A Bombay HC order involving cello and Modware case “Justice Pate,l had relief to cello on account of cello successfully establishing, prima facie , both passing off and design passing off and design infringement. The conflict regarding this block is “If the design of the bottle is acting as an indicator of source, doesn’t it follow that it can be registered as a trademark which means it is incapable of being registered as design because it falls foul of the definition of design under Section 2(d). Right?”  

  • Shapes may fall within what we know as trademarks because like other trademarks, shapes help communicate a particular brand, quality and identity to consumers.
  • But shapes and configurations that do not fulfill the criteria of a ‘trademark’, and fulfill certain other criteria (as explained below), can be protected as a design.
  • But since shapes will be shapes whether called a ‘design’ or a ‘trademark’, it is interesting to examine whether a shape, falling within the ambit of protection under the Designs Act, which starts functioning as a trademark should still be accorded protection under the Designs Act.

We should know

To understand this conflict he cover the two questions regarding this conflict first is “Can a design registration make a claim of passing off” and the second is “Can a mark that has gained TM status continue to be granted protection under design low”. And by solving this question he understand that passing over off claim is a common low its come in the protection provided in statutes as the design Act.

 Why this issue is arise?

So, under S. 27(2) of the TM Act (1999), the statute clearly states that the claim of passing off exists over and beyond the protection provided by it. Relying on the absence of such a provision under the Designs Act (2000), the earlier single judge ruling held that the absence indicates towards a lack of legislative intent to allow for a claim of passing off alongside a claim under the Design Act.

Bombay High Court decision in the case:

The facts of this case are simple enough –

  • The Plaintiffs have a registered design for the design of a container and a lid.
  • The Plaintiffs also claim that by virtue of continuous and extensive use and sales, they have acquired reputation and goodwill in relation to this container in the market – implying thereby that the shape of the container has started functioning as a trademark.

Therefore, they claim that since the Defendant’s container is indistinguishable from their container, the Defendant has to:

  • Infringed the copyright in their design
  • Has also sought to pass off its product as that of the Plaintiffs.

 Defendant’s claim

The defendant claimed that the Plaintiffs’ design is not novel, that there are several others who use similar designs, that the registration is with respect to a shape and configuration and not the wave-form which is ‘simply an ornamentation’ , that the Defendants also have a registration which precedes the Plaintiff and that no case has been made for passing off.

Random analysis over the various provisions of the designs Act

After the examine the being the threshold, the definition of a ‘design’ (Section 2(d)). This section as the court explains is a restrictive definition that has four facets –the first is that it relates to the features of shapes , configuration,pattern,ornament or composition of lines or colour.tThe second is that these must be applied to an article and that this application may be in two dimensional or three dimensional or both from. The third is that third is that this application must be by an industrial process or means, and this process or means may be manual mechanical or chemical, either separate or combined. The final aspect is that in the finished article, these features mentioned earlier, as applied by the defined process, must have, and have only, a visual appeal. Among other exclusions (artistic works under the Copyright Act), this definition excludes a trade mark under the Trade Marks Act, 1999. Further, Section 19 of the Act provides various grounds for cancellation of a design, one of them being that the design is not a design defined under Section 2(d) of the Act.

Clearly this means that the moment a registration began function as trademark it was no longer a design as understood by section 2 and there fore liable to be canceled under setion 19

Three bench judge’s jurisdiction

In this court is agree with the case line by the reasoning by holding that design registration does not bar an action of relation of passing off this is because of passing off is a common low remedy and is distinct from the remedy provided under the design art . The court also observes that the purpose of the legislation and the common law right are different and hence protection provided is different. However, the question that still remains is that though the purpose of different laws may be different, if an shape which is not registered as a trademark (if it is registered then automatically section 2(d) excludes such a shape from being registered as a design) starts functioning as a trademark to what extent should it be protected.

So, the query boils down to this

While I can understand the rationale to the TM regime restricting registration of material that should be registered under the patent or design regime, what is the point behind other regimes excluding trademarks”

“After I published the above piece, Prof. Basheer pointed out that the various IP regimes have varying standards for infringement. Therefore, it would be wrong to assume (as I did) that protection under TM law ensures the same quality (or standard) of protection as other regimes. Though in terms of duration of protection, the TM regime (theoretically) affords the greatest protection, it might be harder to establish infringement on account of the TM law standard for infringement (likelihood of confusion), as opposed to other regimes (e.g. substantial similarity).”