In an important ruling, a Large Bench of the Delhi High Court ruled that a composite suit that joins two causes of action – one for infringement of a registered design and the other for passing off, is maintainable.
The Court was acting on a reference which doubted the decision of a three judges bench in Mohan Lal vs. Sona Paint case that both the said causes of action cannot be combined.
“It is held that Mohan Lal’s conclusions – that two causes of action, one for relief in respect of passing off, and other in respect of design infringement cannot be joined, ignoring the material provisions of Order II Rules 3 to 6, are erroneous; they are accordingly overruled”, a five judge Bench said.
The Court ruled that objection to misjoinder of causes of action is procedural and that rejection of a suit on that count cannot be resorted to. This conclusion was premised on the fact the Order II Rule 3 of the CPC [Civil Procedure Code] enabled joinder of different causes of action. The Court noticed that CPC has expressly specified the causes of action which cannot be joined together in Order II Rule 4. Therefore, in the absence of any express bar, it cannot be said that causes of action for design infringement and passing off cannot be combined.
The Court further said that the two causes of action, i.e. a claim for design infringement and the other for passing off, are not so disparate or dissimilar that they cannot be tried together in one suit.
“It is evident that there is a similarity between the nature of inferences and conclusions that are presented to the court, in the two causes of action. Significantly, the complaint of passing off as well as that of design infringement emanate from the same fact: sale or offer for sale, by the defendant of the rival product”, it said.
“It is clear therefore, that the basic facts which impel a plaintiff to approach a court, complaining of design infringement are the same as in the case of passing off. In such circumstances, it is inconceivable that a cause of action can be “split” in some manner and presented in different suits. In this context, this court notes that whereas Order II Rule 3 enables plaintiffs to join disparate causes of action, Order II Rule 2 compels the whole claim to be clubbed together”, it further added.
The Court also mentioned that a composite suit has the advantage of a bird’s eye view by the court, with respect to a common set of facts: if for some reason, the claim for design infringement is prima facie weak and the plaintiff cannot secure interim relief, it does not have to face uncertainty of another action before another court; the same court can review the same facts and evidence.