation” need not detain us.
(xv) The opinion of Bhat J, however, specifically approves
the “larger legal formulation” in Mohan Lal. It becomes
necessary, therefore, to isolate and identify this “larger legal
formulation”. It must, however, be a formulation which finds
place in Mohan Lal. It is important to note this fact. The latter
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 57 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
part of para 43 of the opinion of Bhat J in Carlsberg does not
propose, or profess, to lay down any new, or independent legal
principle, but only approves, as correct, the “larger legal
formulation” contained in Mohan Lal.
(xvi) Mohan Lal does not contain any legal formulation to the
effect that an action for passing off can lie, at the instance of the
proprietor of a registered design, only if the subject matter of
the passing off action is “something more” than the design
which stands registered. If no such principle is to be found in
Mohan Lal, no such principle can, either, be read into the latter
part of para 43 of Carlsberg either, as it merely approves the
larger legal formulation in Mohan Lal.
(xvii) In this context, the words “trademark use”, as contained
in para 43 of Carlsberg are, to our mind, significant. Para 43 of
Carlsberg holds that the larger legal formulation in Mohan Lal,
“that a passing off action, i.e. one which is not limited or
restricted to trademark use alone”, is sustainable in law.
Conflicting “trade mark use” is the raison d’ etre of Section 29
of the Trade Marks Act, and the principle of infringement in
trade mark law. “Trade mark use”, in the Trade Marks Act, is a
concept much wider than mere commercial exploitation of a
trade mark. Section 2(2)(b)48 includes, in the concept of “use of
a mark” within the Trade Marks Act, to any “use of printed or
48 (2) In this Act, unless the context otherwise requires, any reference–
*****
(b) to the use of a mark shall be construed as a reference to the use of printed or other visual
Signature Not Verified representation of the mark;
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 58 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
other visual representation of the mark” and Section 2(2)(c)(i)49
clarifies that any reference to the use of a mark in relation to
goods, in the Trade Marks Act, would be “construed as a
reference to the use of the mark upon, or in any physical or in
any other relation whatsoever, to the goods”. The words “in
any relation whatsoever” are compendious words of expansion
and would encompass use of the mark in any manner so as to
denote a connection with the goods.
(xviii) Mere “trademark use” by the defendant, of the registered
design of the plaintiff would not, therefore, in every case
constitute a basis for a passing off action. If, however, to use
the exact expressions employed in para 43 of Carlsberg, the
“elements of the design” are not merely “used as a trade mark”
but are used by the defendant as a “larger trade dress get up,
presentation of its product through its packaging, and so on”, a
sustainable claim for passing off would lie. Expressed
otherwise, commercial use of the registered design of the
plaintiff by the defendant, not merely as a trade mark, but as its
larger trade dress, or packaging, or the like, so as to pass off its
goods as the goods of the plaintiff, would certainly justify a
claim for passing off at the instance of the plaintiff.
(xix) To our mind, the distinction that Carlsberg seeks to
draw, in para 43, is between mere trademark use, as may give
49 (2) In this Act, unless the context otherwise requires, any reference–
*****
(c) to the use of a mark,--
(i) in relation to goods, shall be construed as a reference to the use of the mark
Signature Not Verified upon, or in any physical or in any other relation whatsoever, to such goods;
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 59 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
rise to a claim for infringement, and a use of the registered
design of the plaintiff as the trade dress and presentation of the
defendant, which would justify an action for passing off.
(xx) We cannot, therefore, read, into para 43 of Carlsberg,
any proposition that an action for passing off would lie only if
the subject matter of the action is “something more” than the
subject matter of the design registration. Apart from the fact
that para 43 of Carlsberg does not say so, such a view is not to
be found in Mohan Lal either, though para 43 expressly
approves the “larger legal formulation” in Mohan Lal. More
importantly, such an interpretation would also be contrary to
paras 67 to 69 of Mehta J’s opinion in Carlsberg, with which
the remaining four learned Judges, speaking through Bhat J,
have expressly voiced their approval, in para 2 of the decision.
(xxi) No proscription against such a passing off action is to be
found in the Trade Marks Act, or the Designs Act, or in Mohan
Lal or Carlsberg. The principle that such a passing off action
can lie only if the “subject matter” of the action is “something
more” than the subject matter of the design registration does
not, in our view, appear to be supported by any substantial legal
precedent.
(xxii) Para 46 of Carlsberg, with which Bhat J concludes his
opinion is, perhaps, a pointer to the correctness of this view.
The opinion concludes by observing that, “if for some reason
the claim for design infringement is prima facie weak and the
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 60 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
plaintiff cannot secure interim relief, it does not have to face
uncertainty of another action before another Court; the same
Court can review the same facts and evidence, and conclude
pendente lite, if prima facie passing off is made out,
necessitating interim relief”. The same facts and evidence can,
therefore, constitute the basis for a design infringement claim,
as well as a passing off claim. The Court can arrive at a finding
of passing off on the basis of the same facts and evidence, as
would concern the Court while dealing with the claim of design
infringement. This elucidation of the law confirms, perhaps
more than anything else in Carlsberg, the legal position that the
plaintiff does not have to base its case of passing off on
“something more” than the subject matter of its design
infringement claim. The very same subject matter can,
therefore, constitute the basis of the claim of design
infringement, as well as the claim of passing off. In other
words, if the defendant, by using the plaintiff’s registered
design, or something deceptively similar thereto, seeks to pass
off its goods as those of the plaintiff, a passing off action, at the
instance of the plaintiff and against the defendant, would lie.
21.9 In our view, therefore, the learned Single Judge is not correct in
his view that the suit instituted by Crocs, or by Dart, was not
maintainable, predicated on the judgment of the five Judge Bench of
this Court in Carlsberg.
22. On first principles – ingredients of passing off
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 61 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
22.1 We would arrive at the same conclusion if we were to approach
the matter from first principles, unshackled by precedential fetters.
Section 27(2) of the Trade Marks Act specifically excepts, from its
statutory constraints, the right to sue for passing off. Passing off is a
distinct right, which resides in its own common law space, apart from
and independent of, the confines and constraints of the Trade Marks
Act, or the Designs Act, or, for that matter, any other statute. In fact,
there appears to be no justifiable reason to limit passing off to the use
of one’s trade mark, or even trade dress, by another. Black’s Law
Dictionary defines “passing off” as “the act or an instance of falsely
representing one’s own product as that of another in an attempt to
deceive potential buyers”.
22.2 There is a fundamental, and well recognized, distinction
between infringement and passing off. Infringement merely involves
a mark to mark comparison, and the right to infringement arises the
moment a trade mark, or design, is registered. The plaintiff, in an
infringement action, is not required to prove goodwill. A plaintiff who
is the proprietor of a registered trade mark, or registered design, is
entitled, statutorily, to injunct the rest of the world from using an
identical, or deceptively similar, trade mark. This right comes into
being immediately upon registration. The right to relief against
infringement, therefore, arises from registration, not user. Section
28(1)50 of the Trade Marks Act is clear on the point. Of course, the
right is subject to the statutorily restraints in the Trade Marks Act,
50 28. Rights conferred by registration. –
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid,
give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in
relation to the goods or services in respect of which the trade mark is registered and to obtain relief
Signature Not Verified in respect of infringement of the trade mark in the manner provided by this Act.
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 62 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
with which we need not concern ourselves.
22.3 Similarity, or even identity, of trade marks, or trade dress does
not, by itself, however, provide a valid cause of action for passing off.
Proof of the existence of goodwill, in the plaintiff, is an indispensable
sine qua non. Sans goodwill, no action for passing off can sustain.
The Supreme Court has identified the ingredients of passing off thus,
in its recent decision in Birhan Karan Sugar Syndicate (P) Ltd v
Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana51:
“12. There is a finding recorded by the High Court in the
impugned judgment that the labels used on the bottle of country
liquor sold by the appellant and the labels on the bottle of country
liquor sold by the respondent are similar. At this stage, we may
note the legal position regarding the factual details which are
required to be proved in a passing off action. Firstly, we may refer
to a decision of this Court in Satyam Infoway Ltd. v Siffynet
Solutions (P) Ltd.52, Paras 13 to 15 of the said decision read thus:
“13. The next question is, would the principles of trade
mark law and in particular those relating to passing off
apply? An action for passing off, as the phrase “passing
off” itself suggests, is to restrain the defendant from
passing off its goods or services to the public as that of the
plaintiff’s. It is an action not only to preserve the reputation
of the plaintiff but also to safeguard the public. The
defendant must have sold its goods or offered its services in
a manner which has deceived or would be likely to deceive
the public into thinking that the defendant’s goods or
services are the plaintiff’s. The action is normally available
to the owner of a distinctive trade mark and the person
who, if the word or name is an invented one, invents and
uses it. If two trade rivals claim to have individually
invented the same mark, then the trader who is able to
establish prior user will succeed. The question is, as has
been aptly put, who gets these first? It is not essential for
the plaintiff to prove long user to establish reputation in a
passing off action. It would depend upon the volume of
sales and extent of advertisement.
51 (2024) 2 SCC 577
52 (2004) 6 SCC 145
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 63 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
14. The second element that must be established by a
plaintiff in a passing off action is misrepresentation by the
defendant to the public. The word “misrepresentation” does
not mean that the plaintiff has to prove any mala fide
intention on the part of the defendant. Of course, if the
misrepresentation is intentional, it might lead to an
inference that the reputation of the plaintiff is such that it is
worth the defendant’s while to cash in on it. An innocent
misrepresentation would be relevant only on the question of
the ultimate relief which would be granted to the plaintiff
[Cadbury-Schweppes (Pty) Ltd. v PUB Squash Co. (Pty)
Ltd.53; Erven Warnink Besloten Vennootschap v J.
Townend & Sons (Hull) Ltd.54]. What has to be established
is the likelihood of confusion in the minds of the public
(the word “public” being understood to mean actual or
potential customers or users) that the goods or services
offered by the defendant are the goods or the services of the
plaintiff. In assessing the likelihood of such confusion the
courts must allow for the “imperfect recollection of a
person of ordinary memory” [Aristoc Ltd. v Rysta Ltd.55].
15. The third element of a passing off action is loss or
the likelihood of it.”
(emphasis supplied)
13. Thus, the volume of sale and the extent of advertisement
made by the appellant of the product in question will be a relevant
consideration for deciding whether the appellant had acquired a
reputation or goodwill.
14. At this stage, we may also refer to the decision of this
Court in Toyota Jidosha Kabushiki Kaisha v Prius Auto
Industries Ltd.56. In this decision, this Court approved its earlier
view in S. Syed Mohideen v P. Sulochana Bai57 that the passing
off action which is premised on the rights of the prime user
generating goodwill, shall remain unaffected by any registration
provided in the Act. In fact, this Court quoted with approval, the
view taken by the House of Lords in Reckitt & Colman Products
Ltd. v Borden Inc.58 The said decision lays down triple tests. One
of the tests laid down by the House of Lords was that the plaintiff
in a passing off action has to prove that he had acquired a
reputation or goodwill connected with the goods. Thereafter, in
53 1981 RPC 429 : (1981) 1 WLR 193
54 1979 AC 731 : (1979) 3 WLR 68 : 1980 RPC 31 (HL)
55 1945 AC 68 (HL)
56 (2018) 2 SCC 1
57 (2016) 2 SCC 683
58 (1990) 1 WLR 491 (HL)
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 64 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
para 40 of Toyota, this Court held that if goodwill or reputation in
a particular jurisdiction is not established by the plaintiff, no other
issue really would need any further examination to determine the
extent of the plaintiff’s right in the action of passing off.
15. Coming to the facts of the case, the appellant examined
only two witnesses. The first witness was Mr K.K. Kalani and the
second one was Mr Sudhir Pokhale. Mr Sudhir Pokhale was
examined on an altogether different issue regarding the approval of
labels sought by the respondent. The impugned judgment contains
a list of the exhibited documents produced by the appellant. Exts.
73, 73.1 to 73.4 are the statement of sales as well as advertisement
and sale promotion expenses certified by a Chartered Accountant.
However, we find that the Chartered Accountant was not examined
to prove the statements. In the examination-in-chief of Shri K.K.
Kalani, in para 10, only the figures of sales and marketing
expenses have been quoted.
16. Prima facie, it appears to us that at the time of the final
hearing of the suit, it was incumbent upon the appellant-plaintiff to
actually prove the figures of sales and expenditure incurred on the
advertising and promotion of the product. Only by producing the
statements without proving the contents thereof, the appellant
could not have established its reputation or goodwill in connection
with the goods in question. According to the witness, the
statements produced were signed by a Chartered Accountant Mr
Natesh. This aspect surely makes out a prima facie case for grant
of stay to the execution of the decree in favour of the respondent as
regards the passing off action.
17. For establishing goodwill of the product, it was necessary
for the appellant to prove not only the figures of sale of the product
but also the expenditure incurred on promotion and advertisement
of the product. Prima facie, there is no evidence on this aspect.
While deciding an application for a temporary injunction in a suit
for passing off action, in a given case, the statements of accounts
signed by the Chartered Accountant of the plaintiff indicating the
expenses incurred on advertisement and promotion and figures of
sales may constitute a material which can be considered for
examining whether a prima facie case was made out by the
appellant-plaintiff. However, at the time of the final hearing of the
suit, the figures must be proved in a manner known to law.
18. Even assuming that the allegation of deceptive similarity in
the labels used by the respondent was established by the appellant,
one of the three elements which the appellant was required to
prove, has not been proved. Therefore, we find that the High Court
was justified in staying that particular part of the decree of the trial
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 65 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
court by which injunction was granted for the action of passing
off.”
22.4 Over six decades ago, the Supreme Court identified the features
of distinction between infringement and passing off thus, in Kaviraj
Pandit Durga Dutt Sharma v Navaratna Pharmaceuticals
Laboratories59:
“28. The other ground of objection that the findings are
inconsistent really proceeds on an error in appreciating the basic
differences between the causes of action and right to relief in suits
for passing off and for infringement of a registered trade mark and
in equating the essentials of a passing off action with those in
respect of an action complaining of an infringement of a registered
trade mark. We have already pointed out that the suit by the
respondent complained both of an invasion of a statutory right
under Section 21 in respect of a registered trade mark and also of a
passing off by the use of the same mark. The finding in favour of
the appellant to which the learned counsel drew our attention was
based upon dissimilarity of the packing in which the goods of the
two parties were vended, the difference in the physical appearance
of the two packets by reason of the variation in the colour and
other features and their general get-up together with the
circumstance that the name and address of the manufactory of the
appellant was prominently displayed on his packets and these
features were all set out for negativing the respondent’s claim that
the appellant had passed off his goods as those of the respondent.
These matters which are of the essence of the cause of action for
relief on the ground of passing off play but a limited role in an
action for infringement of a registered trade mark by the registered
proprietor who has a statutory right to that mark and who has a
statutory remedy for the event of the use by another of that mark or
a colourable imitation thereof. While an action for passing off is a
Common Law remedy being in substance an action for deceit, that
is, a passing off by a person of his own goods as those of another,
that is not the gist of an action for infringement. The action for
infringement is a statutory remedy conferred on the registered
proprietor of a registered trade mark for the vindication of the
exclusive right to the use of the trade mark in relation to those
goods” (Vide Section 21 of the Act). The use by the defendant of
the trade mark of the plaintiff is not essential in an action for
passing off, but is the sine qua non in the case of an action for59 AIR 1965 SC 980
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 66 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
infringement. No doubt, where the evidence in respect of passing
off consists merely of the colourable use of a registered trade mark,
the essential features of both the actions might coincide in the
sense that what would be a colourable imitation of a trade mark in
a passing off action would also be such in an action for
infringement of the same trade mark. But there the correspondence
between the two ceases. In an action for infringement, the plaintiff
must, no doubt, make out that the use of the defendant’s mark is
likely to deceive, but where the similarity between the plaintiff’s
and the defendant’s mark is so close either visually, phonetically or
otherwise and the court reaches the conclusion that there is an
imitation, no further evidence is required to establish that the
plaintiff’s rights are violated. Expressed in another way, if the
essential features of the trade mark of the plaintiff have been
adopted by the defendant, the fact that the get-up, packing and
other writing or marks on the goods or on the packets in which he
offers his goods for sale show marked differences, or indicate
clearly a trade origin different from that of the registered proprietor
of the mark would be immaterial; whereas in the case of passing
off, the defendant may escape liability if he can show that the
added matter is sufficient to distinguish his goods from those of the
plaintiff.”
22.5 Passing off is, therefore, a sui generis common law remedy,
aimed at protecting one’s hard-earned goodwill and reputation from
others who may deceitfully seek to capitalize on it. It resides
pristinely in its own universe, and is one of the very few non-statutory
remedies, available in law, which is accorded statutory recognition in
Section 27(1) of the Trade Marks Act. Indeed, we are unable,
offhand, to recollect any other such common law remedy which is
granted statutory protection in our country. It is a precious right,
therefore, and has to be sedulously protected. Its availability, as a
cause of action, cannot, therefore, be denied, unless the law denies it.
To our mind, no law does so.
22.6 Whether, on facts, a case of passing of is, or is not, made out, is
another matter altogether. If it is, however, the Court cannot decline
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 67 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
protection to the plaintiff on the sole ground that the subject matter of
the passing off action happens to be a design in respect of which the
plaintiff has a registration under the Designs Act. As para 46 of
Carlsberg clarifies, even if a design infringement case is not made
out, for whatever reason, the Court can, on the same facts and
evidence, find a case of passing off to be made out, and grant relief.
23. We are constrained, therefore, to hold that, in declining to do
so, and dismissing Crocs’ suits as not maintainable, the learned Single
Judge, in our respectful view, erred in law.
24. Even for this reason, we are of the opinion that the learned
Single Judge erred in dismissing Crocs’ suits as not maintainable.
25. Other aspects argued at the Bar do not, therefore, survive for
consideration. Mr. Sai Deepak sought to submit, at length, that, even
if the interpretation placed by the learned Single Judge on para 43 of
the judgment in Carlsberg were to be treated as correct, it would
merely constitute obiter and would not, therefore, be binding. Mr.
Saikrishna Rajagopal submitted, per contra, that the findings were
incidental to the decision of the main issue before the five Judge
Bench and could not, therefore, be regarded as obiter. We confess that
we are inclined to agree with Mr. Rajagopal, to the extent that para 43
of Carlsberg cannot be regarded as obiter, dealing, as it does, with the
scope of the passing off action. It is not necessary, however, for us to
deliberate further on the point as, in our view, para 43 of Carlsberg
does not, in any way, justify the decision of the learned Single Judge
to dismiss the Crocs’ suits as not maintainable.
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 68 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
26. Could the plaints have been rejected straightaway?
26.1 We also have our doubts as to whether, even if the view
adopted by the learned Single Judge were to be treated as correct, the
suits could have been dismissed straightaway as, at the very least, the
appellants would have to be given an opportunity to establish that
their claim for passing off was not based merely on copying, or
imitation, of their registered design by the respondents. We do not
think that this issue could have straightaway been decided by a mere
reading of the plaint. Assuming, merely for the sake of argument, that
a suit for passing off could not lie merely on the plea that the
registered design of the plaintiff was copied by the defendant, we are
of the respectful view that the learned Single Judge erred in
presuming, at the very outset, that the subject matter of Crocs’ passing
off claim was only its registered design, and nothing else, or beyond
that. This was an issue of fact, regarding which the averments in the
plaint, which we have carefully perused, do not appear to be
conclusive.
26.2 For this reason, too, we are of the opinion that the dismissal of
Crocs’ suits cannot sustain in law.
Conclusion
27. As a result, the impugned judgment, dated 18 February 2019, of
the learned Single Judge, is quashed and set aside.
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 69 of 70
KUMAR
Signing Date:01.07.2025
13:29:56
28. CS (Comm) 903/2018, CS (Comm) 905/2016, CS (Comm)
906/2016, CS (Comm) 1415/2016, CS (Comm) 569/2017 and CS
(Comm) 571/2017 are restored to the file of the learned Single Judge,
who would proceed with the matters from the stage at which the
impugned judgment came to be passed.
29. RFA (OS) (Comm) 22/2019, RFA (OS) (Comm) 23/2019, RFA
(OS) (Comm) 24/2019. RFA (OS) (Comm) 25/2019, RFA (OS)
(Comm) 26/2019 and RFA (OS) (Comm) 27/2019 are allowed
accordingly, with no orders as to costs.
The Dart appeal
30. In view of the above discussion, CS (Comm) 837/2016 is also
held to have been maintainable.
31. FAO (OS) (Comm) 358/2019 would now be heard on merits,
on the date already fixed.
C. HARI SHANKAR, J.
AJAY DIGPAUL, J.
July 1, 2025
aky/yg/ar
Click here to check corrigendum, if any
Signature Not Verified
RFA (OS) (Comm) 22/2019 and connected matters
Digitally Signed By:AJIT Page 70 of 70
KUMAR
Signing Date:01.07.2025
13:29:56