A composite suit for design infringement and passing off in the form of trade dress is maintainable. Order II Rule 3 CPC allows joinder of multiple causes of action against the same defendant.
Introduction:The case revolves around a dispute regarding design infringement and passing off. Carlsberg Breweries A/S, the plaintiff, alleged that Som Distilleries and Breweries Ltd., the defendant, had infringed its registered design and engaged in passing off. The primary issue before the court was whether a composite suit combining claims of design infringement and passing off was maintainable. A learned single judge had earlier referred the matter for reconsideration of the precedent set in Mohan Lal v. Sona Paint, 2013 (55) PTC 61 (Del) (FB), which held that such claims could not be combined in a single suit. A special five-judge bench was constituted to decide the legal question of whether a composite suit for design infringement and passing off was maintainable?
Detailed Factual Background:
Carlsberg Breweries is a global beer manufacturer that uses a distinctive bottle design and trade dress for its Carlsberg beer brand. The plaintiff had obtained a registered design for its bottle and claimed exclusivity over its overall appearance.Som Distilleries and Breweries Ltd. launched a competing beer brand with a bottle design and trade dress allegedly similar to Carlsberg’s. The plaintiff contended that the defendant’s bottle was deceptively similar and amounted to both design infringement and passing off. The plaintiff filed a composite suit seeking relief for infringement of its registered design and an injunction against passing off.The defendant contested the maintainability of the suit, citing the decision in Mohan Lal v. Sona Paint, which held that a suit for design infringement and passing off cannot be combined due to the different legal foundations of the two claims.
Detailed Procedural Background: Carlsberg Breweries filed a commercial suit before the Delhi High Court under the Commercial Courts Act, 2015, seeking an injunction, damages, and other reliefs against Som Distilleries and Breweries Ltd. The defendant objected to the maintainability of the suit, arguing that as per the precedent in Mohan Lal v. Sona Paint, claims for design infringement and passing off had to be pursued separately. The single judge, considering the importance of the issue, referred the matter to a larger bench. A five-judge special bench was constituted to decide whether the Mohan Lal precedent required reconsideration. During the pendency of the reference, the main dispute between the parties was settled amicably, but the court proceeded with the hearing due to the importance of the legal question.
Issues Involved in the Case:Whether a composite suit combining claims for design infringement and passing off is maintainable? Whether the decision in Mohan Lal v. Sona Paint correctly interpreted the provisions of the Code of Civil Procedure (CPC) regarding joinder of causes of action? Whether Order II Rule 3 CPC, which allows joinder of multiple causes of action against the same defendant, applies to cases involving design infringement and passing off?
Detailed Submissions of Parties:The plaintiff argued that Order II Rule 3 CPC explicitly permits joinder of multiple causes of action against the same defendant. The cause of action for both design infringement and passing off arose from the same transaction, and forcing the plaintiff to file separate suits would lead to multiplicity of litigation and an unnecessary burden on the judiciary. The plaintiff further contended that Mohan Lal had incorrectly interpreted the law by creating an artificial distinction between design infringement and passing off that was not supported by the CPC.
The defendant maintained that design infringement and passing off are fundamentally different legal claims. A design infringement claim is based on a statutory right arising from the Designs Act, 2000, while passing off is a common law remedy based on goodwill and deception. The defendant emphasized that Mohan Lal correctly held that different causes of action require separate suits, as the evidence and legal tests for proving design infringement and passing off are distinct.
Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case: Mohan Lal v. Sona Paint, 2013 (55) PTC 61 (Del) (FB) was the key precedent under scrutiny. The full bench in Mohan Lal had ruled that a composite suit for design infringement and passing off was not maintainable because the causes of action were distinct. The court in Mohan Lal had relied on Order II Rule 2 CPC, which mandates that a suit must include the whole claim based on the same cause of action, and concluded that design infringement and passing off claims do not arise from the same cause of action.Dabur India Ltd. v. K.R. Industries, (2008) 10 SCC 595 was cited by the plaintiff to argue that multiple causes of action can be joined in one suit if they arise from the same transaction and involve the same defendant. The Supreme Court in Dabur had recognized that different legal claims can be combined in one suit if they are connected and the court has jurisdiction over both claims.Paragon Rubber Industries v. Pragathi Rubber Mills, 2014 (57) PTC 1 was relied upon by the plaintiff to support the argument that commercial realities require a flexible approach to joinder of causes of action to prevent multiplicity of suits.Joginder Metal Works v. Alert India, 1997 PTC 17 was cited to highlight that a design registration does not automatically exclude the possibility of a passing off claim. The decision emphasized that design rights and passing off rights can co-exist and should not be treated as mutually exclusive.
Detailed Reasoning and Analysis of the Judge: The special bench of the Delhi High Court analyzed the reasoning in Mohan Lal and found it to be legally flawed. The court observed that Order II Rule 3 CPC clearly allows joinder of multiple causes of action against the same defendant. The argument that design infringement and passing off are legally distinct was found to be insufficient to deny the maintainability of a composite suit. The court held that forcing plaintiffs to file separate suits for design infringement and passing off would lead to unnecessary duplication of proceedings and wastage of judicial resources. It was noted that separate trials could be ordered under Order II Rule 6 CPC if necessary, but rejecting a composite suit outright was not justified. The court also pointed out that intellectual property rights often overlap, and legal remedies should be interpreted flexibly to provide effective relief. The court rejected the rigid interpretation in Mohan Lal and held that a composite suit for design infringement and passing off is maintainable.
Final Decision:The five-judge bench overruled Mohan Lal v. Sona Paint and held that a composite suit for design infringement and passing off is maintainable. The decision clarified that Order II Rule 3 CPC permits joinder of causes of action as long as they involve the same parties and arise from the same transaction.
Law Settled in This Case: A composite suit for design infringement and passing off is maintainable. Order II Rule 3 CPC allows joinder of multiple causes of action against the same defendant. Intellectual property disputes often involve overlapping rights, and courts should adopt a pragmatic approach to litigation. The decision in Mohan Lal v. Sona Paint, which mandated separate suits for design infringement and passing off, was overruled.
Case Title: Carlsberg Breweries Vs Som Distilleries And Breweries Ltd.
Date of Order: 14 December 2018
Case No.: C.S.(COMM) 690/2018
Neutral Citation: AIR 2019 DELHI 23, (2019) 2 CURCC 238, AIRONLINE 2018 DEL 2599
Name of Court: Delhi High Court
Name of Judges: Hon'ble Justice S. Ravindra Bhat, Hon'ble Justice Hima Kohli, Hon'ble Justice Vipin Sanghi, Hon'ble Justice Valmiki J. Mehta, Hon'ble Justice Vibhu Bakhru
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Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
