India: Is Passing Off Available Under Designs Act

Last Updated: 19 October 2012
Article by Kamakhya Srivastava

The Designs Act 2000 is a complete code in itself and protection under it is totally statutory in nature. The Designs Act gives monopoly protection in the strict sense of the word rather than mere protection against copying.

The significance of this case can be discerned by the fact that the order adjudicating on an interlocutory application in Micolube India Ltd vs. Rakesh Kumar & Ors. (I.A. No. 9537/2011 in CS (OS) No. 1446/2011; Delhi High Court) deemed it appropriate to refer the questions raised to a larger bench for consideration.

The suit, originally filed before the District Court for infringement of designs, was transferred to the High Court as the defendant challenged the validity of the Plaintiff's registered design. The defendant, who is in the same trade, challenged the impugned design on the grounds as given under section 19 of the Designs Act 2000. In addition to this, the defendant placed the design registered in its name and submitted that in view of the registration granted, the plaintiff is not entitled for any interim relief.

The two line of defences raised by the defendant and considered by the court were:

  1. Maintainability of suit for infringement or piracy of the registered design when both the plaintiff as well as the defendant is registered proprietor of the designs.
  2. Maintainability of Suit for Passing off along with suit for infringement of registered designs.

The court undertook an extensive examination of nature and scope of the Designs Act, 2000 (the Act), particularly with respect to Section 22 (Piracy of registered design) of the Act, to see whether the statutory right will hold good to fix on that an action for infringement of design is maintainable only when the plaintiff is a registered proprietor and the defendant is not. The court observed that a plain reading of subsections 1 & 2 of S.22 states that "any person" who contravenes S. 22(1) and for whom it shall not be lawful to apply the said design to an article must be the one in favour of whom the statute has not conferred rights by providing design registration. In other words a collective reading of S. 22(1) & (2) reveal that a registered proprietor does not fall within the ambit of any person and therefore cannot be held liable for infringement. Thus it is inconceivable as to how S. 22(3) can be pressed into service to invalidate the registration of design of such defendant who sets up the registration as a defence in a suit, which is not maintainable in the first place. Thus S 22(3) will operate only to examine the validity of the design in infringement proceedings as a defence and not beyond the same.

In view of the aforementioned discussion, on the plain reading of S.22 as well as considering the purely statutory nature of the proceedings under the Designs Act, it becomes clear that no suit for infringement is maintainable against another registered proprietor of the design as "any person" under S.22 has to be other than the registered proprietor

On the defendant's second line of defence i.e. evaluation as to whether there exists any remedy of passing off under the Designs Act, the court observed upon testing the Design law on the principals laid down by Hon'ble Supreme Court relating to saving of common law and the rights under the statute prevailing over common law unless it is saved expressly by a statute, that the Designs Act does not expressly save the principles of common law of passing off. The commentaries relating to design law explicitly stating that remedy under Design law is purely statutory in nature and the observations of the Hon'ble Supreme Court reveal that the statutory remedies exclude common law until and unless saved expressly, and the Designs Act cannot be said to be saving the principles of common law of passing off and therefore the passing off remedy cannot be made available to a party enforcing the Designs right in the Designs Act, 2000.

Finally, the court deemed it appropriate to refer the following questions to the larger bench:

  1. Whether the suit for infringement of registered Design is maintainable against another registered proprietor of the design under the Design Act, 2000?
  2. Whether there can be an availability of remedy of passing off in absence of express saving or preservation of the common law by the Design Act, 2000 and more so when the rights and remedies under the Act are statutory in nature?
  3. Whether the conception of passing off as available under the Trade Marks can be joined with the action under the Design Act when the same is mutually inconsistent with that of remedy under the Design Act, 2000?

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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