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Composite suit for design infringement and passing off is valid: Delhi HC

A Special Bench of five judges of the Delhi High Court has held that had a composite suit in relation to the infringement of a registered design and passing off, where the parties are the same, is maintainable in a court of law.

The issue arose in Carlsberg Breweries vs Som Distilleries And Breweries Ltd (decision of Delhi High Court, on 14 December 2018, in C.S.(COMM) 690/2018 & I.A. No.11166/2018).

The suit from which the reference arose pertained to infringement of a registered design, and passing off (of the plaintiff‟s trade dress) in respect of the bottle and get up of the “Carslberg” mark. The contention was whether the two claims (for passing off and design infringement) could be combined in one suit. The outcome of this case hinged on the interpretation of an earlier decision of the same court, in Mohan Lal v. Sona Paint, 2013 (55) PTC 61 (Del) (FB). The single judge hearing the suit was of the view that the issue as decided in Mohan Lal needed re-examination. Eventually, the present Special Bench was constituted.

The majority in Mohan Lal had held that because the cause of action for a suit for infringement of a registered design is different from the cause of action for a passing off claim, two separate suits have to be filed. However, the court had also held that if the two suits were filed at the same time, or in close proximity, they may be tried together as some aspects may be common. Order I and Order 2 of the Code of Civil Procedure, 1908, were the subject of discussion in this case, pertaining to the Parties to Suit, and Frame of Suit, respectively.

In the present decision, the court found that both causes of action were against the same defendant or set of defendants, and they were in respect of the same acts and transactions. The only difference was that the relief claimed was different. The concern was whether the court’s understanding in Mohan Lal on the inconsistency and disparateness as to the relief being fundamental to the frame of the suit, would defeat a composite action.

In the case made out against the trial of the two claims as a composite suit, several arguments were made. The first issue was that design infringement was a statutory right, whereas passing off was a common law injury. The second issue was that the design infringement relied upon the sale of a design, whereas passing off was based on misrepresentation. Thirdly, the grounds of challenge were also different: in a design infringement suit, the design is expected to be novel and not based on any previous publication in India, whereas in a passing off suit, it must be shown that the shape or mark has developed substantial goodwill and reputation, and that the defendant has adopted a deceptively or confusingly similar design or shape. The fourth issue is that, similarly, the defences are entirely different: in a design infringement suit, defences include cancellation based on lack of novelty or existence of previous publication; and in a passing off suit, the defences include the lack of any distinctiveness (of the plaintiff‟s mark or design), prior user, bona fide use, or lack of plaintiff‟s goodwill. Finally, it was argued that although the same court has the jurisdiction to try a suit for design infringement and passing off, but when a defence of cancellation is claimed by the defendant in a design infringement suit, the suit must be transferred to a High Court of competent jurisdiction.

The court was not, however, convinced of these arguments against the joinder of plaint. It observed that “the basic facts which impel a plaintiff to approach a court, complaining of design infringement are the same as in the case of passing off. In such circumstances, it is inconceivable that a cause of action can be “split” in some manner and presented in different suits.”

The court also noted the utility of filing a composite suit from the point of view of the court itself, as such a suit offered “a bird’s eye view” on a common set of facts. For example, if the claim for design infringement was weak, and no interim relief was granted to the plaintiff, the same court could also review the same facts and evidence, and conclude if a case for passing off was made out, and whether any interim relief was available there. If this procedural facility were not available, the plaintiff would have had to wait for outcomes in two separate cases, potentially by two separate courts,who could, in turn, arrive at two different conclusions on the same set of facts and evidence. Not only would this incur additional time and cost on part of the parties as well as the courts, it could also run the risk of further litigation.