Plea Of 'Passing-Off' Can't Be Negated Solely On Ground That Plaintiff Had Asserted Trademark Rights In Registered Designs: Delhi High Court

The Delhi High Court has held that a plea of passing-off cannot be negated solely on the ground that the Plaintiff had asserted trademark rights in the registered designs. A composite suit seeking action in respect of both design infringement and passing off is maintainable.A single judge bench comprising Justice Jyoti Singh observed that while it is trite that asserting trademark rights in registered designs makes the designs vulnerable, however, where the elements of the design are used as a larger trade dress get-up, presentation through its packaging etc., the passing off claim shall lie.It observed,"A composite suit that joins two causes of action, one for infringement of a registered design and other for passing off the Plaintiff's goods, is maintainable...Even if the Plaintiff asserts a claim of trademark in a registered design, which makes a design vulnerable, it is open to the Plaintiff to plead that it has a goodwill and reputation and Defendant No.1, by misrepresentation is passing off its goods as that of the Plaintiff, thereby causing damage and injury and Defendant No.1 by fraudulent imitation of the article to which the registered design is applied is guilty of infringement of the said design."The observation was made in a suit for alleged infringement of design and passing off filed by Havells India (Plaintiff), which claims to have conceptualised a design for ceiling fans called the ENTICER, against Panasonic Life Solutions (Defendant) over its new series of ceiling fans called VENICE PRIME which, as per the Plaintiff was a blatant copy of Plaintiff's design.It was contended that the class of consumers purchasing the competing products were unwary customers of average intelligence and imperfect recollection. The customer base generally includes electricians, electric contractors, builders etc. who purchase these products from the retail shops and usually do not read the mark or label or the name of the manufacturer on the packaging of the product and owing to the high degree of visual similarity in the products of the Plaintiff and Defendant, the Plaintiff stated that the chances of confusion were extremely high. Thus, it was submitted by the Plaintiff that it was entitled to an interim injunction against Defendant.Per contra, the Defendant submitted that the claim of novelty by Plaintiff was vague and its design did not qualify as 'new or original' and it was merely an introduction or substitution of ordinary trade variants in a prior published design. It was also contended that the Plaintiff had claimed trademark rights in the registered designs. Thus, having claimed trademark in the suit designs, the design registration becomes vulnerable and is liable to be cancelled under Section 19(1)(e) of the Act. The Defendant relied on a Full Bench decision of the Delhi High Court in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., where it was held that if the registered design per se is used as a trademark, it can be cancelled. It was also contended that no monopoly can be claimed over a concept which is common place or exists in nature. In any event, it was contended that the Defendant's adoption of marble pattern was bona fide.The court first addressed the objection raised by the defendant that the Plaintiff had alleged infringement of designs under the Designs Act and has also asserted trademark rights in the registered designs as well as invoked the common law remedy of passing off, which are self-destructive pleas and make the Plaintiff's designs vulnerable. Here, the stand of the Plaintiff was that holder of a registered design can institute a suit for passing off and infringement of the registered design. Reliance was placed on Mohan Lal, Proprietor of Mourya Industries v. Sona Paint & Hardwares, 2013 SCC OnLine Del 1980 for the same.The court stated that a registered design per se if used as a trademark is liable for cancellation. However, where the elements of the design are not used as a trademark but a larger trade dress, get-up, presentation of the product through its packaging etc., action for passing off would lie, given that a passing off claim can include but is also wider than infringement of a trademark.The court found merit in the contention of Defendant that Plaintiff had sought to assert trademark rights in the registered designs, thereby making the designs vulnerable and entitling Defendant to take this as a defence. However, the question raised was whether irrespective of the said pleadings, Plaintiff could lay a claim of passing off, not restricted or limited to the registered design alone but in the overall get-up, trade dress etc. The court stated that –"It is settled law that parties can raise alternate and inconsistent pleas but should not be permitted to raise pleas which are mutually destructive of each other. Therefore, even if the Plaintiff asserts a claim of trademark in a registered design, which makes a design vulnerable, it is open to...

Plea Of 'Passing-Off' Can't Be Negated Solely On Ground That Plaintiff Had Asserted Trademark Rights In Registered Designs: Delhi High Court

Padmakshi Sharma

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