A special bench of 5 judges of High court of Delhi in Carlsberg Breweries A/S. vs. Som Distilleries and Breweries Ltd.[1] on 14.12.2018 has allowed a composite suit for Infringement of Copyright Design and Passing off of Trade Dress.

The question of maintainability was referred by a single judge based on a decision of the court by a full bench of three judges in Mohan Lal v Sona Paint.[2] In relation to a composite suit for infringement of a registered design and for passing off, where the parties to the proceedings are the same in the light of Order II Rule 3 CPC.

FACTS:

The Plaintiff filed a suit complaining of infringement of a registered design as well as passing off of 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 as per Mohan Lal’s case the two claims could not be combined in one suit. The single judge analyzed parties submissions and felt that the issue required a second look and hence referred to a larger bench.

POINT FOR CONSIDERATION: The court observed the following points for consideration-

(a) Is the court compelled by anything in law to reject a plaint for misjoinder, if two causes of action cannot be clubbed?

(b) Are the two causes of action, i.e. a claim for design infringement and the other for passing off, so disparate or dissimilar that the court cannot try them together in one suit?

DECISION OF THE COURT: The court held 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; and accordingly overruled. The court also held 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.