Admissibility of a composite suit for Design Infringement and Passing Off - Synopsis
Parul Madaan 6 Jan 2020

Admissibility of a composite suit for Design Infringement and Passing Off- Carlsberg Breweries vs Som Distilleries And Breweries Ltd

A case was filed by Carlsberg Breweries against Som Distilleries and Breweries for infringing its design of TURBO beer bottles by the latter’s HUNTER’ beer bottles. The defendant objected to the frame of the suit, pointing out that the two claims (for passing off and relief concerning the infringement of the design) could not be merged in one suit, according to Mohan Lal Proprietor of Mourya Indusries v. Sona Paint and Hardwares. The problem was sent for review to the Delhi High Court, which constitute a special bench for the decision on the subject.

The question before the court was whether two causes of action could be joined in one consolidated suit, one of which was the defendant's infringement of a design of the plaintiff registered design under the Designs Act, 2000, and the other second cause of action being of passing off by the defendant of his/its goods/articles as that of the plaintiff.

Many arguments have been made in the case against trial of the two claims as a composite suit. Firstly, the  issue was that the infringement of design was a constitutional right, while passing off was a common law injury. The second issue was that the sale of a design was the basis of the design infringement, whereas the passing off was based on misrepresentation. Thirdly, the reasons for the challenge were also different in a design infringement suit, the design is expected to be novel and not based on any previous publication in India, whereas in a passing suit, it must be demonstrated that the shape or mark has developed substantial goodwill and reputation and that the defendant has adopted a deceptive approach. The fourth issue is that, similarly, the defenses are completely different in a design infringement suit, defenses include cancelation based on lack of novelty or the existence of previous publication; and in a passing-off suit, defenses include the lack of any distinctive features, prior user, bona fide use.

The majority in Mohan Lal’s case had claimed that since the cause of action for a registered design infringement suit is different from the cause of action for a passing off lawsuit, two separate suits must be filed.  But this case had failed to recognize that the facts dependent on the ratio of a case. The court also dismissed the second ground of the Mohan Lal judgment which claimed that a claim of infringement was fundamentally different from that of passing off ; and since there were no common question of law and factual issues between the two cases, it was not possible to file a composite suit with such claims.

The court applied the above decision to the facts of the present case and held that where the charges of infringement of a registered design and passing off emerge from the same sales transaction, the two causes of action would have common law and factual issues. Therefore, there will also be specific proof of the two causes of action. In such a case, the two cause of action for the infringement of a registered design should be combined in order to avoid multiplicity of proceedings and the same defendant should be included in one action, otherwise multiplicity of proceedings would result in a waste of time, money and energy on the part of the parties and also of the courts.

The judgment also affirmed that if the said design does not act as a trademark and if the remedy for passing off is asserted for infringement of trademark or any other similar infringement , remedy for passing off for a registered design can be brought. With the ever-increasing cost of Intellectual property litigation, the ruling on court sustainability will provide the plaintiffs with massive relief. Composite suits for infringement of design and passing off will also promote convenient resolution of such disputes.

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