HC rejects Crocs Inc plea, says 'design can't constitute trademark'

The Delhi High Court has rejected a plea by multinational footwear manufacturer Crocs Inc seeking to restrain some companies from copying its registered design, saying 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 which) goodwill has been acquired, it is only those extra features which can be protected as a trade mark," Justice Rajiv Sahai Endlaw said in its March 5 order.

"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 trademark/ trade dress and restraining another from passing off its goods as that of the registrant, by copying the registered design."

The court was hearing a plea of American footwear company Crocs, Incorporated seeking permanent injunction for restraining various other footwear companies from adopting and copying the shape trademark and design of the plaintiff (Crocs).

The Crocs is using a registered design as a shape trademark.

Crocs has initiated the litigation for restraining some of the defendants (other footwear companies) from infringing the registered design of the plaintiff with respect to "Crocs" footwear.

Crocs argued that the design of the subject footwear of the plaintiff and defendants' is the same.

The counsel for the defendants argued that no additional features qualifying as trade dress, which are not part of the registered design, have been pointed out.

The court noted that Crocs has not been able to show any extra, besides the design, which is used as a trademark.

The court said that the plaintiff has not pleaded anything extra, which is used and has goodwill as a trademark and which can be protected in these actions for passing off.

The court said that the law relating to designs is that what is registered as a design cannot be a trademark, not only during the period of registration as a design but even thereafter.

It noted that "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 trademark, it cannot be registered as a design".

The court also said that use of registered design as trademark and restraining other from using the design is not permissible in law.

--IANS

akk/nir