JUDGMENT :

S. RAVINDRA BHAT, J.

1. The reference to this larger, Special Bench of five judges, was occasioned by the detailed speaking order of a learned Single Judge, in the present suit, which sought the reliefs of infringement of design and a decree for injunction against passing off. The learned Single Judge, by the order dated 02.05.2017, referred the question as on the whether the decision in Mohan Lal vs. Sona Paint, 2013 (55) PTC 61 (Del) (FB) - hereafter “Mohan Lal” on the aspect of maintainability of a composite suit in relation to infringement of a registered design and for passing off where the parties to the proceedings are the same needs re-consideration by a larger bench in the light of Order II Rule 3 CPC, which permits joinder of causes of action. The decision in Mohan Lal (supra) was by a Full Bench of three judges. During the pendency of this reference the dispute inter parties was rendered moot due to a mutually acceptable settlement; nevertheless this court was requested to hear and decide the issue, on account of the importance of the subject-matter.

2. We had the benefit of the draft judgment by Valmiki. J. Mehta, J. We agree with his conclusions as well as his analysis and reasoning. However, we are of opinion that it is also necessary to state additional reasons while recording the same conclusions.

3. The facts are not elaborately discussed; the present suit (out of which this reference arose) was filed, complaining of infringement of a registered design as well as passing off (of the plaintiffs trade dress) in respect of the bottle and overall get up of the “Carlsberg” mark. The defendant objected to the frame of the suit, pointing out that per Mohan Lal (supra), the two claims (for passing off and reliefs regarding design infringement) could not be combined in one suit. The single judge analysed parties' submissions and felt that the issue decided in Mohan Lal (supra) required a second look; he therefore, referred the matter for appropriate orders to the Chief Justice. This Special Bench was constituted, resultantly.

4. Mohan Lal (supra) decided, principally the question whether a passing off remedy is maintainable in the context of a complaint for infringement of copyright in the design (hereafter for clarity referred to as “design right” and “design infringement” to avoid confusion with the overlap with copyright). The Full Bench formulated three questions to be determined by it; the third issue:

“III. 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?”

5. The majority in Mohan Lal (supra) held that as the cause of action for a suit for infringement of a registered design is different from the cause of action on which a claim of passing off is premised, two separate suits have to be filed though, if filed at the same time, or in close proximity, they may be tried together as there may be some aspects which may be common. Pertinently, the majority view states:

“24.3 Thus, the cause of action in the infringement suit under the Designs Act could be different from that which obtained in a passing off action. The fundamental edifice of a suit for infringement under the Designs Act would be the claim of monopoly based on its registration, which is premised on uniqueness, newness and originality of the design. Whereas, the action for passing off is founded on the use of the mark in the trade for sale of goods and/or for offering service; the generation of reputation and goodwill as a consequences of the same; the association of the mark to the goods sold or services offered by the plaintiff and the misrepresentation sought to be created by the defendant by use of the plaintiff's mark or a mark which is deceptively similar, so as to portray that the goods sold or the services offered by him originate or have their source in the plaintiff. It is trite to