Background
Trademark and designs are two distinct branches of IP law however often said to be overlapping. Besides logo, slogans, and other marks, a trademark also covers the shape of goods, their packaging and color combinations and on the other hand a product or container shape can also be a design under Designs Act, 2000. However, considering distinctiveness of both legal branches Delhi High Court in MOHAN LAL, PROPRIETOR OF MOURYA INDUSTRIES vs SONA PAINT & HARDWARES [2013 (55) PTC 61 (Del) (FB)] held that a composite suit for design infringement and passing off is not maintainable.
In the present case of Carlsberg Breweries v Som Distilleries And Breweries Ltd [2017(70)PTC413(Del)], five judge bench of Delhi High Court overruled the earlier decision in Mohal Lal case and held that two causes of action of passing off, and design infringement under the Designs Act, 2000 can be joined and tried in a composite suit.
Facts
The issue arose when Carlsberg Breweries filed a case against Som Distilleries for infringing its design of TURBO beer bottles by the latter's HUNTER' beer bottles. The defendants took the defense of Mohan Lal case by contending that such a composite cannot be allowed. However, the Hon'ble court felt the need to relook the previous three judgment decision in Mohan lal case.
Analysis
In Carlbourg case, the defendant took the defence of Mohan lal case which took the reference from Dabur India v. R. K. Industries [AIR 2008 SC 3123] which did not allow the joinder of different causes of action wherein the Court lacked the jurisdiction to entertain any one of the causes of action. However, in the instant case the court held that application of Dabur case in Mohal lal case was fallacious. In furtherance of the same, in the Carlsberg case court said that in Mohal lal case court erred in applying Order II, Rule 3 of the CPC.
In Mohan Lal case, three judge bench of Delhi High Court concluded that cause of action for infringement of design and passing off were two different wrongs and governed under two separate legislations i.e Designs Act 2000 and the Trademarks Act 1999 respectively. Furthermore, the grounds for relief, and the defenses also differ substantially. Therefore, both the said actions cannot be combined. While rejecting the above claims five judge bench said that the origin of a complaint of passing off and that of design infringement is from the same fact i.e. sale or offer for sale, by the defendant of the rival product.
In furtherance of the same, observing the Dabar case and overruling the Mohan lal case, the Delhi High Court said that in the Dabar case the application of judicial mind was pertaining to a situation wherein the court lacked the jurisdictional power to adjudicate one of the cause of action in the joinder of causes of actions. However, it does not suggest that composite suit having two causes of actions are barred per se and cannot be tried by a court. Thus, a composite suit for infringement of design and passing off is maintainable.
Conclusion
"Law can bar a remedy but not a right" however, Mohan Lal case barred the right of a party to join his two cause of actions. The underlying aim behind barring of joinder of causes of action or composite suit is to save the time and resources of the court as well as parties. It has the long run positive ramifications. Interestingly. the pertinent question arises on the point when the applicant wants to get it’s design registered when at the same time, the said design has started working as a trademark (an unregistered one) of that particular firm or company. In that situation, if design is not recognized for registration, the remedy can only be sought with respect to passing off. Furthermore, there can also be a situation where the registered design ultimately starts working as a trademark. Here, the question arises whether the remedy for passing off be sought separately in such situation.
References:
[2] https://spicyip.com/2018/12/delhi-hc-clearing-the-confusion-around-design-trademark-overlaps.html
[3] https://spicyip.com/2018/12/delhi-high-court-deals-with-yet-another-design-trademark-overlap.html
[4] https://indiankanoon.org/doc/1327080/
[6] https://barandbench.com/composite-suit-design-infringement-passing-off-maintainable/
[8] http://www.mondaq.com/india/Carlsberg+Breweries+V+Som+Distilleries+And+Breweries+Ltd
[10] https://drive.google.com/file/d/1FRWDX-C742ouAjZPzG2Yb1K426XUqf9E/view
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