TESTING THE MAINTAINABILITY OF COMPOSITE SUIT OF ‘DESIGN INFRINGEMENT’ & ‘PASSING OFF’

Abstract

In the matter of: Carlsberg Breweries A/S V/s Som Distilleries & Breweries Ltd., High Court of Delhi (Full Bench), CS (COMM) 690/2018 & I.A. No. 11166/2018, Date of Decision: 14.12.2018, the reference that came for adjudication before the Full Bench of the High Court of Delhi was: Whether in one composite suit there can be joinder of two causes of action, one cause of action being of infringement by the defendant of a design of the plaintiff which is registered under the Designs Act, 2000 and the second cause of action being of passing off by the defendant of its goods/articles as that of the plaintiff? 

Before answering the reference, the Hon’ble Full Bench (of 5 Judges) of High Court of Delhi adverted to the ratio laid down in the matter of: Mohan Lal V/s Sona Paint, 2013 (55) PTC 61 (Del) (FB) where the following issues came before the Hon’ble Full Bench (of 3 Judges) of High Court of Delhi for adjudication:

1. Whether the suit for infringement of registered design is maintainable against another proprietor of the design under the Designs 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 Designs 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 Designs Act when the same is mutually inconsistent with that of remedy under the Designs Act, 2000?

Answering the above issues, the Hon’ble High Court (Full Bench) in the matter of Mohan Lal (Supra) observed as follows:

1. As per Section 2(d) of the Designs Act, 2000, “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 or property mark as defined in Section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of Section 2 of the Copyright Act, 1957.