~By Shivani Bhasin
Delhi High Court last week held that the plaintiff in a suit, where there are two causes of action—one for infringement of the registered design of the plaintiff under the Designs Act and the other regarding the passing off by the defendant under the Trademarks Act—they can be combined together in a single suit. The judgment was passed by a bench of five Judges comprising of Justices S Ravindra Bhat, Hima Kohli, Vipin Sanghi, Valmiki Mehta and Vibhu Bakhru.
The case was referred to the Special Bench of 5 Judges to reconsider the decision taken by the Three Judge Bench of the Delhi High Court in Mohan Lal v. Sona Paint, 2013 (55) PTC 61 (Del) (FB) on the aspect of the maintainability of a composite suit in relation to infringement of a registered design and for passing off, where the parties to the proceedings are the same. The majority Bench in the Mohan Lal judgment had held that since the cause of action for design infringement and passing off were distinct and the grounds for relief and defences available were also different, both these actions cannot be combined. The bench in the current case has overruled the Mohan Lal judgment.
The present suit out of which this reference arose was filed, complaining of infringement of a registered design as well as passing off (of the plaintiff’s trade dress) in respect of the bottle and overall appearance of the “Carslberg” mark. However, during the pendency of this reference, the parties came upon a mutually acceptable settlement, thereby mooting the said dispute.
Order II Rule 3 of the Code of Civil Procedure states joinder of two causes of action in a composite suit against the same defendant. The court in the current reference interpreted the general law on joinders to ascertain whether there would arise common questions of facts and law in the two causes of action of infringement of registered design and passing off so that these two causes of action can be joined under Order II Rule 3 of the Code. The court opined that opined that “if the substantial evidence of two causes of action would be common, then there can be a joinder of causes of action under Order II Rule 3 CPC”.
The court therefore after applying the reasoning in various cases had opined that where the claims of design infringement and passing off arise from the same transaction of sale, the two causes of action will have common questions of law and facts. Consequentially, the evidences of the two causes of action will also be common. In such a case, joining the two causes of action against the same defendant would avoid multiplicity of proceedings and would save the time, energy and money of the parties and also of the courts, the bench observed.
—India Legal Bureau