A Tread Pattern That Is Almost Identical To A "Suit Pattern" That Is Registered As A Design Would Nevertheless Be Considered A Trademark: HC Delhi

Why in news

The Delhi High Court found that registering a tread pattern as a design would not automatically prevent it from being treated as a "trade mark" within the meaning of the Trademarks Act, 1999 in a case involving the alleged copying of the tread pattern of tyres.

Facts of the case

In 2015, Apollo sued Pioneer Trading. After that, the parties entered into a Settlement Agreement, wherein Pioneer Trading agreed to refrain from using the aforementioned tread pattern and any others that are the same or similar to it. Apollo filed a lawsuit seeking a permanent injunction, alleging that Pioneer had broken the promise made in the Settlement Agreement. The High Court awarded the interim injunction in prima facie case for confirmation of the ex-parte ad interim injunction issued by this court in the plaintiff's favour on August 30, 2022, after granting the application.

Issues at hand

The issue before the court was whether Apollo Tyres Limited, which sued Pioneer Trading Corporation for allegedly breaking a 2018 settlement agreement, deserved to be excused from the case because it had submitted an application to register the suit pattern as a design under Section 5 of the Designs Act.

Observations made by the court 

The court acknowledged that its conclusion might differ slightly from that in Dart Industries and that its decision in Havells India Ltd would only apply to registered designs. There is no recognised design for the suit pattern. Despite having submitted a design registration application, the plaintiff then requested that the earlier application be cancelled "It was added.

Ruling of the court

Justice Shankar ruled that the Trade Marks Act's definitions alone must be used to determine whether a mark qualifies to be considered as a "trademark." "Section 2(d) of the Designs Act cannot be used to make a decision. if a mark qualifies for the Designs Act to consider it a "design." It is in that direction, not the other way around, that these two statutes function "The court stated.