India: Design Infringement Action & Passing Off: Deconstructing The Overlap

Co-authored by Meghana, Legal Intern, LAW CENTRE-1, FACULTY OF LAW, DU

The genesis of Intellectual Property Rights can be said to lie in the Eighth commandment: "Thou shalt not steal". In Walter v Lane8 , Lord Halsbury began with saying, "I should very much regret it if I were compelled to come to a conclusion that the state of the law permitted one man to make a profit and to appropriate to himself what has been produced by the labour, skill and capital of another.... It will be observed that it is product of the labour, skill and capital of one which must not be appropriated by another, not the elements, the raw material, if one may use the expression, upon which the labour and skill and capital of the first have been expended."

The arena of IPR has seen a continuous development since its inception, with well outlined demarcations. But are these demarcations absolute? The answer is no, as considerable overlap can be witnessed in these otherwise differentiated forms of property rights.

One of the most discussed intersections has been between design infringement action and passing off; and aptness of their maintainability with respect to a registered design that is now acting as a trademark by virtue of use and reputation, in one single suit. There have been attempts to resolve these issues but the results have been not so clear, and the issues continue to be worked upon and revisited with developments in judicial landscape. Such developments have been witnessed even in India over a plethora of case laws.

To begin with, let's consider the relevant provisions pertaining to the aforementioned actions. According to Section 2(zb) of the Trade Marks Act, 'trade mark' means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.

Section 2(d) of the Designs Act 2000, contemplates the definition of design. 'Design' means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of Section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957).

Both the definitions of 'Designs' and 'Trademarks' are inclusive of shapes of goods. However, the definition of designs is categorically exclusive of Trademarks. Now what happens when a registered design starts acting as a trademark, by virtue of use, reputation and goodwill?

One of the older judgments where the maintainability of both design infringement and passing off in the same suit, was the Micolube case9 wherein the design of mirror frames of two rival companies was in question. The question of maintainability of remedies of passing off and design infringement comprised one of the issues and it was answered in the following manner:

In our view, since the cause of action for bringing the two suits is different, separate suits would have to be filed; though if filed at the same time or in close proximity they may be tried together as there may be some aspects which may be common.

The underlying principle would thus be that a plaintiff should exhaust all reliefs in respect of a cause of action except where leave of court is obtained and not that different causes be combined in one suit even if they arise from the same transaction.

The policy of law is to prevent multiplicity of suits and to protect a person from being vexed twice qua the same cause. Therefore, if the causes of action are different, then they cannot be combined in one suit.

...Thus, the cause of action in the infringement suit under the Designs Act could be different from that which is obtained in a passing off action. The fundamental edifice of a suit for infringement under the Designs Act would be the claim of monopoly based on its registration, which is premised on uniqueness, newness and originality of the design. Whereas, the action for passing off is founded on the use of the mark in the trade for sale of goods and/or for offering service; the generation of reputation and goodwill as a consequences of the same; the association of the mark to the goods sold or services offered by the plaintiff and the misrepresentation sought to be created by the defendant by use of the plaintiff's mark or a mark which is deceptively similar, so as to portray that the goods sold or the services offered by him originate or have their source in the plaintiff. It is trite to say that different causes of action cannot be combined in one suit.

However, this stance was not complied with in the later judgments and was revisited in the case of Cello v Modware10 wherein the design of two bottles was in question and both the design infringement and passing off actions were maintained simultaneously in the same suit. The relevant ratio of the case was:

The tests for the reliefs in infringement and passing off often overlap. Similarity, in the two Products, is undoubtedly common ground. If one should find, therefore, that Modware's product is confusingly and deceptively similar to that of Cello's registered design, ordinarily an injunction on the cause of action in infringement should follow. The defenses are few and well-known. These would include saying that the design is known to the prior art; there is prior publication or, perhaps, that the plaintiff's only claim, correctly read, is neither of novelty nor originality but of merely cobbling together several pre-existing known designs, or mosaicing. The passing off alleged is not only of the bottle itself but also of the packaging.

Herein, the three fundamental issues that underline in cases of passing off i.e. - reputation and goodwill, misrepresentation and damage, was delved upon while acknowledging that "passing off is an action of deceit".

The remedy of passing off, being a common law remedy was dealt with under separate considerations in the same suit. The infringement of the design of the bottle was sought to be remedied under provisions of the Designs Act 2000, while the considerations with respect to the action of passing off was misrepresentation, reputation and goodwill of the brand in question.

In another major development in the case of Carlsberg v Som Distilleries11 , on the issue of composite suits justifying same suits for infringement and passing off, it was held that:

The Micolube court appears to have missed Order II Rule 3 of the Code of Civil Procedure (CPC) which clearly allows for combining different causes of action. It states in pertinent part: "3. Joinder of causes of action- (1) Save as otherwise provided, a plaintiff may unite in the same suit several causes of action against the same defendant, or the same defendants jointly; and any plaintiffs having causes of action in which they are jointly interested against the same defendant or the same defendants jointly may unite such causes of action in the same suit."

With these pronouncements, it is abundantly clear that passing off and design infringement constitutes two separate reliefs and may be tagged together for consideration in the same suit. However, it is well-settled and undisputed that a design can only be treated as a trademark and be representative of source of origin of a product, once it has been used overtime and attained reputation and goodwill in the market by virtue of that design.

Footnotes

8. [1900] AC 539

9. M/S. Micolube India Ltd. vs Maggon Auto Centre & Anr.

10. SUIT(L)NO.48 OF 2017

11. I.A. No.10972/2015 in C.S. (OS) No.1485/2015

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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