Written by Amit Kumar, a final-year student of Campus Law Centre, Faculty of Law, Delhi University, Delhi

INTRODUCTION

Safeguarding a business’s fundamental Intellectual Properties often entails utilizing diverse forms of IP rights; certain assets may only be protected by a single form, yet aesthetic design exemplifies an IP that seems amenable to safeguarding through multiple rights. This has given rise to a complex phase marked by intersecting protections and privileges. 

Design Copyright protects the artistic and creative elements of a product’s structure, focusing on its visual and aesthetic aspects. Trademarks safeguard unique symbols, logos, words, phrases, or combinations that function as brand identifiers.

Distinct Yet Interconnected

The confusion surrounding overlapping protection arises from the expansive definition of a trademark in Section 2(1)(zb) of the Trade Marks Act, 1999, which includes “shape of goods, their packaging and combination of colour” as elements eligible for protection. This implies that visually, the same subject matter could qualify for both trademark and design protection. However, the crucial distinction lies in the fact that for something to be a trademark, it must be “capable of distinguishing the goods or services of one person from those of others.” Thus, protection as a trademark, along with remedies for infringement and passing off, is only applicable when this requirement is met.

On the other hand, Section 2(d) of the Designs Act specifies the definition of “design,” emphasizing its difference from a trademark. According to the act, a design encompasses the “features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article.” Importantly, it explicitly states that a trademark cannot be registered as a design, making simultaneous protection under both statutes impermissible.

Design Copyright in a Trademark Context:

Features associated with trademarks, like the unique form of a particular product, its packaging, and the combination of colors, are elements that can also appeal to consumers visually. At the same time, characteristics of an item or product that catch the eye are the main requirements for registering a design under the relevant law, creating a convergence between the two. The appearance and packaging of products, known as trade dress, can be copyrighted as design elements. However, they can also serve as trademarks. 

Imagine a situation where a product uses a mix of four to five gentle colors. This raises questions about whether this color combination, serving no other purpose, should be seen as a design due to its visual appeal. It leads to a debate about whether it should be called a Design or a Trademark. While this color mix isn’t a traditional mark on a product, it becomes a trademark issue because the colors and packaging can qualify for Trademark protection. These features may not work like regular trademarks; instead, they might just look good without serving typical trademark functions. This happens because the definition of trademarks is broad and includes features that are also part of Design protection. So, there’s a chance of confusion between the two categories. 

Opting for trademark protection becomes preferable over design protection in many scenarios. Design protection lasts for 10 years, extendable by 5 more years under the Designs Act. However, this protection is limited, specific to certain classes of articles, and lacks criminal remedies. Trademark protection, on the other hand, offers extended and perpetual protection, along with criminal and civil remedies and passing off remedies.

A challenge arises when, in an effort to enhance aesthetics, consumers start associating a particular design with a specific manufacturer or producer, turning the design into a de facto trademark. While the design is initially meant for aesthetic purposes, it starts functioning like a trademark. For instance, the distinctive shape of a Coca-Cola bottle is both a copyrighted structure and a trademark.

In the case of Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd., the court rightly determined that if there are substantial similarities in the trade dress – the overall appearance of two products – it constitutes an act of passing off. This landmark case marked the first instance in India where the concept of trade dress was acknowledged, and the court provided protection to the plaintiff.

Section 9 and Exclusion of ‘Value’ Laden Shapes

As per the Indian Trademarks Act of 1999, a trademark or mark can encompass the shape of goods and their packaging, provided it can be ‘graphically represented’ and distinctly differentiates these products from those of competing brands. A shape mark, in this context, refers to a multi-dimensional or three-dimensional (3D) mark associated with the form of a product or its packaging. Sections 2(m) and 2(1)(zb) of the Trade Marks Act, 1999 explicitly include the shape of goods in the definition of a mark. For a shape to be eligible for protection under Indian law, it must fulfil the criteria of graphical representation and differentiation between products and services of different businesses. Well-known examples like the unique Coca-Cola bottle or Oreo biscuits exemplify products protected as shape marks in India. The Indian Trade Marks Act explicitly allows for the registration of the shape of goods as trademarks

Indeed, product designs (trade dress) can function as trademarks; however, Section 9(3)(c) stipulates that if a product’s shape is utilized as a trademark, it should not significantly enhance the value of the goods. It is important to note that Section 2(d) of the Designs Act of 2000 explicitly prevents the registration of a trademark as a design. Although the Designs Act excludes trademarks from its definition, the Trademark Act does not preclude designs registered under the Designs Act from being acknowledged as trademarks. 

As a ‘shape’ typically adds value in most instances, which is the very reason for seeking protection in the first place, one might need to interpret the section by distinguishing between shapes that provide ‘substantial’ value to the product and those that do not. When the registrable design relates to product packaging, it may be easier to contend that although aesthetically pleasing, the design only contributes a minor portion to the overall value of the product. Conversely, in cases where the shape of the product significantly contributes to the overall value, one could argue that it falls outside the realm of trademark protection.

To reconcile these acts, specific options can be considered.

1. Whether design registration should be revoked; or
2. Whether registered design should not be considered a trademark.

JUDICIAL INTERPRETATION

In the case of Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd. in 2003, the court rightly determined that if there are substantial similarities in the trade dress – the overall appearance of two products – it constitutes an act of passing off. This landmark case marked the first instance in India where the concept of trade dress was acknowledged, and the court provided protection to the plaintiff on these grounds.

In contrast to the Trade Marks Act, the Designs Act does not include a provision for the remedy of passing off. Despite this absence, an ongoing debate and confusion persist regarding whether the common law remedy of passing off can be invoked in the context of designs.

The judgment in Tobu Enterprises Pvt. Ltd. v. Megha Enterprises [1983 PTC 359] by the Delhi High Court was among the early decisions on concurrent trademark and design protection. In this case, the court clarified that the relief of passing off cannot be sought for a registered design, emphasizing the lack of overlap between these legal provisions. However, in SmithKline Beecham Plc. And Ors. v. Hindustan Lever Limited And Ors. [2000 (52) DRJ 55], the Delhi High Court, while referring to Tobu Enterprises, reached a different conclusion, creating conflicting positions on the availability of passing off in relation to registered designs.

In 2013, a three-judge bench of the Delhi High Court addressed this issue in Mohan Lal & Ors. v. Sona Paint and Hardwares also known as the  Micolube judgment. The court ruled that the remedy of passing off can be claimed by the owner of a registered design if it became trademark by virtue of its use, goodwill is generated in the course of trade or business and has become the source identifier of the proprietor’s products. Court also held that registered design could not be cancelled on the grounds that it has become an indicator of source i.e., a trade mark.  However, the court emphasized that design infringement and passing off are distinct causes of action and cannot be combined in a single lawsuit.

Subsequently, a five-judge bench of the Delhi High Court comprehensively dealt with the issue of whether actions of design infringement and passing off of trade dress can be consolidated in a single composite suit in Carlsberg Breweries A/S. v. Som Distilleries and Breweries Ltd. The Delhi High Court, by asserting that “the fundamental facts leading a plaintiff to seek court intervention for design infringement are identical to those in a passing-off case,” ruled that a combined lawsuit addressing both the infringement of a registered design and passing off, involving the same parties, is permissible in a court of law. The court rejected the notion of dividing the cause of action and presenting it in separate cases under such circumstances. The Judge also noted that the Court in Micolube may have failed to apply Order II, Rule 3 of the CPC which provides for joinder of different causes of action in the same suit.

Further, after carefully reviewing the judgments in Mohan Lal and Carlsberg, the Division Bench of Delhi High Court in Crocs Inc. USA v. Bata India Ltd. & Ors. Case, concluded that the Single Judge had misunderstood the majority judgment in Mohan Lal, incorrectly interpreting it to imply that a registered design cannot receive protection as a trademark at all. The court reaffirmed the legal position from previous cases, stating that while a design on its own cannot function as a trademark, the option to pursue a passing off claim in a trade dress remains open if there is an element of “something extra” or an additional component beyond the registered design. For instance, consider a situation where someone has a registered design for a particular pattern on the exterior of a handbag. In such a scenario, they may potentially seek relief through a passing off claim related to the overall trade dress of the handbag, excluding the specific pattern. This claim, grounded in the handbag’s trade dress rather than relying solely on design protection, might be permissible.

A passing off claim cannot be pursued for the exact subject matter covered by a design registration, as using such subject matter as a trademark could lead to the cancellation of the design registration under the Designs Act. However, a passing off claim may be applicable for the overall trade dress, get-up, shape, features, combination of colors, etc., of the product, provided these elements qualify for trademark protection. These claims can be made even while the design registration is in effect and can be combined with a suit for design infringement.

Hence Court made following conclusions:

1. A registered design is ineligible to serve as a trademark, aligning with the legislative intent behind the Designs Act. Section 2(d) of the Designs Act explicitly prohibits the registration of any feature of shape, configuration, pattern, ornament, or composition of lines or colors applied to an article used as a trademark. The court emphasized that the Designs Act intends protection for a limited duration, and permitting designs to be registered as trademarks would essentially enable perpetual protection, conflicting with the temporary nature of design rights.
2. It is permissible to consolidate causes of action for design infringement and passing off into a single suit, subject to specific conditions. Importantly, having a cause of action for design infringement does not automatically entail having a cause of action for passing off.

Hence, the logical implication of this principle suggests that if a design attains a level of popularity enabling it to function as a trademark—identifying a specific source—it becomes susceptible to cancellation under Section 19(1)(e) in conjunction with Section 2(d). This viewpoint seems to contradict the stance taken in the three-judge decision of Mohan Lal v. Sona Paints and Hardwares case, wherein the Delhi High Court ruled that a registered design cannot be invalidated based on transforming into an indicator of source (trademark) after registration.

The Mohan Lal decision could be interpreted to suggest that a registered design gaining source-identifying capabilities during registration enjoys dual protection as both a trademark and a design. However, Justice Endlaw in Crocs Inc.(Supra) firmly rejects this idea, maintaining that a harmonious interpretation of trademark and design laws indicates that a registered design cannot act as a trademark, not only during its registration but also thereafter.  The court further gave the opinion that goodwill generated during the period of registration, when there is a legal prohibition on its utilization as a trademark, should not be taken into account. I believe that anyone seeking protection as a trademark must demonstrate that the rights accrued from a post-registration period onward. This perceived inconsistency might prompt a reconsideration of the Mohan Lal decision in the future.

The overall impact of this situation is somewhat perplexing, as it seems to discourage rights holders from opting for protection under the design’s regime. If a product achieves substantial success to the extent that its shape becomes iconic and serves as a source identifier but has been protected under the Designs Act, the rights holder would only have remedies against infringement for a limited period of 15 years. After this duration, the design would enter the public domain, leaving no legal recourse. Additionally, the rights holder would need to demonstrate the presence of additional features to the renowned design and seek enforcement based on those, undermining the practical value for a business of having a shape so recognizable that it instantly evokes a specific brand.

Professor Shamnad Basheer by the way of reading section 19, also concluded that the moment a registered design began functioning as a trademark, it was no longer a “design” as understood by section 2. And was therefore liable to be canceled under section 19.

CONCLUSION

When considering the compatibility of passing off under the Trade Marks Act with the Designs Act, it is evident from case laws that passing off actions are permissible for aspects other than the shape of goods in a trademark. However, this remedy is not applicable to the shape of goods. Combining a suit for the shape of goods under the Design Act with a passing-off suit for the shape of goods under the Trade Marks Act is not allowed, forcing the applicant to make a choice between the two remedies. Nevertheless, a lawsuit for the infringement of the shape of goods under the Design Act can be combined with a passing-off suit for other trademark features, excluding the shape of goods.

It is evident that India is often perceived as less receptive to the registration of shape trademarks compared to other regions, such as the EU, where non-conventional marks are more widely accepted. While integrating certain legal principles from other jurisdictions into India’s legal framework could be beneficial, it is equally crucial to enhance awareness about the advantages of protecting shape marks within the country.

Overprotection becomes a significant issue, especially when an existing intellectual property (IP) right expires, and the creator attempts to extend their monopoly by seeking protection over the same subject matter under a different IP regime. Therefore, striking a balance between public benefit, the rights of the proprietor, and fair competition becomes crucial.

REFERENCE

1. Intellectual Property Rights in India, V K Ahuja, ISBN : 9789351433880, 2nd Edition
2. Law Relating to Intellectual Property, Dr B L Wadehra, ISBN : 9789350350300, 5th Edition
4. Crocs Inc. USA Vs. Bata India Ltd. and Ors. MANU/DE/0309/2019
5. Gorbatschow Wodka K.G. Vs. John Distilleries Limited MANU/MH/0630/2011
6. GM Modular Pvt. Ltd. Vs. Syska Led Lights Pvt. Ltd. MANU/DE/3026/2022
7. Greenlight Planet India Pvt. Ltd. Vs. Gee Lighting Technology MANU/DE/4203/2018
8. Mohan Lal, Proprietor of Mourya Industries vs. Sona Paint & Hardwares MANU / DE / 1254 / 2013
9. Carlsberg Breweries A/S. vs. Som Distilleries and Breweries Ltd. MANU/DE/4610/2018
10. Overlapping Intellectual Property Rights Neil Wilkof & Shamnad Basheer, , ISBN-13: 978-0-19-809540-8, 1st edition
11. Colgate Palmolive Company and Ors. vs. Anchor Health and Beauty Care Pvt. Ltd. MANU/DE/1000/2003
12. Hema Khattar and Ors. vs. Shiv Khera MANU/SC/0397/2017
13. Wal-Mart Stores, Inc. Vs. Samara Brothers, Inc. MANU/USSC/0027/2000
14. Design and TM law overlap, by Dhruv Grover, published on intellectualpropertymagazine.com. The link for the same is herein 

https://www.remfry.com/wp-content/uploads/2020/05/PDF-1.pdf

1. Carlsberg v. Som Distilleries: Beer meets design law in an interesting judgment by  Prashant Reddy, published on SpicyIP.com. The link for the same is herein 

https://spicyip.com/2017/05/carlsberg-v-som-distilleries-beer-meets-design-law-in-an-interesting-judgment.html

1. Trade Marks Act 1999
2. Designs Act 2000