By Amritha Vyas, Associate Advocate, Gajria and Co.
firstname.lastname@example.org | Nov 30, 2020
This question has been laid to rest by a Special Bench of five judges of the Delhi High Court in Carlsberg Breweries A/S. vs. Som Distilleries and Breweries Ltd. reported as 256 (2019) DLT 1. The Delhi High Court held that a composite suit in relation to the infringement of a registered design and passing off in relation to the same design, where the parties are the same, is maintainable in a court of law.
The primary issue before the court was whether a composite suit joining the two causes of action (one for infringement of a registered design and the other for passing off of the plaintiff’s goods) was maintainable?
The court allowed the joinder of the suits in the case on account of “existence of common questions of law and fact between the two causes of action” i.e. infringement of a registered design and passing off.
The present suit was filed, by Carlsberg complaining that Som Distilleries had adopted an imitation of its registered bottle design, trademark and trade dress to sell its Hunter beer which amounted to infringement of design and trademark, as well as passing off. Carlsberg also filed an injunction application to restrain Som from carrying out its infringing activities. The interim injunction application was considered by the court and it ruled in favour of Som.
Carlsberg’s claim was based on the distinctive dress up of its Tuborg beer bottle registered under the Design’s Act, 2000 and common law right in the distinctive shape of the bottle.
Som Distilleries responded by stating that two claims for passing off and relief for design infringement [as per Mohan Lal v Sona Paint, 2013 (55) PTC 61 (Del) (FB)], could not be combined in one suit.
In the case of Mohan Lal, the Full Bench formulated three questions to be determined; the third issue being:
“III. 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?”
The full bench held that “composite suit for infringement of a registered design and a passing off action would not lie”.
For design infringement, the test to be applied is of a knowledgeable person who knows the field and not of any customer. Further, design resides in the shape of the bottle without the label and when the designs of the bottles are compared there are marked differences.
There was no novelty in Carlsberg’s bottle design, as the shape, pull caps and labels are common to the trade over which no monopoly can be claimed.
Thus, the single bench in respect of Carlsberg was of the view that the issue as decided in Mohan Lal’s case needed re-examination, hence, the Special Bench was constituted.
The Special Bench considered two important issues from the present case:
1. If two causes of action cannot be clubbed, is the court compelled by law to reject a Plaint for misjoinder?
2. Are the two causes of action, i.e. a claim for design infringement and the other for passing off, so different that the court cannot try them together in one suit?
For the first issue, the court came to the conclusion that, for a composite suit with different causes of action, the court will only entertain if it has the jurisdiction of both subject matters. The Court also held that misjoinder by itself is not sufficient to entitle the Defendant to have the proceedings set aside or action dismissed.
In the second issue, the court suggested 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 the uncertainty of another action before another court. The same court can review the same facts and evidence. Also, if the facts that compel a Plaintiff to approach a court, complaining of design infringement are the same as passing off, then it is inconceivable that a cause of action can be split in some manner and presented in different suits.
The bench held that there is a significant difference between causes of action relating to design infringement and those based on passing off, that the factual overlap is with respect to presentation in the design and the novelty, and in a passing off action, the distinctiveness of the mark and association with the owner.
The bench came to a conclusion that to establish infringement of a design, fraudulent imitation has to be proved. Similarly, in a passing off action it is necessary for the Owner of the mark to establish that the Defendant has misrepresented to the public irrespective of the interest, that its goods are those of the Plaintiff and the resulting harm to its reputation is actionable.
It is, thus, possible to club two causes of action arising out of the same facts i.e. for infringement of a registered design and passing off against the same Defendant in one suit so as to avoid multiplicity of proceedings which will otherwise result in waste of time, money and energy of the parties and also that of the courts. Provisions for joinder of multiple causes of action, where the court has jurisdiction to entertain one cause of action and not the others, are also contained in Clause 14 of the Letters Patent of the High Courts of Bombay, Madras and Calcutta.
This provision is often invoked in cases of Trade Mark infringement where the court has jurisdiction to entertain the cause of action for infringement but not passing off as the products are not available within the jurisdiction of the court or the Defendant does not reside or carry on business within the jurisdiction of the court.