*
IN THE
HIGH COURT OF DELHI AT NEW DELHI
+TR. P.
(C) No.93/2018
Judgment reserved on : 02.08.2018
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Date of decision : 11.06.2019
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ANURAG
SANGHI & ANR.
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Petitioners
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Through:
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Mr.
M.K. Miglani, Adv. with
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Mr.
Samreen Khan, Adv.
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versus
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M/S
KNITPRO INTERNATIONAL
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Respondent
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Through:
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Mr. Ajay Amitabh Suman, Adv.
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And
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+
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TR. P.
(C) No.94/2018
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ANURAG
SANGHI & ANR.
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.....
Petitioners
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Through:
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Mr.
M.K. Miglani, Adv. with
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Mr.
Samreen Khan, Adv.
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versus
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M/S
KNITPRO INTERNATIONAL
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Respondent
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Through:
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Mr. Ajay Amitabh Suman, Adv.
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CORAM:
HON'BLE MS. JUSTICE ANU MALHOTRA
JUDGMENT
ANU MALHOTRA, J.
1.
The petitioners Mr. Anurag Sanghi
and M/s Sanghi International vide Transfer Petitions (C) 93/2018 & 94/2018
seek the withdrawal of the suit titled as Knitpro International Vs. Anurag
TRP (C) 93 & 94/2017 Page 1
of 27
Sanghi bearing TM No.178/2017 & TM
No.179/2017 both pending in the Court of the ADJ-04, PHC, New
Delhi to this Court and seek that the same be tried with the suit titled as Knitpro
International Vs. Anurag Sanghi & Anr. bearing CS
(COMM) NO.867/2018 already transferred to this Court. Since
the issue involved in both the transfer petitions is the same, the two
petitions are being disposed of by the common order.
2.
The proceedings in CS (COMM)
867/2018 which suit bearing No. CS 918/2017 was instituted before the learned
Court of the ADJ at Patiala House Court, New Delhi was transferred in terms of
Section 22(4) of the Designs Act, 2000 to this Court vide order dated
12.04.2018 of the learned ADJ-04, PHC, New Delhi in view of the defence taken
by the defendants to that suit i.e. the present petitioners herein which suit
had been filed by the respondent to the present petitions i.e. M/s. Knitpro International
as plaintiff thereof, with the defendants in the said suit i.e. the present
petitioners having contended that the Court of the ADJ did not have any
jurisdiction to consider the prayer for the cancellation of the design of the
plaintiff of CS No.918/2017 i.e. the respondent herein.
3.
The said suit was re-numbered as
CS (COMM)867/2018 on receipt in this Court. The proceedings dated 11.05.2018 in
CS (COMM) 867/2018 read to the effect:
“I am
informed by the learned counsel for the parties that three suits have been
filed before the District Courts and all the three suits have to be heard by
this Court in view of the judgment of the Full Bench of this Court in
Mohan Lal, Proprietor of Mourya Industries v. Sona
TRP (C) 93 & 94/2017 Page 2
of 27
Paint & Hardwares, AIR 2013 Delhi 143. The present suit is one of them and other suits are awaited.
List on 23.07.2018.”
4.
The avowed contention of the
petitioners herein arrayed as the defendants to the suit CS (COMM) 867/2018 is
to the effect that in this suit CS (COMM) 867/2018, the respondent herein as
plaintiff thereof has alleged the piracy of its registered designs by the
petitioners herein and has sought to restrain the petitioners from selling
LYKKE knitting needles having certain design features which the respondent
herein are alleged are imitation of the respondent’s
SYMFONIE knitting needles and also violate terms of compromise arrived
at between the parties in an earlier suit bearing No.CS(OS) No.2142/2015 as
decreed by this Court.
5.
It has been further submitted on
behalf of the petitioners herein that on 12.09.2017 the respondent to the
present transfer petitions filed two more suits bearing TM No.178/2017 titled
as M/s Knitpro International vs. Anurag Sanghi & Another (i.e. for passing off
suits) alleging cause of action for
passing off by the petitioners herein involving the very same knitting needles
as involved in the designs suit and that the respondent herein filed another
suit bearing TM No.179/2017 titled as M/s
Knitpro International vs. Anurag Sanghi & another (i.e. copyright suit) alleging infringement of copyright in
the industrial drawings of one of the
knitting needles as being the subject matter of the Designs suit and of the
passing off suit.
TRP (C) 93 & 94/2017 Page 3
of 27
6.
Copies of the plaint of the said
suits bearing TM No.178/2017 & TM No.179/2017 as also of CS (COMM)867/2018
are placed on record.
7.
It has thus been submitted by the petitioners that
in view of the
verdict of the Hon’ble Full Bench of this Court (comprising three Hon’ble
Judges) in Mohan Lal, Proprietor of Mourya Industries v.
Sona Paint & Hardwares, AIR 2013 Delhi 143 decided on 15.05.2013 where the suit for infringement of designs and suit
for passing off had been filed in close proximity with each other, they may be
tried together. The petitioners have also submitted that it would be in the
interest of justice if the three suits are tried together by this Court in as
much as they are based on the same cause of action arising out of the same set
of facts and between the same parties and that it would also save judicial time
and costs if the three suits are tried together.
8.
The respondent has vehemently
opposed the prayer made by the petitioners. It is essential to observe,
however, that in the proceedings in CS (COMM) 867/2018 which is the suit
alleging infringement of the designs in the needles as filed by the respondent,
the counsel for the parties that would include the
counsel for the plaintiff of CS (COMM)867/2018 i.e. the counsel for the respondent
to the present petition had informed the learned Court of three suits
having been filed before the
District Court and that all the three suits had to
be heard by this Court in view of the judgment of the Hon’ble Full Bench
of this Court in Mohan Lal (supra) and that CS (COMM) 867/2018 was one of them
and that the others were awaited.
TRP (C) 93 & 94/2017 Page 4
of 27
Furthermore,
in TR.P (C) 15/2015 vide proceedings dated 30.07.2015
it is
indicated that the said transfer petition was filed by the present
petitioners
against the same respondent on whose behalf, the counsel
present
had accepted notice and submitted that he had no objection if
the suit
bearing TM No.170/2015 that was pending in the Court of
ADJ, PHC,
New Delhi was transferred to this Court to be tried with
CS (OS) 2142/2015
between the same
parties in respect of the
infringement
of the ‘design’ pending in this Court. It has also been
observed
by this Court vide the said order dated 30.07.2015 to the
effect:
“Both
suits have to be tried together in view of the law laid down in Mohan Lal vs. Sona Paint & Hardware,
2013 (55) PTC 61 (Del) (FB).
Accordingly, file of suit bearing TM No.170/2015 pending in the court of
Ms. Vrinda Kumari, Learned Additional District Judge, Patiala House Courts, New
Delhi is withdrawn and transferred to this Court. The said suit on receipt by
transfer be tried with CS (OS) 2142/2015.
The
petition is disposed of in above terms.”
9.
The contention raised on behalf
of the respondent is to the effect that there is a distinction in the causes of
action in the suits filed, i.e.
• seeking the permanent injunction against piracy of registered designs;
• seeking
an action against passing off suit;
• and seeking action for infringement of copyright in industrial drawings
of the products.
TRP (C) 93 & 94/2017 Page 5
of 27
10.
It has been denied on behalf of
the respondent that the products in the three suits i.e. TM No.178/2017, TM
No.179/2017 & CS No.918/2017 now renumbered as CS (COMM) 867/2018 are the
same and it has been submitted that the products in the copyright suit at one
hand and designs and trademarks suit on the other hand are not identical and
that CS No.918/2017 i.e. CS (COMM) 867/2018 pertains to the infringement of
design and that Suit No.178/2017 pertains to the passing off and Suit
No.179/2017 pertains to the infringement of copyright in the industrial design
and that whereas the suit for infringement of designs had been transferred to
this Court by virtue of operation of Section 22 (4) of the Designs Act, 2000 no
such provisions are available under the Trademark Act and Copyright Act and
different provisions of law are applicable in suits pertaining to infringement
of designs, infringement of copyright in industrial drawings and passing off
and that the defence available in the said three suits are different.
11.
The respondent has further
submitted that the questions of law involved in all the three suits are also
different and that thus the transfer petitions are liable to be rejected. It
has also been submitted on behalf of the respondent whilst placing reliance on
the observations
of the Hon’ble Full Bench of this Court (comprising three Hon’ble
Judges) in Mohan Lal (supra) to para 33.3 to the effect:
“We are also of the view that a composite
suit for infringement of a
registered design and a passing off action would not lie. The Court could,
however, try the suits together, if
the two suits are filed in close proximity and/or it is of the view that there
are aspects
TRP (C) 93 & 94/2017 Page 6
of 27
which are
common to the two suits. The discretion of the court in this matter would
necessarily be paramount.”
12.
The chart submitted by the
petitioners of the pending suits shows the subject matter, date of institution,
status of the suits and products involved in the suits with the respondent’s
admission in
relation
thereto that the suits are to be tried together to the effect:
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CHART OF PENDING SUITS
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T.R.P. (C) 93/2018 AND 94/2018
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Suit No.
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Subject matter
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Date of institution
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Status
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C.S.
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Piracy of
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23.08.2017
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Transferred to this
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918/2018
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registered design
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Hon’ble Court,
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renumbered as C.S.
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(COMM) 867 of 2018
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T.M.178/
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Passing off
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12.09.2017
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Subject matter of
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2017
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TR.P. (C.) 93 of 2018
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T.M.
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Infringement of
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12.09.2017
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Subject matter of
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179/2017
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copyright
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TR.P. (C.) 94 of 2018
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IDENTITY
OF PRODUCT & CAUSE OF ACTION
i.
C.S. 918/2017
Product involved:-
LYKKE’s Fixed Circular
Knitting
Needle, interchangeable Knitting Needle & Cable thereof & Single
Point Knitting Needle.
25. That the impugned designs are identical and/or
a substantial and fraudulent imitation of the Plaintiffs said registered
designs. The defendants have copied all the above mentioned designs of the
plaintiff. The Defendants are applying the impugned design on their
TRP (C) 93 & 94/2017 Page 7
of 27
impugned goods for the purpose of sale. The
defendants are also publishing, exposing or causing to be published or exposed
for sale their impugned goods bearing the impugned design and are otherwise so
using it in relation thereto in the course of trade. Comparison of defendants'
impugned designs applied on the impugned goods and corresponding registered
design and pending application of the plaintiff is produced herein-below:
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Comparison of
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Plaintiffs Registered
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Defendant's
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Plaintiff’s product A
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Design No. 249067
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Impugned Design
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and Defendants’
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(KNITPRO
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FCN-US7)
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product D
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BAMBOO
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FCN - US15)
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A
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D
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TRP (C) 93 & 94/2017
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Page 8 of 27
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Comparison
of
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Plaintiffs
Registered
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Defendant's
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Plaintiff’s
product
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Design
No. 249067
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Impugned Design
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Al and
Defendants'
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(KNITPRO
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product
DI
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BAMBOO ICN -
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(LYKKE ICN - US7)
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US7)
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Front View
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A1 DI
TRP (C) 93 & 94/2017 Page 9
of 27
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Comparison
of
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Plaintiffs
Registered
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Defendant's
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Plaintiff’s
product
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Design
No. 240967
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Impugned
Design
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AZ and
Defendants'
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(IOUTPRO
CABLE)
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(LYKKE
CABLE)
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product
D2
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D2
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Comparison
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of
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Plaintiff'
Registered
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Defendant's
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Plaintiff’s
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product
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Design No.
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249066
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impugned
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Design
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B and
Defendants'
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(KNITPRO
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(LYKKE
ICN US15)
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product
E
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BAMBOO
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ICN -
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US15)
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B
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E
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TRP (C) 93 & 94/2017
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Page 10 of 27
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Comparison
of
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Plaintiff’s
Registered
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Defendant’s
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Plaintiff’s
product C
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Design
No.263053
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Impugned
Design
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and
Defendants'
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(KNITPRO
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(LYKKE
STN- US10
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product
F
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BAMBOO
STN – US
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10)
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C
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F
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TRP (C) 93 & 94/2017
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Page 11 of 27
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Cause of
Action :-
“36. The cause of action for the present suit has
been set out in the preceding paras. The cause of action for the present suit
has for the first time arose on the plaintiff become aware of the defendants'
adoption and use of impugned designs when they came across the impugned LYKKE
products of the defendants bearing the impugned
TRP (C) 93 & 94/2017 Page 12
of 27
designs in the month of Last Week of June 2017 in
the market of New Delhi markets viz. Parliament Street, Barakhamba,
Chanakyapuri etc. Cause of action further arose when plaintiffs enquiry made
thereafter revealed that the defendants are commercially using, soliciting,
selling, publishing, exposing, etc. the impugned deigns in relation to the
impugned goods and were doing so in the markets of Delhi including New Delhi
markets and also
through the various web-sites namely
www.lvkkecrafts.com. www.amazon.com. www. fringesupplvco.com. www.wolfandfaun.com etc. wherein the defendants are also soliciting distributors and
retailers of their impugned goods under the impugned designs, the cause of
action is still continuing and is accruing day-by-day and shall continue to so
accrue till the defendants cease with its impugned adoption and user.”
ii.
T.M.178/2017
Product Inolved:- LYKKE’s Fixed
Circular Knitting Needle, interchangeable Knitting Needle & Cable thereof
& Single Point Knitting Needle.
24.
That the impugned LYK.IC shape
trademark/trade dress applied by the defendants in relation to their impugned
goods and business are identical and/or a substantial and fraudulent imitation
of the Plaintiffs
TRP (C) 93 & 94/2017 Page 13
of 27
said 1011TPRO SYMFONIE shape trademark/trade dress.
The defendants have copied all the above mentioned shape trademark/trade dress
of the plaintiff. The Defendants are applying the impugned KNITPRQ SYMFONIE
shape trade mark/trade dress on their impugned goods for the purpose of sale.
The defendants are also publishing, exposing or causing to be published or
exposed for sale their impugned goods bearing the impugned shape trade
mark/trade dress and are otherwise so using it in relation• thereto in the
course of trade. Comparison of defendants' impugned shape trade mark/trade
dress applied on the impugned goods and the plaintiffs said KNITPRO SYMFONIE
shape trade mark/trade dress is produced herein-below:
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Plaintiff’s
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said
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Defendant's
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KNITPRO SYMFONIE
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Impugned
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LYRIC
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SHAPE
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TRADE
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SHAPE
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TRADE
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MARK/TRADE
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MARK/TRADE
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DRESS
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DRESS
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A D
TRP (C) 93 & 94/2017 Page 14
of 27
Cause of
Action:-
35. The cause of action for the present suit has been set out in the
preceding paras. The cause of action for the present suit has for the first
time arose on the plaintiff
become aware of the defendants’ adoption and use of
impugned trademark/trade dress when they came across the impugned LYKKE
products of the defendants bearing the impugned trademark/trade dress in the
month of Last Week of June 2017 in the market of New Delhi markets viz.
Parliament Street, Barakhamba, Chanakyapuri etc. Cause of action further arose
when plaintiffs enquiry made thereafter revealed that the defendants are
commercially using, soliciting, selling, publishing, exposing, etc. the
impugned KNITPRO SYMFONIE shape trade mark/trade dress in relation to the
impugned goods and were doing so in the markets of Delhi including New Delhi
markets and also through the various web sites
TRP (C) 93 & 94/2017 Page 16
of 27
www.fringesupplvco.com. www.olfandfaun.com etc. wherein the defendants are also soliciting distributors and
retailers of their impugned goods under the impugned trademark/trade dress. The
cause of action is still continuing and is accruing day-by-day and shall
continue to so accrue till the defendants cease with its impugned adoption and
user.”
iii.
T.M.179/2017
Product involved:- LYKKE’s Interchangeable Knitting
Needle & Cable assembly thereof.
8. That by virtue copyright in the said industrial drawing, the plaintiff
has the exclusive rights therein, inter alia within the meaning of Section 14
of the Copyright Act 1957 including to publish and reproduce the work in any
material form including its depiction in material form in three dimensions of a
2 dimensional work and vice-verse and otherwise deal with it in the course of
trade. The technical Industrial drawing of the subject matter product namely
KNITPRO SYMFORNIE inter-changeable circular needle shall refer and include the
technical Industrial Drawing of its variant also. The
technical Industrial drawing of the plaintiff’s
subject matter KNITPRO SYMFONIE inter-changeable circular needle including its
different variants has been given as herein below:-
TRP (C) 93 & 94/2017 Page 17
of 27
Cause of
Action:-
34. The cause of action for the present suit has been set out in the
preceding paras. The cause of action for the present suit has for the first
time arose on the plaintiff become aware of the defendants' adoption and use of
impugned Industrial Drawing when they came across the impugned goods under the
impugned the impugned LYKKE products (based on the impugned Drawing) in the
month of Last Week of June 2017 in the market of New Delhi markets viz.
Parliament Street, Barakhamba, Chanakyapuri etc. Cause of action further arose
when plaintiffs enquiry made thereafter revealed that the defendants are
commercially using, soliciting, selling, publishing, exposing, etc. the
impugned LYKKE products (based on the impugned Drawing) and were doing so in
the markets of Delhi including New Delhi markets and also through the various
web-sites namely www.lykkecrafts.com. www.amazon.com.
www.fringesupplyco.com. www.wolfandfaun.com etc. wherein the defendants are also soliciting distributors and
retailers of their impugned goods. The cause of action is still continuing and
is accruing day-by-day and shall continue to so accrue till the defendants
cease with its
impugned
adoption and user.”
Respondent’s admission that suits are to be tried together in:
TRP (C) 93 & 94/2017 Page 20
of 27
• Order
dated 11/05/2018 in C.S.(COMM) 867 of 2018
• Order
dated 30/07/2015 in TR.P. (C) no. 15 of 2015”
13.
Reliance was also placed on
behalf of the respondent on the verdict of this Court in Smithkline Beecham Consumer
Healthcare
GMBH and Ors. Vs. Hindustan Lever Limited and Ors. 2002 (1) ALLMR 1043 decided on 03.07.2002 to contend that the three suits are
based on separate causes of action with the reliance having placed on paras 19
& 20 of the said verdict which read to the effect:
“19. In
the light of the principles laid down by the Privy Council and affirmed by the
Supreme Court can it be said that the suit of the plaintiffs is barred by Order
II, Rule 2 of the C.P.C.? The plaintiffs filed the suit in Delhi High Court for
infringement of design and for passing off as also unfair competition. Primary
relief claimed in that suit was injunction restraining the application of the
design articles in question (toothbrushes) for the purpose of sale and by way
of ancillary relief, mandatory orders including deactivation or handing over of
moulds, dies and casts and other material used for applying design on the
offending articles were claimed. The present suit of the plaintiff is based on
the infringement of their copyright and relief has been claimed in that
respect. The cause of action in the present suit is importation of infringing
copy (moulds) into India. According to the plaintiffs it is only in August,
1999 they acquired knowledge of the existence of Bombay mould. In fact the
learned Trial Judge has recorded a prima facie finding of fact that mould has
been imported in Bombay in 1999. Thus the cause of action in the present suit
has accrued much after the filing of the Delhi Suit. The issues involved in
Delhi Suit are different from the issues involved in the present suit. The
evidence in the Delhi Suit is entirely different from the evidence in the
present suit. The Delhi Suit was based upon an action for design infringement
for
TRP (C) 93 & 94/2017 Page 21
of 27
which the
evidence required is a copy of the design registration. In respect of passing
off the evidence to establish the right is advertisements and sale of
toothbrushes of the plaintiffs. In a copyright action the evidence will be
totally different. In any event every fresh act of importation of a fresh mould
would give to the plaintiffs under Section 51 read with Section 2(m) of the
Copyright Act, 1957. In the facts of the present case, admittedly the cause of
action upon which the plaintiffs have sued is different and distinct from the
cause of action in the Delhi proceedings. As observed by the Supreme Court in
Bengal Waterproof Ltd.'s case whenever and wherever a person commits breach of
a registered trade mark of another he commits a recurring act of breach of such
trademark giving a recurring and fresh cause of action at each time of such
infringement to the party aggrieved. The ratio of this judgment is clearly
applicable to the facts of the present case. It is, therefore, not possible to
sustain the finding of the learned Single Judge that the suit of the plaintiffs
was barred by Order II, Rule 2.
Regarding question (iii):
20.
Having held that the suit is not barred under Order II, Rule 2 of the
C.P.C. the question of the said suit being an abuse of process of law really
does not survive. Dr. Tulzapurkar, however, urged that if one looks into the
material on which the Delhi Suit was filed, it is clear that cause of action
was available to the plaintiffs when the plaintiffs discovered that the
defendants Pepsodent Popular toothbrush were available in the market and that
by reason of sale of said Pepsodent Popular toothbrush, plaintiffs rights were
allegedly violated. He submitted that the plaintiffs could have also claimed
infringement of copyright in Delhi Suit. Moreover, the plaintiffs chose not to
agitate violation of copyright in that suit and when they could not succeed in
getting interim relief they moved the Court at Baroda and thereafter this
Court. This conduct of the
TRP (C) 93 & 94/2017 Page 22
of 27
plaintiffs,
according to Dr. Tulzapurkar, amounts to abuse of process of law. Dr.
Tulzapurkar relied upon the decision of the Supreme Court in the case of State
of U.P. v. Nawab Hussein . We are unable to accept the submission of the
learned Counsel. In Nawab Hussein's case the Supreme Court was concerned with a
question whether the suit was barred by res judicata. There the petitioner who
was dismissed from service filed a writ petition for quashing the disciplinary
proceedings on the ground that he was not afforded a reasonable opportunity to
meet the allegations against him and the action taken against him was mala
fide. The Petition was dismissed. Thereafter he filed a suit in which he
challenged the order of dismissal, on the ground, inter alia, that he had been
appointed by the I.G.P. and that the Dy. I.G.P. was not competent to dismiss
him by virtue of Article 311(1) of the Constitution. The Supreme Court held
that the suit was barred by the principles of constructive res judicata. Thus
the Supreme Court was dealing with a case where the previously instituted
proceedings and the proceedings in which a decision was given were in respect
of the same cause of action i.e. dismissal from service. The said decision has
no application to the facts of the present case. In the present case the suit
is based on totally different cause of action and the basis, of the said suit
is importation of moulds into Bombay in 1999. In the circumstances it is
difficult to accept the argument that the proceedings in the said suit amount
to abuse of process of law.”
14.
Undoubtedly, in view of the verdict of the Hon’ble
Full Bench
of this Court (comprising three Hon’ble Judges)
in Mohan Lal
(supra) it has
been laid that the three suits are based on separate
causes of
action nevertheless in terms of the verdict of this Court in
Mohan Lal
(supra) itself it has been led vide para 33.3 as observed
hereinabove
where the said suits were filed in close proximity with
each
other it would be appropriate that they are tried together where
TRP (C) 93 & 94/2017 Page 23
of 27
the Court is of the view that there are aspects which are common to the
all suits.
15.
The verdict of the Hon’ble Full Bench of this Court
(comprising
five Hon’ble
Judges) dated 14.12.2018 in Carlsberg Breweries A/S.
Vs. Som
Distilleries and Breweries Ltd. AIR 2019 Delhi 23 indicate
that the
issue involved in Mohan Lal (supra) was subject matter of a
reference
which was taken up in Carlsberg Breweries A/S (supra)
wherein the Hon’ble Full
Bench formulated three
questions to be
determined
by it with the third issue being to the effect:
“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?”
16.
The Hon’ble Full Bench of this Court (comprising
five Hon’ble
Judges) in Carlsberg Breweries A/S (supra) thus observed vide para 45
& 46 thereof to the effect:
“45. It
is clear therefore, that 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. In
this context, this court notes that whereas Order II Rule 3 enables plaintiffs
to join disparate causes of action, Order II Rule 2 compels the whole claim to
be clubbed together. Speaking on the effect of the latter (Order II Rule 2) the
Supreme Court, noting its previous rulings, said in M/s Raptakos, Brett vs M/S
Ganesh Property AIR 1998 SC 3085 is an authority for the proposition that a
suit cannot be rejected as partly barred.
TRP (C) 93 & 94/2017 Page 24
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46.
We are also of the opinion 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
and evidence, and conclude pendente lite, if prima facie passing off is made
out, necessitating interim relief.”
After having made reference to the verdict of the Hon’ble
Supreme
Court in Kusum Ingots & Alloys v. Union of India 2004 (6)
SCC 254 observed
vide para 44 to the effect:
“44. 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. In this context, it is relevant to notice that
the expression "cause of action" was explained in this incisive
manner in Kusum Ingots & Alloys v Union of India 2004 (6) SCC 254 as:
"every fact which would be necessary for the plaintiff to prove, if
traversed, in order to support his right to the judgment of the Court.
Negatively put, it would mean that everything which, if not proved, gives the
defendant an immediate right to judgment, would be part of cause of
action."
thus,
observing to the effect that the suits for complaining of design
infringement and
the suit of a case
of passing off
are based on
basically
the same facts which impel the plaintiff to approach a Court
TRP (C) 93 & 94/2017 Page 25
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and thus it is inconceivable that the cause of action can be ‘split’ in some manner and be presented
in different suits.
Vide
paras 63 & 64 of the verdict of the Hon’ble Full Bench of
this
Court (comprising five Hon’ble Judges) in Carlsberg Breweries
A/S
(supra) the reference was answered to the effect:
63.
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.
64.
The reference is answered by holding that one composite suit can be
filed by a plaintiff against one defendant by joining two causes of action, one
of infringement of the registered design of the plaintiff and the second of the
defendant passing off its goods as that of the plaintiff on account of the
goods of the defendant being fraudulent or obvious imitation i.e. identical or
deceptively similar, to the goods of the plaintiff.”
17.
It is thus apparent that in the
circumstances of the case, it becomes inevitable that the proceedings of the TM
No.178/2017 & TM No.179/2017 have essentially to be transferred to the
Court where the proceedings in CS (COMM) No.867/2018 are pending and the proceedings
in TM No.178/2017 & TM No.179/2018 are directed to be transferred from the
Court of the ADJ-04, PHC, New Delhi where they were pending initially to this
Court to be taken up together with
TRP (C) 93 & 94/2017 Page 26
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the proceedings in CS (COMM) 867/2018 to be placed before the Roster
Bench on 05.07.2019 along with the records of the said cases.
ANU MALHOTRA, J.
JUNE 11th, 2019/vm
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