India: Joint Suit Allowed For Design Infringement, Passing Off

Last Updated: 22 February 2019
Article by Omesh Puri and Dheeraj Kapoor

A special bench of five judges of Delhi High Court in its judgment in Carlsberg Breweries v Som Distilleries and Breweries Limited held that a composite suit that joins two causes of action – one for infringement of a registered design and the other for passing off – is maintainable.

This overrules the judgment of the three-judge bench of Delhi High Court in Mohan Lal v Sona Paint (2013), where it was held that these two actions cannot be combined in one suit. The majority view in this case was that the cause of action for a suit for infringement of a registered design is different from the cause of action on which a claim of passing off is premised and therefore two separate suits have to be filed.

In the Mohan Lal case, the reasoning was that a design infringement suit would be for the claim of monopoly based on registration, which is premised on uniqueness, newness and originality of the design while an action for passing off is founded on the use of the mark in the trade for sale of goods and for offering services, generation of reputation and goodwill, association of the mark to the plaintiff's goods and the misrepresentation sought to be created by the defendant by the use of the plaintiff's mark.

The special bench has observed that there is a factual overlap in both claims with respect to the presentation of the goods by the defendant as in order to establish infringement of a design, fraudulent imitation of the article by the defendant has to be proved, and to show passing off, it is necessary to establish that the defendant has misrepresented to the public (irrespective of intent) that its goods are that of the plaintiff.

As the definition of design excludes a trademark and for it to be a valid design it cannot be a trademark, the court also took a dichotomous view that the issue of presentation of the goods is one of a larger trade get up and not of a trademark in its stricter meaning, which otherwise precludes a design right. According to the court, to claim a design right, the subject matter must not be used as a trademark in its stricter meaning but may constitute the larger trade appearance of the goods in question which, in turn, could give rise to a passing off claim.

The court also noted that similar to a passing off action, a design infringement suit has to be instituted in a jurisdiction where the defendant is located. Consequently, a composite suit should be maintainable in the same cause of action against the same defendants, and the jurisdiction shown by the plaintiff on one cause of action, would be sufficient for the other.

The court, while interpreting the Supreme Court judgments of Dabur India Ltd v KR Industries (2008) and Dhodha House v SK Maingi (2006), observed that these judgments had not held that the court has no jurisdiction to try a composite suit encompassing two causes of action. The provisions of order II rule 3 of the Code of Civil Procedure entitle the court to entertain a composite suit and the only exception to this rule would be that the jurisdiction in respect of one cause of action is lacking.

The court also noted that in this case the actions for passing off and design infringement emanate from the same fact, the sale or offer for sale by the defendant of the rival products. The act of sale of the rival products impelled the plaintiff to approach the court for design infringement as well as passing off. The court noted that if such a situation arises then the cause of action cannot be "split". A composite suit gives a bird's eye view with respect to a common set of facts. In cases where the claim for design infringement is prima facie weak and the plaintiff cannot secure relief, the same court can still provide relief if on the basis of the same facts and evidence, a prima facie case for passing off is made out.

Justice Valmiki Mehta agreeing with the rest of the judges also delivered a separate opinion. He observed that since the sale of products by the defendant would be in question in both causes of action, a substantial part of the facts of the two actions would be the same as to whether the article being sold by the defendant of a particular design is or is not a fraudulent or obvious imitation of the article of the plaintiff. Thus, it was held that to a considerable extent, the evidence of the two causes of action would be common and therefore, in order to avoid multiplicity of proceedings, a joinder of the two causes of action should take place.

While the court's intent is understandable, what may have been overlooked in taking a dichotomous view on the larger trade get up is that if the most distinctive feature of the trade appearance is the design element then the claim of passing off may not survive if the design elements are taken away.

Originally published by India Business Law Journal

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions