Research Paper

Designs

TOPIC: - Enigma of Passing Off and Design Infringement.

DESIGNS AND UNDISCLOSED INFORMATION RESEARCH PROJECT

SUBMITTED BY- SUBMITTED TO-

SHREEMAI JHA MR. JAGDISH JENA

SEMESTER – VIII, ‘B’ FACULTY-IN-CHARGE

ROLL NO- 469 

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Introduction:

Much the same as different parts of civilisation and life, shapes too had humble beginnings.
The perfect and basic – circles, squares and triangles, the most essential states of our planet,
established the framework for the present convoluted designs and patterns. Likewise, as we
have heard, shapes were utilized to impart and as a feature of a dialect in early civilisation.
While shapes today have advanced and turned out to be progressively various and muddled,
they are as yet a dialect in themselves and are absolutely still a strategy for correspondence.
Shapes keep on communicating all the more quietly through whispers, guiding the decisions
we make.

The term ‘design’ has been defined under The Designs Act 200 under section 2(d) as:

“(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 any 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 clause (c) of section 2 of the Copyright Act, 1957.”

Thus it is clearly evident from the mere definition itself that any design is made of and can
consist of various components. It is the variations in the placement and use of these
components or building blocks that give a design its distinctive quality to be visually
appealing.

The Designs Act does not expressly provide for the remedy against passing off as is
provided in Trademarks Act, 1999. The minority opinion states that this evidences of
legislative intent in not providing more than the limited period of monopoly rights- 10 years
and an additional 5 years after which the Designs Act in 2000, the provisions did not include
common law remedy. It further holds that in a limited manner, the remedy of passing off
would be available to prevent consumer confusion which may be caused by the use of trade
mark, get up, trade dress or in any other manner excepting the shape of the goods which is
subject matter of registration of design.

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Earlier, the common law remedy of passing off was available only to trademarks. It was for
the first time in the case of Smith Kline Beecham v. Hindustan Lever,1 the Delhi High
Court held that passing off remedy is available also to the designs under the Designs Act.
Justice Sharma in stating the reason has mentioned that it is to protect misrepresentation of
designs by a third person, which have eventually become the identity of a brand. The larger
bench of the Delhi High Court upheld the same in Micolube India v. Rakesh Kumar.2

It is a well-settled law that the passing off is a common law remedy which exists over and
above the protection of statutes. Then why were the courts hesitant to allow the same? The
single judge ruling in the Micolube case states that there was lack of legislative intent in the
Designs Act to provide the remedy of passing off. This absence of express provision in the
Designs Act, unlike the Trade Marks Act, justified this issue for a long time. But, later the
full bench in the same Micolube case was very much pragmatic. They held that the single
judge framed the issue incorrectly, namely, ‘Whether there exists any remedy of passing off
under the Designs Act?’ Then, the answer is pretty simple that there is no such remedy
mentioned in the Designs Act.

Therefore the paper shall discuss the paradox that exists between Passing off and Designs
Act. The remedies, if any available under the Designs Act against passing off. The paper
shall also throw light upon both national and international cases that discuss the issue and try
to resolve the enigma.

The concept of Passing Off

The tort of passing off was developed with the intention to safeguard the reputation and
goodwill associated with trademarks. The history of passing off can be traced back to as
early as seventeenth century in United Kingdom and nineteenth century in United States of
America and India. With the growth in trade and commerce after industrial revolution,
trademarks became increasingly popular as traders wanted to inform the public about the
source of origin and quality and trademarks very conveniently provided the opportunity.
Once the products had become popular and were identified with a particular source there
was no dearth of dishonest traders who wanted to reap advantage of the fruits of another’s
labour and the tort of passing off was developed to prevent any economic loss of goodwill to
the original and true trader of the concerned product.
1
2000 (52) DRJ 55
2
CS (OS) No.1446 /2011 

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Perhaps the oldest of the contemporary legal regimes for the protection of reputation is
embodied in the action of passing off. In essence, the action prevents a man from selling his
goods as that of another man by advantage over the latter’s reputation. The essence of
passing off has retained its classic form till date. The gist of the said action lies in
establishing in the first place, existence of goodwill or reputation attached to the particular
goods and the degree of representation that is likely to deceive the public. With the growth
of capitalism in the twenty first century the drive to sell goods on large scale has penetrated
every comer of the world; notwithstanding the numerous collateral implications it has
brought along with it.

The origin and growth of intellectual property assumed its shape with the development of
commercial relations in various branches and competition rising in trade. The Indian traders
in Ancient India has developed their supremacy on the production of certain specific articles
which they supplied to foreign countries, such as the then cloth of Dhaka (now in
Bangladesh), which the foreign countrymen liked and appreciated very much and used to
appreciate very much and used to express their pleasure that this article is Indra (abbreviated
name of Indraprastha) made or has come from Indra the name of this country (which name
later on abbreviated to the name India), the foreigners given name to our undivided country.
Since the goods of the Indian make were supreme in quality and nobody else was able to
copy them, hence they did not have any trademark or brand name of their goods and the
restricting provisions of trademark law never creeped into their minds. The same position
remained during the Muslim Rule in India. But when the East India Company of England
captured certain parts of India and began to rule the major portion of the country, the big
merchants and traders, private as well as corporate, who had established their mark on their
products in the market, required that the brand name, style or design should be sold under
their monopoly and be traded or sold under their own specified brand names and no other
person or trader should be allowed to use their brand name, style or design. This was the
origin of trademark law starting in practice and later evolved in the form of successive
enactments on the law of trademarks.3

In the late nineteenth century where law was regarded as a science, the legal formalists laid
down principles and legal rules, treating trademark as a property. In the beginning of this
century, legal realists laid emphasis on pragmatic considerations of economic policies and

3
R.K, Nagarajan- “Intellectual Property law” p. 285

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on “real world results” and the “likelihood of confusion”. Since time immemorial, the tough
competition in trade and the desire to earn quick money in the easiest manner resulted into
the use of goodwill and reputation of trade and settled business of other traders. This
resulted in the development of the tort of passing off.4

The passing off action arose in the nineteenth century and depends upon the simple principle
that “nobody has any right to represent his goods as the goods of somebody else. In other
words a man is not to sell his goods or services under the pretence that they are those of
other man.”5

In India passing off has its origin, as an action in tort to redress the wrongful conduct of the
defendant in passing off his goods as the goods of the plaintiff. This might be done by using
the trade name, trademark, or other get up of the plaintiff so as to induce in potential
purchasers the belief that his goods or business were those of the plaintiff. The tort lies in the
misrepresentation by the defendant. The misrepresentation is aimed at the potential buyers
of the goods or services, who are invited to buy the goods believing that the goods are of the
plaintiff. This is done through confusing or deceitful use of trade names, marks or other
indications used by the plaintiff in respect of such goods or services. “The great empire of
India has no trademark legislation” It would appear that the interests of commerce and
manufacture and other practical considerations do not attract the attention of those who
clamour so loudly for political recognition,” said Courtney Terral, ChiefJustice of Patna
High Court in August, 1935. He endorsed the demand made by Dr. S. Venkateswaran for
trademark legislation and recommended the same for commercial India and called upon the
high administrative authorities to tackle the problem as follows:6

“Commercial India has long struggled for the establishment of a Trade Mark Register as in
other civilized countries. An Indian Patent office for the protection of inventions exists
though the need for protection of inventions is far less, in India, than for machinery to
protect trademarks, for though a large proportion of population is engaged in manufacture or
trade....”

4
Dr Vikas Vashishth- “Law and Practice ofIntellectual Property” p. 128 2nd Edition
5
Ibid
6
Courtney Terral, CJ., Patna High Court, in the forward to the book by S. Venkateswaran on the Law of Trade
and Merchandise Marks in India, Madras, Madras Law Journal Office, 1937

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The concept of Design Infringement

Then in recent times we were introduced to the concept of designs and their protection as
intellectual property. To ensure protection a design must be registered. In order to be
registrable, a design must be:

 new or original;

 not published (ie, disclosed to the public either in India or abroad in a tangible form
or through use or in any other way before the application is filed);

 significantly distinguishable from known designs or combinations of known designs;

and

 devoid of scandalous or obscene matter.

The expression ‘new’ refers to something which comes into existence for the first time.
However, mere novelty of form or shape is insufficient to make a design registrable. A
design may be claimed to be new or novel if it involves a new element or an old element in a
new position or combination, and this is different from anything found in any previous
structure. In order to determine registrability, the design in question must be examined with
an educated eye to ask whether there is a difference between it and previous designs. 7 While
a design may not be new because it exists in the public domain and is otherwise well known,
it may still qualify as original if it is applied in a new manner – for example, to an article to
which it has not previously been applied.8

Publication’ is not defined in the relevant legislation. It is widely held that that publication
takes place in two main ways: print and prior use. Courts express it as something which is
not a secret, but is rather available in the public domain. The design need not have actually
been used. For instance, disclosure to an individual who was under no obligation to keep the
design secret would constitute publication.9 However, where a design has been disclosed to
another in confidence or disclosed in breach of good faith, such disclosure shall not
constitute publication in India.

7
Hello Mineral Water Pvt. Ltd. v. Thermoking California Pure ; 2000 (56) DRJ 700
8
Reckitt Benkiser India Ltd v. Wyeth Ltd.; FAO(OS) 458/2009
9
The Wimco Limited v. Meena Match Industries; AIR 1983 Delhi 537

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Registration abroad per se is not grounds for rejection, as the mere existence of a design in a
register of designs open to public inspection in a convention country may or may not
constitute publication. If the design is open to public inspection and the application of the
design to an article has been clearly depicted, it will be taken to have been published and
registration can thus be refuse.10

Registration confers the exclusive right to apply the design to any article in the class in
which it is registered. This right lasts for a 10-year period, which can be extended by five
years. Thereafter, the design becomes public property and can be used by anyone. It has
been opined that design rights were never protected by common law and thus confer a lesser
monopoly than ordinary copyright. A registered design is open to cancellation proceedings
by any interested person on the grounds that it is not registrable and/or does not qualify as a
design.

It is illegal to apply a registered design, or a fraudulent or obvious imitation of such, to an

article or to import, publish or expose an article to which such a design has been applied in
the same class of articles in which the design is registered, without authorisation from the
registered owner. Available recourse includes filing suit to recover a nominal sum from the
infringer as a contract debt or seeking damages and an injunction against misuse of the
design.

Not every resemblance is actionable and imitation does not mean duplication. An obvious
imitation is one which immediately strikes one as being so like the original registered design
as to be almost indistinguishable. In contrast, the word ‘fraudulent’ presupposes knowledge
of the registered design.

To ascertain infringement, the two products need not be placed side by side, but rather
examined from the point of view of a customer with average knowledge and imperfect
recollection. The main consideration is whether the broad features of shape, configuration
and pattern are similar to one another.11 

All grounds available to a person seeking cancellation may be adopted as a defence in

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infringement proceedings. In Steelbird v Gambhir the Delhi High Court upheld the
defendants’ plea that the design was neither new nor original and thus not eligible for
10
Supra 8
11
Veeplast Houseware Private Ltd v. M/S Bonjour International & Anr; CS(OS) No. 1181/2011
12
Steelbird Hi-Tech India Ltd. v. S.P.S. Gambhir & Ors; in CS(OS) No.2407/2013

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protection, and vacated the interim injunction. The Madras High Court has observed that the
remedies available to a registered rights holder, the defence available to the opposing party
and the nature of the available reliefs are not clearly indicated in the Designs Act.13 

Courts have long debated whether the common law remedy of passing off is available for
designs. In 1983 the Delhi High Court held that since no express provision for passing off is
mentioned, unlike in trademark legislation, it cannot be claimed by a plaintiff. Much later,
the court in obiter took the view that rights in registered designs are set out in the Designs
Act itself, whereas passing off is established under common law. As a result, the rights are
distinct and different. It observed that the absence of an express provision does not mean
that passing off is not available under design law14 

In a recent case a majority of judges at the Delhi High Court opined that the remedy of
passing off is indeed available to the owner of a registered design if the design is used, post-
registration, as a trademark. It also stated that the remedy of infringement under the Designs
Act and the remedy of passing off are essentially different. Therefore, as the two remedies
stem from different causes of action, they cannot be combined in the same suit.15 

The enigma of Passing Off and Design Infringement

The words of Lord Halsbury, "Nobody has any right to represent his goods as the goods of
somebody else", give us a brief insight on the idea of passing off. One has to establish
his goodwill, misrepresentation of his goods, and the damages thereof, to succeed in his
passing off claim.

Design Infringement and Passing Off

Passing off was once considered to be a common law remedy available only to trademarks.
But, an inclusion of the scope of passing off to designs leads to various interesting debates
and questions in the IP arena. This article would help in understanding the conundrum with
referrals to various case laws throughout it.

The key issues involved are:

 Availability of common law remedy of passing off under the Designs Act, 2000.

13
M.C.Jayasingh v. Mishra Dhatu Nigam Limited; Civil Suit No.562 of 2007
14
Smithkline Beecham Plc. And Ors. v. Hindustan Lever Limited And Ors.; 2000 (52) DRJ 55
15
Supra 2

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 Continuation of a mark as a design which has gained trademark status.

 Composite suit of Design Infringement and Passing off.
 Passing off suit against a design registrant.

Availability of common law remedy of passing off under the Designs Act, 2000

What is the first thing that pops into your mind when I say iPhone? There is no doubt that it
is the design of such phones which are distinct from the rest, right? It is such designs which
become the identity of any brand, and the very purpose of the passing off claim is to shield
that identity.

Earlier, the common law remedy of passing off was available only to trademarks. It was for
the first time in the case of Smith Kline Beecham v. Hindustan Lever16, the Delhi High Court
held that passing off remedy is available also to the designs under the Designs Act. Justice
Sharma in stating the reason has mentioned that it is to protect misrepresentation of designs
by a third person, which have eventually become the identity of a brand. The larger bench of
the Delhi High Court upheld the same in.17

It is a well-settled law that the passing off is a common law remedy which exists over and
above the protection of statutes. Then why were the courts hesitant to allow the same? The
single judge ruling in the Micolube case states that there was lack of legislative intent in the
Designs Act to provide the remedy of passing off. This absence of express provision in the
Designs Act, unlike the Trade Marks Act, justified this issue for a long time. But, later the
full bench in the same Micolube case was very much pragmatic. They held that the single
judge framed the issue incorrectly, namely, 'Whether there exists any remedy of passing off
under the Designs Act?'Then, the answer is pretty simple that there is no such remedy
mentioned in the Designs Act.

I would agree with the full bench. As I have said earlier, passing off protects the identity of a
brand. Then, if a design becomes such identity, it is more than appropriate to provide the
same remedy to designs. The plaintiff in the case of Good Earth v. Krishna
Mehta18 established that any consumer would recognize their brand with their designs, which
made them succeed their suit claiming passing off against India Circus.

16
Supra 1
17
Supra 2
18
CS(OS) 1234/2014

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Continuation of a mark as a design which has gained trademark status

Section 19(1) (e)19 of the Designs Act clearly states that a registered design can be cancelled
if it ceases to continue as a design. It is better to have a clear picture on the definition of
design to understand this provision.

Section 2 has specifically given that only the features of shape, configuration, pattern,
ornament or composition of lines or colours applied to any article are designs under the
Designs Act. It also specifically excludes the following from the ambit of this definition.

 Any trademark as defined in Trade Marks and Merchandise Act.

 Any mode or principle of construction which in substance a mere mechanical device.
 Property mark as defined in IPC
 Artistic work as defined in Copyrights Act.

This gives us an insight that when a design is a trademark, then it cannot be registered.

So, what if a design after registration has become a trademark by use?

Earlier, the courts had an interpretation that the very moment a design becomes a trademark
by use then it no longer can enjoy protection under the Designs Act. It is ordinary for a
distinct design of a brand to acquire reputation and serve as a trademark. Should the
proprietor of the design brood over it?

The full bench had a different understanding of this interpretation. This reasoning broke the
stereotype so far. This is simple in understanding that any design which was a trademark
cannot be registered as a design, and whereas the design after registration becomes a
trademark by use, it can continue to be a design. This is an overlap of the IP rights.

A design which has become a trademark is untouched by Section 19 of the Act. Section 2
excludes only the design which is a trademark at the time of application for registration of a
design.
19
19. Cancellation of registration.—
(1) Any person interested may present a petition for the cancellation of the registration of a 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 registerable under this Act; or
(e) that it is not a design as defined under clause (d) of section 2.

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Composite suit of Design Infringement and passing off

It is still a mystery that when there can be composite suits of trademark infringement and
passing off, or trademark infringement and copyright infringement, why is it impossible to
file a composite suit for design infringement and passing off. The decision in Mohan Lal v.
Sona Paint20 is straightforward that a composite suit for design infringement and passing off
is not maintainable. They placed reliance on the Supreme Court's decision in Dabur India
Limited v. KR Industries21 in which it was held that two causes of action cannot be clubbed
into a composite suit, only where they do not arise within the jurisdiction of the same court.

The Court in Mohan Lal case has also disregarded Order 2 in Rule 3 of CPC, which permits
joinder of causes of action. After all, the intention of CPC is to prevent multiple suits
regarding a same issue.

However, last month the Delhi High Court in the case of Carlsberg Breweries22 has felt that
the decision needed reconsideration and referred the matter to a larger bench. It is better to
understand Design Infringement and Passing off of the same design as a string of actions
rather than different causes of action. Though both have different grounds, as design
infringement as novelty or not original, and passing off as misrepresentation, both affect the
goodwill earned by the brand.

A revision in the maintainability of the composite suit is the need of the hour and would be
hailed.

Passing off suit against a design registrant

The Bombay High Court in Whirlpool v. Videocon 23has upheld the scheme of Section 22 of
the Designs Act which calls for the interpretation of "any person" as provided in this section.
The term "any person" qualified with the phrase "other than the registered
proprietor" created an ambiguity that whether it excludes any other registered proprietor or
it makes liable all other persons other than the registered proprietor of such design.

Just because a monopoly right is given to a registered proprietor, he cannot infringe the
rights of other registered proprietors, right? Passing off remedy never allows any "other

20
CS(OS) 384/2008
21
SLP (C) No.20941 of 2006
22
Carlsberg Breweries A/S v. Som Distilleries And Breweries; C.S. (OS) No.1485/2015
23
SUIT NO. 229 OF 2012

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person" to represent his goods as the goods of somebody else. This would widen the scope
of maintainability of passing off in a design infringement. The same was emphasized in the
practice of Indian design infringement and passing off suits with the help of courts

Conclusion

Besides everything, I must agree that designs law regarding infringement is constantly
evolving. A recent judgment of the Bombay High Court in Cello v. Modware 24has discussed
the issue with a different facet envisioning the scope of mosaicing of prior art in designs.

Is it a herculean task for you to read the above piece? I sum it up for you.

 Yes, you can file a suit of passing off for protecting your design.
 Yes, your design is still protected under Designs Act even after it becomes a
trademark.
 Yes, you can file a passing off suit against a design registrant.

The laws are providing every means to protect your intellectual property. On your part,
know and utilize it.

References

a) ‘The Conflict over shape: Passing off and Design Infringement’, Indian Institute of
Patent and Trademark Attorney
b) ‘The Law of Designs and Passing-off in India’, Selvam and Selvam, 12th June 2017
c) ‘Its all about the shape – design infringement and passing off’ , De-Coding Indian
Intellectual Property Law, Aparagita Lath
d) ‘Passing Off In Design’, Lithmus Legal
e) ‘The Development of Design Law Past and Future’, Alexander Carter-Silk, Michelle
Lewiston
f) ‘Protecting designs in India’, World Trademark review, Vikram Grover

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SUIT (L) NO. 48 OF 2017

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