2013 Supreme(Del) 563

High Court of Delhi
SANJAY KISHAN KAUL, MANMOHAN SINGH & RAJIV SHAKDHER, JJ.
Mohan Lal, Proprietor of Mourya Industries & Another
Versus
Sona Paint & Hardwares & Others
CS(OS) 384 of 2008 & 1446 of 2011
Decided on : 15-05-2013

Headnote:

Suit for infringement of registered design is maintainable against another registered proprietor of the design under the Designs Act, 2000. Remedy of passing off is available in absence of express saving or preservation of the common law by the Designs Act, 2000 and more so when the rights and remedies under the Act are statutory in nature. Conception of passing off as available under the Trade Marks can be joined with the action under the Designs Act when the same is mutually inconsistent with that of remedy under the Designs Act, 2000.

Fact of the Case:

Mohan Lal, the proprietor of M/s Mourya Industries, claims to be in the business of manufacturing and trading of mirror frames, door pipe handles, hinges, almirah locks and almirah lock plates. He is the proprietor of two registrations bearing no. 202050 and 202051, of even date, i.e., 09.11.2005, in class 06 – 07, were made in favour of Mohan Lal. On the other hand, MIL, claims to be in the business of manufacturing and marketing petroleum products, and brake and clutch fuel oil, lubricating oil and greases as also other allied and cognate products (hereinafter collectively referred to as products). It is averred that, these products are sold in containers which have original and novel designs, and that, MIL is the author and the owner of these designs.

Finding of the Court:

A suit for infringement of a registered design as against another person claiming to have obtained registration in his favour, was maintainable, for the following reasons: * Only that design could be registered which was new or original. * In other words, the designs which were neither new nor original, or were not significantly distinguishable from other known designs or combination of known designs, could not be registered. * This submission, according to Mr. Goel, flowed from a combined reading of Section 2(j) “proprietor of a new or original design”,-(i) where the author of the design, for good consideration, executes the work for some other person, means the person for whom the design is so executed; (ii) where any person acquires the design or the right to apply the design to any article, either exclusively of any other person or otherwise, means, in the respect and to the extent in and to which the design or right has been so acquired, the person by whom the design or right is so acquired; and Section 4 of the Designs Act. * It was thus contended, that under Section 19, “any person” could file a petition for cancellation of a registered design on any of the grounds referred to above. Therefore, any design which was registered subsequently, was obviously neither new or original and hence a registrant holding such a registration could never be considered to be in possession of a valid registration.

Issues: 1. Whether the suit for infringement of registered Design is maintainable against another registered proprietor of the design under the Designs Act, 2000? 2. Whether there can be an availability of remedy of passing off in absence of express saving or preservation of the common law by the Designs Act, 2000 and more so when the rights and remedies under the Act are statutory in nature? 3. Whether the conception of passing off as available under the Trade Marks can be joined with the action under the Designs Act when the same is mutually inconsistent with that of remedy under the Designs Act, 2000?

Ratio Decidendi: 1. 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. 2. 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. 3. 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.

Final Decision: The reference is thus disposed of in the aforesaid terms. The suits be placed before the roster Bench for appropriate orders.