It can be said that the remedy of Passing off was once considered to be a “common law remedy” which was available only to trademarks. But, with the development in the scope of passing off and its addition to designs laws leads to various interesting further questions and discussions in the IP realm, which are being discussed by the Indian Courts; such as “Is Common law remedy of passing off available under the Design Act, 2000”, “Can a Composite suit be filed for Design Infringement (i.e. a statutory right under Designs Act) and Passing off of a Design”, and “filing a Passing off suit against a Design registrant”. In this Article, we shall make an attempt to understand the current judicial position on the aforesaid in India.

Is common law remedy of passing off available under the Designs Act, 2000.

It is of no doubt that the passing off is a common law remedy which can be used to enforce even the unregistered trademark rights. But earlier common law remedy of passing off was available to trademarks only and it was in a case titled “Smithkline Beecham Plc. and Others versus Hindustan Lever Limited and Others” reported as 2000 (52) DRJ 55, the Hon’ble Delhi High Court held that the action of Passing off a design is very well available in the Designs Act, 2000. While holding so, the Hon’ble Court rejected the plea of the Defendant therein that passing off cannot be made applicable to a case of design, and observed that the registered designs are set out in the Designs Act itself, whereas the law of passing off is carved out under the Common Law Rights and therefore, both are distinct and different rights arising from two different situations. In “Micolube India Limited and Others versus Rakesh Kumar and Others” reported as 199 (2013) DLT 740 the Delhi High Court considered the proposition that “Whether there can be availability of remedy of passing off in absence of express saving or preservation of common law of Designs Act, 2000 and more so when rights and remedies under the Act are statutory in nature?” It was held that remedy of passing off in so far as it relates to claim of protection for shape of articles is not available for purposes of enforcement of rights and remedies under the Design Act and such remedy is clearly absent under the Designs Act considering avowed objective of the Act i.e. to provide limited protection with no unnecessary extension. However, “If the passing off right is allowed to subsist irrespective of where the design is registered or expired would mean that Design Act is rendered otiose”. Therefore it was held that the remedy of the passing off would lie in case the competitor not merely copies the shape of the article existing in public domain but also copies the trade dress, get up or any other feature in which case proprietor can take action to the extent there is confusion as to source as indicated on the packaging of the article.

Composite suit of Design Infringement and Passing off

The legal position on this facet of law has undergone a tremendous change in light of the Judgments passed by the Delhi High Court. It was previously observed by a three Judge bench of Hon’ble High Court in Mohan Lal and Other versus Sona Paint & Hardwares and Others reported as 200 (2013) DLT 322 that a composite suit for infringement of a registered design and a Passing off action would not lie. The Court further observed that it is open for the Courts to however, try the suits together, if the two suits are filed in close proximity and/or it is of the view that there are aspects which are common to the two suits. The discretion of the court in this matter would necessarily be paramount. It will be relevant to note that while holding so the Hon’ble Court totally disregarded the Rule 3 of Order II of the Code of Civil Procedure, 1908 which permits for the joinder of cause of actions.

However, in the recent five Judges bench Judgment delivered by Delhi High Court, the position of law stands altered. It has been observed by the Hon’ble Court in Carlsberg Breweries A/S. vs. Som Distilleries and Breweries Ltd. reported as 256 (2019) DLT 1 that “one composite suit can be filed by a Plaintiff against the Defendant by joining two causes of action, one of infringement of the registered design of the Plaintiff and the second of the Defendant passing off its goods as that of the Plaintiff on account of the goods of the Defendant being fraudulent or obvious imitation i.e. identical or deceptively similar, to the goods of the Plaintiff.” Thus, this pronouncement by the High Court has overruled its earlier decision in Mohan Lal and Ors (supra).

Passing off suit against a Design Registrant

The Bombay High Court in Whirlpool of India Ltd. versus Videocon Industries Ltd. reported as 2014(60)PTC155(Bom) has upheld the scheme of Section 22 of the Designs Act which provides for actions against “any person” in this section. A registered design can be cancelled and/or registration set aside or registered proprietor can be restrained by an order of injunction from using such design either by Controller under Section 19 of Act or under Section 22 of Act by High Court in accordance with circumstances in a case/matter. If a registered proprietor does not apply his design to an article for sale or in connection with such sale, another registered proprietor cannot have recourse to section 22 of Act. Therefore, remedy under Section 22 of Act was only available where impugned design was being used. On a plain reading of Section 22 of Act and sub-sections (1) to (3) in particular, it is clearly indicated that, suit for infringement of a registered design lies against any person which would include a registered proprietor. Therefore, a registered proprietor of a design can under Section 22 of Act, file a suit for infringement against a registered proprietor of a design.

In the light of what has been discussed above, it is imperative to discuss the test of passing off and in this regard the Hon’ble Bombay High Court in Cello Household Products and Others versus Modware India and Others reported as 2017 (72) PTC 367 (Bom) has laid down the foreground for testing whether an action constitutes ‘Passing off’ or not. It was observed by the Hon’ble High Court that “in any Passing off action, the Plaintiff must satisfy all three probanda of so-called Classical Trinity: (i) reputation and goodwill in goods; (ii) misrepresentation by the Defendants; and (iii) damage. It is not a requirement of law in infringement or passing off in relation to a design that every single aspect must be entirely newly concocted and unknown to history of mankind. It is a general rule that “mosaicing” of prior art, i.e., combining selected features in different prior art publications, is not permissible when assessing whether an invention is new. Conversely, mosaicing is also no defence to a charge of infringement of a registered design. Mosaicing contemplates taking known integers or combinations and simply re-arranging them.”

Thus, an action against Design Passing off is to be construed in light of the above pronouncements.

Article was 1st published in Mondaq