Composite suit for design infringement and passing off is maintainable, Delhi High Court
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Composite suit for design infringement and passing off is maintainable, Delhi High Court

Aditi Singh

Overruling the verdict of a three-judge bench in Mohan Lal v. Sona Paint, the Delhi High Court has held that two causes of action – one for relief in respect of passing off, and another in respect of design infringement under the Designs Act, 2000 – can be joined and tried in a composite suit.

Mohan Lal’s conclusions–that two causes of action, one for relief in respect of passing off, and other in respect of design infringement cannot be joined, ignoring the material provisions of Order II Rules 3 to 6, are erroneous; they are accordingly overruled”, the Court has held.

The judgment was delivered by a five-judge Bench of the High Court comprising Justices S Ravindra Bhat, Hima Kohli, Vipin Sanghi, Valmiki Mehta and Vibhu Bakhru in a reference made by a Single Judge bench in light of Order II Rule 3 of the Civil Procedure Code, 1908.

The draft judgment was authored by Justice Valmiki Mehta. While the other four judges concurred with his opinion, they added additional reasons for arriving at their conclusion.

The reference arose in suit alleging infringement of the registered design as well as passing off of the plaintiff Carlsberg’s trade dress and overall get up of the “Carlsberg” mark by defendant, Som Distilleries and Breweries.

After hearing the parties, the Bench framed two questions for consideration:

(a) Is the court compelled by anything in law to reject a plaint for misjoinder, if two causes of action cannot be clubbed;

(b) Are the two causes of action, i.e. a claim for design infringement and the other for passing off, so disparate or dissimilar that the court cannot try them together in one suit

The Court stated that under the Civil Procedure Code, there is no threshold bar on maintainability of suits on the perceived ground of mis-joinder of causes of action, thus preventing the court from trying a composite suit encompassing two causes of action.

What causes of action can be united in one suit have already been visualized under Order II Rule 3 of the CPC, and any bar, if so, is expressly provided for, the Court went on to note.

These are, if one may say so, the express bar or exceptions to the rule in Order II Rule 3. The other bar is the kind visualized in Section 80 CPC, a threshold procedural step without following which a suitor cannot enter the court.”

Thus, the Court answered the first question, holding that the conclusion in Mohan Lal, that two causes of action, one for relief in respect of passing off, and other in respect of design infringement cannot be joined, was erroneous.

As regards the second question, the Court noted that both causes of action, are against the same defendants, in respect of the same set of acts and transaction, with the only difference being that the relief claimed is different.

“In such circumstances, it is inconceivable that a cause of action can be “split” in some manner and presented in different suits.”

Observing that a composite suit gives the advantage of a “bird’s eye view” to the court, with respect to a common set of facts, the Court noted that if the claim for design infringement is found to be prima facie weak and interim relief is not secured, the plaintiff need not face uncertainty of another action before another court.

The same court can review the same facts and evidence, and conclude pendente-lite if prima facie passing off is made out,  necessitating interim relief, the Court explains.

Justice Mehta notes in his judgment that the crux of the matter for joinder of causes of action under Order II Rule 3 CPC is to see if common questions of law and facts arise in two separate causes of action, whereupon there can be joinder of causes of action in one composite suit which joins two causes of action.

Finding that the same was proved in the present case, Mehta J held,

“On account of the existence of common questions of law and fact between the two causes of action of infringement of a registered design and passing off, therefore to a considerable extent, the evidence of the two causes of action will be common.

In such a situation to avoid multiplicity of proceedings there should take place joinder of the two causes of action of infringement of a registered design and passing off against the same defendant in one suit, otherwise multiplicity of proceedings will result in waste of time, money and energy of the parties and also of the courts.”

Ultimately answering the reference made by the Single Judge Bench, the judgment states,

“…a composite suit that joins two causes of action – one for infringement of a registered design and the other for passing off, of the plaintiff’s goods – is maintainable.”

Carlsberg Breweries was represented by Senior Advocate Sudhir Chandra with Advocates CA Brijesh, Peeyoosh Kalra, V Mohini and Udayvir Rana.

Som Distilleries and Breweries was represented by Advocates Kapil Wadhwa, Devyani Nath, Kaveri Jain and Deepika Pokharia. 

The Court was assisted by Advocate Dinesh Kumar Sharma. 

Read the Judgment:

Carlsberg-Breweries-vs-Som-Distilleries-watermark.pdf
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