Mohan Lal, Proprietor of Mourya Industries v. Sona Paint & Hardwares

Relevant Acts and provisions

Designs Act, 2000

Section 22

Trade Marks Act, 1999

Section 27

Provisions considered: Section 22 of the Designs Act, 2000 and Section 27 of the Trade Marks Act, 1999, on composite suits.

Brief facts

The plaintiff, proprietor of a registered design for hardware fittings, sued the defendants in a single suit for both infringement of the registered design and passing off of trade dress, seeking a combined injunction. A question arose whether the two causes of action, one under the Designs Act, 2000 and the other founded on the common law of passing off, could be joined and tried together, since design registration treats the design as published for a limited monopoly period, in apparent tension with the indefinite, reputation-based protection recognised in passing off. The matter was referred to a Full Bench.

Issues before the Court

1. Are infringement of a registered design and passing off separate and distinct causes of action?
2. Can the two causes of action be combined in a single composite suit against the same defendant?
3. Would allowing such a composite suit undermine the statutory scheme of the Designs Act, 2000?

Court's findings

The Court held that infringement of a registered design and passing off are two distinct wrongs, each governed by its own statute, standard of proof and available defences, and that a design once registered is treated as published and enters the public domain for a limited monopoly period, which is conceptually at odds with the indefinite, reputation-based protection recognised in passing off.

The Court observed that permitting an amalgam of a design suit with a passing-off suit could allow a plaintiff indirectly to extend design protection beyond its statutory term by dressing it up as a trade mark claim, undermining the balance the Designs Act, 2000 strikes between an inventor's rights and the public interest.

The Court accordingly held that a composite suit combining these two causes of action against the same defendant was not maintainable, leaving a plaintiff wishing to pursue both remedies to file separate suits.

Subsequent history: Overruled on the maintainability point by the Full Bench of the Delhi High Court in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., CS(COMM) 690 of 2018, decided 14 December 2018.

Decision

Full Bench held that a composite suit for design infringement and passing off is not maintainable.

Keywords

Composite Suit Copyright Design Overlap Design Infringement Design Registration Passing Off