Passing Off Action Maintainable Even for Product Registered under Designs Act: Delhi High Court

Introduction

Recently Delhi High Court clarified the maintainability of a passing off action, in cases where products stand registered under the Designs Act, 2000. The said decision came through while restoring suits filed by global footwear brand Crocs against several Indian companies like Bata, Liberty, Relaxo, and others. This happened because statutory remedies under the Designs Act do not bar a plaintiff from filing an application for protection through common law by way of a passing-off action when the subject matter is also identical; hence Design Rights-Common Law Remedy found its substantive ground reaffirmed here too. The judgment has vividly opened up new vistas regarding how much protection design owners actually have.

Background of the Case

Crocs Inc., a prominent American brand, had filed suits alleging that its distinctive clog design was being copied by Indian footwear brands, thereby amounting to both design infringement and passing off. A Single Judge of the Delhi High Court dismissed these suits, holding that since the design in question was registered under the Designs Act, no passing off action was maintainable for the same product appearance.

The decision was based on the interpretation of the Delhi High Court’s full bench decision in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., which was read to imply that statutory design protection excludes recourse to common law passing off. Crocs, however, placed reliance on the earlier full bench decision in Mohan Lal v. Sona Paint & Hardwares, which upheld the maintainability of a passing off claim for a registered design, provided it is filed as a separate suit.

The Division Bench’s Verdict

A Division Bench comprising Justices C. Hari Shankar and Ajay Digpaul allowed the appeals filed by Crocs and restored its suits. The Court held that there is no legal bar to pursuing a passing off action in respect of a product that is also protected under a registered design. It observed that:

“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.”

The judgment provides several key clarifications:

1. Independent Nature of Passing Off: Passing off is a common law remedy rooted in tort, aimed at preventing misrepresentation and protecting the goodwill of a business. Its scope is not confined or curtailed by the availability of statutory remedies under the Designs Act.
2. No Requirement to Prove “Something More”: The Court rejected the proposition that the plaintiff must show “something more” than the registered design to claim passing off. It held that the same subject matter could form the basis of both the design infringement and the passing off claim, provided both actions are filed independently.
3. Clarification of Precedents: The Court clarified that neither Mohan Lal nor Carlsberg Breweries excluded the possibility of a passing off action. In fact, Carlsberg endorsed the view in Mohan Lal that common law remedies remain available even for products protected under design law.
4. Commercial Use as Trade Dress: The Court emphasized that if the defendant uses the registered design not merely as a product design but as part of a larger trade dress, get-up, or packaging aimed at confusing the consumer, a claim for passing off is well-founded.

Implications of the Judgment

This ruling has far-reaching consequences for the enforcement of design rights in India:

• It ensures that a design registrant is not left remediless against misrepresentation or deceptive commercial practices.
• It strengthens protection against unfair competition by allowing recourse to both statutory and common law remedies.
• It provides clarity on the interpretation of conflicting judicial precedents in IP law, particularly in cases where trade dress overlaps with registered designs.

Conclusion

The Delhi High Court’s judgment in Crocs Inc. USA v. Bata India & Ors. reinforces the principle that common law rights, such as passing off, operate independently of statutory rights conferred under the Designs Act. By restoring the suits filed by Crocs, the Court has affirmed that design registration does not extinguish the right to sue for passing off. This decision not only harmonizes statutory and common law protections but also strengthens the legal framework for safeguarding commercial identity and consumer trust in the Indian market.