Last May, I had reported
a full-bench opinion delivered by the Delhi High Court on the following issues:
(1)
Whether a suit for infringement of registered design is maintainable against
the another registered proprietor of the design under the Designs Act, 2000;
(2)
Whether there can be availability of remedy of passing off in the absence of
express saving or preservation of common law of Designs Act, 2000 and more so
when the rights and remedies under the Act are statutory in nature; and
(3)
Whether the conception of passing off as available under the trademarks can be
joined with the action under the Designs Act when the same are mutually
inconsistent with that of remedy under the Designs Act.
Following is the majority
opinion of the Court on these issues:
(i)
A plaintiff could institute a suit for infringement of a design against a
defendant, who was also a holder of a registered design. The expression
"any person" found in Section 22 of the Designs Act would not exclude
a subsequent registrant as, according to us, no such words of limitation are
found in said Section.
(ii)
The plaintiff would be entitled to institute an action of passing off in
respect of a design used by him as a trade mark provided the action contains
the necessary ingredients to maintain such a proceeding. The argument that such
a suit could be instituted only after the expiry of the statutory period
provided under Section 11 of the Designs Act, does not find favour with us.
This is for the reason that in a given fact situation the plaintiff may have
commenced the use of the design as a trademark after its registration. While
Section 2(d) of the Designs Act excludes from the definition of a design, any
trademark which is defined as such in clause (v) of sub-Section (1) of Section
2 of the 1958 Act or property mark, as defined in Section 479 of the IPC, or
any artistic work as defined in clause (c) of Section 2 of the Copyright Act
-the use of the design as a trademark post its registration, is not stipulated
as a ground for cancellation under Section 19 of the Designs Act.
(ii)
(a) In this context we must note the argument of Ms Singh, learned amicus, that
passing off action may perhaps be maintainable provided the mark has attained
secondary meaning. In our opinion, the issue before us is limited to whether a
remedy by way of passing off action would be available qua a registered design
used as a trademark by the plaintiff - we are not inclined to comment on the quality
of evidence which may be required, if at all, to be produced by the plaintiff
to prove whether the mark has acquired the necessary secondary distinctive
meaning, for him to secure success, in the action instituted in that behalf.
(iii)
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 which are common to the two suits. The
discretion of the court in this matter would necessarily be paramount.
36.
Accordingly, our answers to the three issues are as follows:
ISSUE
No.I: A holder of a registered design could institute a suit against a
defendant who is also in possession of a registered design
ISSUE
No.II: A holder of a registered design can institute an action for passing off.
ISSUE
No.III: The two actions cannot be combined in one suit
Recently, I had the occasion to
re-visit the Court’s opinion on issue 3 i.e. is a composite suit for
infringement of a registered design and for passing off of the design
maintainable? Simply put, can the two causes of action be combined in the same
suit? Both the majority and the minority opinions of the Court had answered in
the negative.
I am not sure I agree with the
opinion of the Hon’ble Court because if it is possible to file a composite suit
for copyright and trademark infringement or a composite suit for trademark
infringement and passing off, both of which arise from the same act or series
of acts of the defendant, why is a composite suit for infringement of a
registered design and passing off of the design not maintainable? Filing of
civil suits and combining causes of action are issues dealt with by the Code of
Civil Procedure, 1908 (better known as ‘CPC’ as opposed to ‘CCP’). The relevant
provision to look into is Order 2, which deals with framing of a suit. In
particular, Rule 3 of Order 2 is extracted below:
3. Joinder of causes of action
(1) Save
as otherwise provided, a plaintiff may unite in the same suit several causes of
action against the same defendant, or the same defendants jointly; and
any plaintiff's having causes of action in which they are jointly interested
against the same defendant or the same defendants jointly may unite such causes
of action in the same suit.
(2) Where causes of action are united, the
jurisdiction of the Court as regards the suit shall depend on the amount or
value of the aggregate subject-matters at the date of instituting the suit.
Clearly, the provision deals with
“joinder” of multiple causes of action in the same suit against the same
defendant(s). If it is accepted that infringement of a registered design, and
passing off of the design are two independent causes of action which arise from
the same act or series of acts in a transaction of the same defendant(s), under
Order 2 Rule 3 of the CPC both causes of action may be combined to file a
composite suit, provided of course that both causes of action arise within the
territorial jurisdiction of the same Court (following the law laid down by the
Supreme Court in Dhodha House v. S.K.Maingi).
After all, the running of theme
of the framework of the CPC is that multiplicity of proceedings must be avoided
wherever it can be avoided. Therefore, if multiple causes of action arise in
the same infringing act or series of acts of the defendant, the CPC provides a
mechanism to combine the causes of action for a consolidated adjudication by
the same Court on multiple aspects of the defendant’s conduct.
Surprisingly, there is no
discussion of Order 2 Rule 3 in both the majority and minority opinions. I am
honestly unsure of the reason for the absence of a discussion on the applicability
of this provision to the issue, since to my mind the provision appears most
pertinent to it. Instead, the Court, in its majority opinion, undertook a
discussion on Order 2, Rule 2 which deals with inclusion/severability of claims
and reliefs. The provision is reproduced below:
2. Suit to include the whole claim
(1) Every suit shall include the whole of
the claim which the plaintiff is entitled to make in respect of the cause of
action; but a plaintiff may relinquish any portion of his claim in order to
bring the suit within the jurisdiction of any Court.
(2) Relinquishment of part of claim. --Where
a plaintiff omits to sue in respect of, or intentionally relinquishes, any
portion of his claim, he shall not afterwards sue in respect of the portion so
omitted or relinquished.
(3) Omission to sue for one of several
reliefs.--A person entitled to more than one relief in respect of the same
cause of action may sue for all or any of such reliefs; hut if he omits, except
with the leave of the Court, to sue for all such reliefs, he shall not
afterwards sue for any relief so omitted.
This requires us to understand
the distinction between “claim”, “relief” and “cause of action” because clearly
they aren’t the same, as reflected by the wording of Order 2 Rule 2 itself. Once
the distinction is understood, it becomes easier to appreciate as to which of
the two provisions, Order Rule 2 and Order 2 Rule 3, apply to the issue at
hand.
“Cause of action” has been
defined, and accepted by the Supreme Court to mean “every fact which it would be
necessary for the plaintiff to prove, if traversed, in order to support his
right to the judgment of the court. It does not comprise every piece of
evidence which is necessary to prove each fact, but every fact which is
necessary to be proved."
Simply put, a fact which has resulted in or amounts to infraction of the
Plaintiff’s right that has in turn given rise to a “cause”/ his right to sue is
“cause of action”.
Since a “claim” is made in respect of a “cause of action”, it
perhaps refers to the redressal sought by way of compensation for the
infraction of the Plaintiff’s right. On the other hand, “relief” refers to the
form of solace that the law offers to an injured Plaintiff. Consequently, “reliefs”
under the law could mean injunctive reliefs, pecuniary reliefs and the like. These
“reliefs” constitute “prayers” in the Plaint.
Based on the above, it is clear that infringement of a
registered design, and passing off of the design fall under the category of “causes
of action”, meaning thereby that in order to understand where the 2 may be
combined in a suit, the provision to be looked into is perhaps Order 2, Rule 3,
and not Order 2, rule 2.
To summarize, I think it is possible to file a composite suit
for infringement of a registered design and for passing off of the design. I
look forward to the opinions of our readers.
