A five judges bench of the High Court of Delhi has held that the causes of action for infringement of under the Designs Act and the for passing off under the Trademarks Act can be combined together in a single suit.
The five judges bench was acting on a reference which doubted the decision of a three judges bench in Mohan Lal vs Sona Paint that both the said causes of action cannot be combined.
Overruling Mohan Lal, the bench comprising Justices S Ravindra Bhat, Hima Kohli, Vipin Sanghi, Valmiki Mehta and Vibhu Bakhru held "Mohan Lal’s conclusions–that two causes of action, one for relief in respect of passing off, and other in respect of design infringement cannot be joined, ignoring the material provisions of Order II Rules 3 to 6, are erroneous; they are accordingly overruled”
The reference arose out of a suit instituted by Carlsberg Breweries,complaining of infringement of a registered design as well as passing off in respect of the bottle and overall get up of the “Carslberg” mark. The defendants objected to the joinder of both the causes of action ,relying on Mohan Lal. The single judge analysed parties' submissions and felt that the issue decided in Mohan Lal (supra) required a second look.
In Mohan Lal, the three judges bench held that cause of action for design infringement and passing off were distinct. The former arose under the Designs Act; the latter under the Trademarks Act. The grounds for relief, and the defences in both cases are wholly different. Hence, both these actions cannot be combined, held the majority in Mohan Lal.
The five judges bench framed the following issues :
(a) Is the court compelled by anything in law to reject a plaint for misjoinder, if two causes of action cannot be clubbed;(b) Are the two causes of action, i.e. a claim for design infringement and the other for passing off, so disparate or dissimilar that the court cannot try them together in one suit;
Regarding the first issue, the court ruled that that objection to misjoinder of causes of action is procedural and that rejection of a suit on that count cannot be resorted to. This conclusion was premised on the fact the Order II Rule III of the CPC enabled joinder of different causes of action. The Court noticed that the CPC has expressly specified the causes of action which cannot be joined together in Order II Rule IV. Therefore, in the absence of any express bar, it cannot be said that causes of action for design infringement and passing off cannot be combined.
"This court also notices that interestingly, the CPC visualizes- in Order II, (per Rules 4 and 5) what causes of action cannot be united in one suit. These are, if one may say so, the express bar or exceptions to the rule in Order II Rule 3. The other bar is the kind visualized in Section 80 CPC, a threshold procedural step without following which a suitor cannot enter the court",said the judgment authored by Justice Ravindra Bhat, to which Justices Hima Kohli, Vipin Sanghi and Vibhu Bhakru concurred.
Regarding the second issue, the Court held that both the actions are capable of being tried together."It is evident that there is a similarity between the nature of inferences and conclusions that are presented to the court, in the two causes of action.Significantly, the complaint of passing off as well as that of design infringement emanate from the same fact: sale or offer for sale, by the defendant of the rival product"
"The basic facts which impel a plaintiff to approach a court, complaining of design infringement are the same as in the case of passing off. In such circumstances, it is inconceivable that a cause of action can be “split” in some manner and presented in different suits", said the Court.
The Court further noted that a composite suit has the advantage of a bird‟s eye view by the court, with respect to a common set of facts: if for some reason, the claim for design infringement is prima facie weak and the plaintiff cannot secure interim relief, it does not have to face uncertainty of another action before another court; the same court can review the same facts.
The separate but concurring opinion by Justice Valmiki Mehta held: "On account of existence of common questions of law and fact between the two causes of action of infringement of a registered design and passing off, therefore to a considerable extent, the evidence of the two causes of action will be common. In such a situation to avoid multiplicity of proceedings there should take place joinder of the two causes of action of infringement of a registered design and passing off against the same defendant in one suit, otherwise multiplicity of proceedings will result in waste of time, money and energy of the parties and also of the courts"