RFA (OS) (Comm) 22/2019 and connected matters Page 1 of 70

$~

* 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

RFA (OS) (Comm) 22/2019 and connected matters Page 2 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 3 of 70

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)

No.

Date of impugned

judgment

FAO (OS)

(Comm)

Dart Industries

Inc & Anr. v

837/2016 17 July 2019

RFA (OS) (Comm) 22/2019 and connected matters Page 4 of 70

358/2019 Vijay Kumar

Bansal & Ors.

RFA (OS)

(Comm) 22/2019

Crocs Inc USA v

Bata India Ltd. &

Ors.

569/2017 18 February 2019

RFA (OS)

(Comm) 23/2019

Crocs Inc USA v

Liberty Shoes

Ltd. & Ors.

1415/2016 18 February 2019

RFA (OS)

(Comm) 24/2019

Crocs Inc USA v

Aqualite India

Ltd. & Anr.

903/2018 18 February 2019

RFA (OS)

(Comm) 25/2019

Crocs Inc USA v

Bioworld

Merchandising

India Ltd. & Anr.

906/2016 18 February 2019

RFA (OS)

(Comm) 26/2019

Crocs Inc USA v

Relaxo Footwear

Ltd.

571/2017 18 February 2019

RFA (OS)

(Comm) 27/2019

Crocs Inc USA v

Action Shoes Pvt.

Ltd. & Ors.

905/2016 18 February 2019

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) 571/2017

1

, 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, 1908

2

.

3. In RFA (OS) (Comm) 22-27/2019

3

, preferred by Crocs Inc

USA

4

, 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

RFA (OS) (Comm) 22/2019 and connected matters Page 5 of 70

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)

837/2016

5

, 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 Inc

6

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

RFA (OS) (Comm) 22/2019 and connected matters Page 6 of 70

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,

RFA (OS) (Comm) 22/2019 and connected matters Page 7 of 70

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.

RFA (OS) (Comm) 22/2019 and connected matters Page 8 of 70

(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”

RFA (OS) (Comm) 22/2019 and connected matters Page 9 of 70

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 Limited

8

,

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 & Hardwares

9

. 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)

RFA (OS) (Comm) 22/2019 and connected matters Page 10 of 70

(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/mark

along-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

RFA (OS) (Comm) 22/2019 and connected matters Page 11 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 12 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 13 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 14 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 15 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 16 of 70

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

relation to impugned goods and business.”

RFA (OS) (Comm) 22/2019 and connected matters Page 17 of 70

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.

RFA (OS) (Comm) 22/2019 and connected matters Page 18 of 70

(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

the identity of that person, and includes a certification trade mark or collective mark;

RFA (OS) (Comm) 22/2019 and connected matters Page 19 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 20 of 70

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 Ltd

13

, 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)

RFA (OS) (Comm) 22/2019 and connected matters Page 21 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 22 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 23 of 70

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.

RFA (OS) (Comm) 22/2019 and connected matters Page 24 of 70

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 supra

14

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 of

14

McCarthy on Trade Marks and Unfair Competition 4

th

Edition

RFA (OS) (Comm) 22/2019 and connected matters Page 25 of 70

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 Limited

15

supra referred to by the

senior counsel for the plaintiff merely quotes a passage

from Star Industrial Co. Ltd. v Yap Kwee Kor

16

, 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

RFA (OS) (Comm) 22/2019 and connected matters Page 26 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 27 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 28 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 29 of 70

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, Tuticorin

19

.

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 Rehman

20

, 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

RFA (OS) (Comm) 22/2019 and connected matters Page 30 of 70

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 Orissa

21

. 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

may unite such causes of action in the same suit.

RFA (OS) (Comm) 22/2019 and connected matters Page 31 of 70

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.

RFA (OS) (Comm) 22/2019 and connected matters Page 32 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 33 of 70

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

Lemon case)

25

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

RFA (OS) (Comm) 22/2019 and connected matters Page 34 of 70

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;

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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

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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

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 Page 37 of 70

1958

31

. 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 Ltd

32

, 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

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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 Brown

33

).

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 is

33

(1888) 22 QBD 128

RFA (OS) (Comm) 22/2019 and connected matters Page 39 of 70

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.

Industries

34

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.

RFA (OS) (Comm) 22/2019 and connected matters Page 40 of 70

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

follows.

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(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)

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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.

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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 Devi

36

, 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

RFA (OS) (Comm) 22/2019 and connected matters Page 44 of 70

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 Nahata

37

(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

RFA (OS) (Comm) 22/2019 and connected matters Page 45 of 70

21.7.1 Mehta J’s opinion, in Carlsberg, commences thus, in para 49

38

:

“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 fundamental

38

as reported in SCC OnLine

RFA (OS) (Comm) 22/2019 and connected matters Page 46 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 47 of 70

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 11

40

and 22

41

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

be instituted in any court below the court of District Judge.

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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 of goods, packaging or combination of colours or any combination thereof;

RFA (OS) (Comm) 22/2019 and connected matters Page 49 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 50 of 70

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

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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

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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 India

43

, 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

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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 4

44

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. –

(1) Any person interested may present a petition for the cancellation of the registration of a

RFA (OS) (Comm) 22/2019 and connected matters Page 54 of 70

(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

(e) that it is not a design as defined under clause (d) of Section 2.

RFA (OS) (Comm) 22/2019 and connected matters Page 55 of 70

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 Lal

47

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

RFA (OS) (Comm) 22/2019 and connected matters Page 56 of 70

(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”.

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(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

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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

representation of the mark;

RFA (OS) (Comm) 22/2019 and connected matters Page 59 of 70

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

upon, or in any physical or in any other relation whatsoever, to such goods;

RFA (OS) (Comm) 22/2019 and connected matters Page 60 of 70

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

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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

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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

in respect of infringement of the trade mark in the manner provided by this Act.

RFA (OS) (Comm) 22/2019 and connected matters Page 63 of 70

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 Karkhana

51

:

“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

RFA (OS) (Comm) 22/2019 and connected matters Page 64 of 70

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 Bai

57

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)

RFA (OS) (Comm) 22/2019 and connected matters Page 65 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 66 of 70

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

Laboratories

59

:

“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 for

59

AIR 1965 SC 980

RFA (OS) (Comm) 22/2019 and connected matters Page 67 of 70

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

RFA (OS) (Comm) 22/2019 and connected matters Page 68 of 70

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.

RFA (OS) (Comm) 22/2019 and connected matters Page 69 of 70

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.

RFA (OS) (Comm) 22/2019 and connected matters Page 70 of 70

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

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