The question of availing the remedy of passing off for a registered design has been cleared post Delhi High Court’s recent judgement, ‘Carlsberg Breweries A/S. vs. Som Distilleries and Breweries Ltd.[1]’, dated December 14, 2018, wherein the 5-judge Bench reconsidered the maintainability of a composite suit filed for infringement of a registered design and for passing off.

Facts:

Carlsberg instituted a composite suit for design infringement and passing off of their ‘TURBO’ beer bottles against Som Distilleries for manufacturing ‘HUNTER’ beer bottles with numerous similar features. The Single Judge in this matter refused to grant an interim injunction, by applying the case ‘Micolube India Limited vs. Rakesh Trading’[2], wherein it was held that a composite suit for design infringement and passing off was not maintainable. The court in the Micolube case had relied on the decision in ‘Dabur India Ltd vs. K.R. Industries’[3]. The counsels for the plaintiff in the Carlsberg case argued that the decision of the Dabur case was erroneous and that the Micolube judgement was per incuriam. The Single Judge also noted that the court in the Micolube case failed to apply Order II, Rule 3 of the Code of Civil Procedure, 1908(CPC), which allows for joinder of multiple causes of action in certain cases, and hence the decision needed reconsideration by a larger bench.

Judgement by the Special Bench:

The Special Bench came to the conclusion that “there is no per se or threshold bar to maintainability of suits, on the perceived ground of misjoinder of causes of action.” The court further went on to state that an objection to misjoinder of causes of action is merely procedural in nature and that it could not form the basis of a rejection of a suit.

Revisiting the Dabur case, the Special Bench stated, “Plainly, what the court had in mind was a situation dealing with joinder of causes of action, one of which could not be tried because the court lacked jurisdiction. That however, did not mean that per se the court had no jurisdiction to try a composite suit encompassing two causes of action.”

The cause of action for a design infringement significantly differed from that of passing off since lack of novelty has to be proven in the former and establishment of plaintiff’s goodwill and deceptive similarity of defendant’s products to those of the plaintiff has to be proven in the latter. The cause of action arose from the same fact, that is “sale or offer for sale, by the defendant of the rival product.” Justice Valmiki Mehta clarified on this front by observing that since the two causes of action arose from the same transaction of sale, it would lead to common question of law and fact and hence, would fall under the ambit of Order II, Rule 3 of the CPC. He further stated that joinder of causes of action ought to be done in these cases in order to avoid multiplicity of such proceedings.

The Special Bench in this case clearly justifies the maintainability of composite suits, but it is still not clear if one can file separate suits for different remedies as was done in the case of ‘Greenlight Planet India Pvt. Ltd vs. Gee Lighting Technology’[4], wherein the plaintiff had instituted a suit for permanent injunction restraining passing off of its goods under the Trade Mark ‘GEE-LITE’. Prior to the suit for permanent injunction, the plaintiff had also filed a suit for design infringement. The Delhi High Court in this case opined that “ a cause of action for an infringement suit under the Design Act, 2000 is different/separate/distinct from the cause of action for a passing off suit of a Trade Mark, Trade Name and Domain Name”, and thereby concluded that Order II, Rule 2 of the CPC, which provided that where the plaintiff omits to sue or relinquish a part of their claim, he shall not afterwards sue in respect of the portion so omitted or relinquished, would not apply to the facts of this case.

Further, the issue which arose post the Greenlight case was that the Bench in that case had based its reasoning on Section 19 of the Design Act, 2000 which provides for grounds for cancellation of designs and stated that since use of a registered design as a Trade mark is not given as one such ground, the product could be protected under both IP regimes. The Bench thus stated that once a design was registered, it became a functional Trade Mark.

However, on a clearer reading of Section 19 of the Design Act,2000, it is provided that if the said design is not a design as defined under clause (d) of Section 2 of the Design Act, 2000, the registration of the said design can be cancelled. Section 2(d) of the Design Act,2000 certainly does not include any Trade Mark as per Section 2(1)(v) of the Trade Marks Act, 1958. Therefore, the interpretation of Section 19 of the Design Act, 2000 will require cancellation of registration of design once it has begun functioning as a Trade Mark.

This leads us to the question on which this article revolves, that is, if the registration of a design has to be cancelled once it has begun functioning as a Trade Mark, can one claim the remedy of passing of a registered design?

The Delhi High Court in the Greenlight case has simply applied Order II, Rule 2 of the CPC and did not analyze the issue of Design registration. However, in the Carlsberg case, the 5-judge Special Bench considered the afore-mentioned provisions and issue and answered the following, “… if a registered design per se is used as a Trade Mark, it apparently can be cancelled. The larger legal formulation in Mohal Lal (supra), that a passing off action, i.e. one which is not limited or restricted to Trade Mark use alone, but the overall get up or “Trade Dress” however, is correct; as long as the element of design are not used as a Trade Mark, but a larger Trade Dress get up, presentation of the product through its packaging and so on, given that a “passing off” claim can include but is also broader than infringement of a Trade Mark, the cause of action against such use lies.”

Therefore, to sum up the latest judgement of the 5-judge Special Bench of the Delhi High Court in the case of ‘Carlsberg Breweries A/S. vs. Som Distilleries and Breweries Ltd.’, we get the following two takeaways,

  1. A composite suit filed for design infringement and passing off is maintainable.
  2. Remedy for passing off for a registered design can be brought if the said design is not functioning as a Trade Mark and if the remedy of passing off is claimed for Trade Dress infringement or any other similar infringement.