Overlap of passing off and infringing registered design

By J Sai Deepak and Suvarna Mandal, Saikrishna & Associates
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India’s intellectual property framework includes statutory protection for designs under the Designs Act, 2000, which grants a monopoly right akin to patent rights. Since India does not recognize statutory rights in unregistered designs, the interplay between registered design rights and the common law tort of passing off raises interesting issues. One such issue is whether a passing off action, which in essence is based on misrepresentation and deceit, would be available in the context of a registered design, either existing or expired.

High court views

In Tobu Enterprises Pvt Ltd v Megha Enterprises and Anr (1983), Delhi High Court held that the statutory remedy for design infringement had the effect of excluding the common law remedy. The owner of a registered design could not simultaneously pursue a passing off action and was required to elect between the two.

J_Sai_Deepak_-_Saikrishna_&_AssociatesIn support of this ratio, the court compared the Designs Act then in force with section 27 of the Trade and Merchandise Marks Act, 1958, to point to the former’s lack of a savings clause which preserved an action for passing off. Support could also be drawn from section 16 of the Copyright Act, 1957, which excludes any right similar to a copyright outside the framework of the act.

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J Sai Deepak is a senior associate at Saikrishna & Associates, where Suvarna Mandal is an associate. The views expressed in this article are personal.

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