Can a product’s shape be protected as both a registered design and a trademark? In the Crocs case, the Delhi High Court said no — what is registered as a design cannot be a trademark, even after the design expires. It is a clean rule with a messy tail.
The case
Crocs Inc. sued Aqualite India and others, alleging copying of its shape trademark, trade dress and registered design. Crocs had earlier brought separate suits for design infringement and passing off. In an order of 6 March 2019, Justice Endlaw rejected the maintainability of the passing-off suit built on a registered design. (Crocs’ earlier design-infringement suit had itself faltered on prior publication under Section 2(d) — publication by Crocs itself.)
The core holdings
- A registered design cannot be a trademark. Section 2(d) of the Designs Act, 2000 excludes from “design” any shape/configuration/pattern used as a trademark. Designs get time-limited protection; allowing a design to double as a trademark would let the owner protect it in perpetuity under the trademark regime — defeating the design bargain.
- Design infringement and passing off can be combined in one suit only in limited circumstances — and a design-infringement cause does not automatically carry a passing-off cause.
The Mohan Lal / Carlsberg tension
The reasoning sits uneasily with earlier authority:
- Mohan Lal v. Sona Paints (2013, Full Bench) had held a registered design could be used as a trademark and, if goodwill accrued, protected by passing off.
- Carlsberg Breweries v. Som Distilleries (2018) held a composite design-infringement + passing-off suit maintainable only where the plaintiff shows features additional to the registered design used as a trademark.
Justice Endlaw went further, holding that “what is registered as a design cannot be a trade mark, not only during the period of registration as a design but even thereafter,” while also saying anyone claiming trademark protection must show rights “accruing with effect from post registration.” Those two statements pull in opposite directions — and suggested Mohan Lal may need reconsideration.
Why the shape–trademark divide exists
- Different tests. A trademark claim needs likelihood of confusion; a design claim needs only substantial similarity (easier to prove).
- Different purposes and terms. A design is “part of the goods” and protected for a fixed term (max 15 years); a trademark is “something extra… added on to denote origin,” potentially perpetual. Letting a lapsed design live on as a trademark would undermine the design system’s public-domain bargain.
The puzzle it leaves
Take an iconic shape — the KitKat four-finger bar, the Coca-Cola bottle, a Zippo lighter. On this reasoning, if the shape was registered as a design, the owner could enforce trademark-style rights only over features additional to the registered design — and after 15 years the shape enters the public domain with no recourse. That seems to penalise exactly the products whose shape became so recognisable it functions as a brand — a result many see as needing appellate clarity.
Practical guidance
- Choose the regime deliberately. For a shape you expect to become a source identifier, weigh shape-trademark protection (harder to get, potentially perpetual) against design registration (easier, time-limited).
- Don’t rely on doubling up. After Crocs, banking on a registered design also serving as a trademark is risky.
- Isolate “extra” features. Any passing-off claim should rest on trade-dress features beyond the registered design.
Frequently asked questions
Can a shape be both a registered design and a trademark in India? Per the Crocs decision, no — what is registered as a design cannot be a trademark, even after the design lapses (Section 2(d)).
Why can’t a design be protected as a trademark? Because designs get time-limited protection; allowing them to double as trademarks would grant perpetual protection and defeat the design regime’s public-domain bargain.
Does design infringement include passing off? Not automatically. The causes can be combined only in limited circumstances, and a passing-off claim should rest on features additional to the registered design.
Is the Crocs position settled? It is contentious — it sits in tension with Mohan Lal and Carlsberg, and its reasoning has been seen as internally inconsistent, inviting appellate clarification.
Legislation referred to
- The Designs Act, 2000
- The Trade Marks Act, 1999