Intellectual Property LAW EXPLAINED
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This article will basically be dealing with the composite suit for design infringement and passing off. Also, the latest case laws relating to this will also be discussed. But first, it is important to know something about design infringement and passing off.

Design Infringement and Passing Off

Like other Intellectual Properties, Design is additionally inclined to Infringement. An Infringement of Design is an unlawful act to utilize an enlisted design, or fake impersonation of a registered design, without the approval from the proprietor of such registered design. The registered proprietor of the design in such an instance of Infringement of Design can file a suit to recover a nominal sum as damages from the infringer, and furthermore ask the infringer to stop such Infringement. In the Design Act, 2000, the theft of registered design is considered as an Infringement of Design in India. An Infringement of an enlisted Design implies when any individual, without the assent of the owner of the design, imports, applies or distributes the registered design or any undeniable or fake or impersonation thereof.

Passing off was once viewed as a common law remedy accessible just to trademarks. In any case, incorporation of the extent of passing off to designs prompts different fascinating discussions and inquiries with regards to the IP field. According to Section 27(2) of the Trade Marks Act, 1999, the activity of passing off is a common law remedy and the registration of the trademark is not pertinent as under the activity of passing off, most extreme weightage is given to the client who has embraced the mark before in time, regardless of registration of the mark.

In a suit for passing off, an imprint guaranteeing prior use is given the advantage over a later client or earlier registrant because of formers’ earlier existence in the market. This principle has been maintained in different instances of passing off in India. In the case of Consolidated Foods Corporation v. Brandon and Co., Private Ltd[1], it was held that “Priority in selection and utilization of a trademark is better than a priority in registration”.

In another case of L.D. Malhotra Industries v. Ropi Industries[2], The High Court of Delhi held that earlier utilization of an unmistakable mark will obtain the right of property without thinking about the extent of such use, “That a merchant procures a right of property in a particular mark only by utilizing it upon or regarding his products independent of the length of such client and the degree of his trade. The trader who receives such a mark is qualified for security legitimately, the article having accepted a vendible character is propelled upon the marker. Registration under the rule does not confer any new right to the mark guaranteed or any more noteworthy rights than what previously existed at common law and at equity without registration.”

A landmark judgment had been passed on December 14, 2018, by a Special Bench of five judges of the Delhi High Court. It held that a composite suit in connection to the infringement of a registered design and passing off, where the parties are similar is maintainable in a court of law. This issue arose in the judgment named Carlsberg Breweries A/S. v. Som Distilleries and Breweries Ltd.[3], wherein it has adequately overruled the previous judgment of the three-judge bench in the case of Mohan Lal v. Sona Paint & Hardwares and Ors.[4] , and has held that two reasons for the action of passing off, and design infringement can be joined and attempted in a composite suit. The suit from which the issue emerged related to encroachment of a registered design, and passing off (of the plaintiff‟s trade dress) in regard of the bottle and get off the “Carslberg” mark. The conflict was whether the two cases (for passing off and design infringement) could be joined in one suit.

Delhi High Court’s view in the case of Mohan Lal

In the case of Mohan Lal, it was held that on the grounds that the reason for action for a suit for the encroachment of a registered design is not the same as the reason for action for a passing off case, two separate suits must be filed. Notwithstanding, the court had additionally held that if the two suits were filed simultaneously, or in closeness, they might be tried together as certain aspects might be common. Order one and Order two of the Code of Civil Procedure, 1908, were the topic of conversation for this situation, relating to the Parties to Suit, and Frame of Suit, separately.

In the current decision, the court found that the two reasons for action were against a similar respondent or set of litigants, and they were in regard to similar acts and exchanges. The main distinction was that the relief claimed was unique. The worry was whether the court’s understanding in Mohan Lal on the irregularity and difference with regards to the relief being essential to the frame of the suit would crush a composite action.

Delhi High Court’s view in Carlsberg

In this case, plaintiff documented a suit asserting infringement of registered design and passing off of its trade dress, yet the frame of the suit was questioned by the respondent in that by depending on the judgment in Mohan Lal expressing that two unique cases (for passing off and design infringement) cannot be consolidated in one suit and that it might equivalent to misjoinder. The said case was at first heard by a single bench who at that point felt the requirement for a re-thought by a larger bench of the judgment in Mohan Lal.

Several arguments were also made in this case. The main issue was that design infringement was a statutory right, though passing off was a common-law injury. The subsequent issue was that the design infringement depended upon the sale of a structure, though passing off depended on distortion. Thirdly, the grounds of challenge were additionally extraordinary: in a design encroachment suit, the design is required to be novel and not found on any past distribution in India, though in a passing off suit, it must be indicated that the shape or imprint has created generous altruism and notoriety and that the litigant has received a misleadingly or confusingly comparative design or shape. At long last, it was contended that despite the fact that a similar court has the jurisdiction to try a suit for design infringement and passing off, yet when a safeguard of abrogation is guaranteed by the respondent in a design infringement suit, the suit must be moved to a High Court of capable jurisdiction. The court was not, be that as it may, persuaded of these contentions against the joinder of the plaint.


Henceforth, the judgment of the three-judge bench in the case of Mohan Lal stands overruled by the excellence of the very much contemplated judgment passed by the larger bench in Carlsberg. With the regularly heightening expense of Intellectual Property prosecution, the decision in regard to the viability of Composite suits, specifically, will carry massive relief to the plaintiffs. Composite suits for design infringement and passing off will likewise advance expedient removal of such disputes.


[1] AIR 1965 Bom 35.

[2] (1976) ILR 1 Delhi 278.

[3] 256 (2019) DLT 1.

[4] AIR 2013 Delhi 143.

This blog is written by Rashi Srivastava, Amity University.

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