Three questions long troubled design law: can you sue a registered proprietor for infringement, is passing off available under the Designs Act at all, and can you bring both claims in a single suit? Here’s the debate — and how the composite-suit question was finally settled.
Update: The third question — whether infringement and passing off can be combined in one suit — was resolved in Carlsberg Breweries v. Som Distilleries (2018), where a Full Bench of the Delhi High Court held a composite suit IS maintainable, overruling the contrary view in Mohan Lal v. Sona Paint. This piece captures the original Mohan Lal-era analysis; the composite-suit position is now settled.
The three issues
A Bombay High Court judgment (building on an earlier Delhi High Court decision, complete with a notable dissent) grappled with whether:
- (a) an infringement suit can be filed against a registered proprietor of a design;
- (b) the common-law remedy of passing off is available under the Designs Act; and
- (c) a single suit for both infringement and passing off is maintainable.
(a) Infringement against a registered proprietor
Plaintiffs argued that a design must be new and novel to be registrable, so a later registrant of a similar design fails that criterion and shouldn’t be shielded by their own registration; registration confers a monopoly to use the design to the exclusion of others.
Defendants argued the Act is self-contained, draws no distinction between prior and subsequent registrants, and that Section 22(3) grounds for cancellation lie only in the Controller’s discretion — so no infringement suit can lie against a registered proprietor.
The courts held that registration creates only a rebuttable presumption of validity. A plaintiff may still contend the defendant’s design is not new or novel compared to the plaintiff’s, and assert its monopoly against a registered proprietor. Both the Delhi and Bombay High Courts took this view.
(b) Passing off under the Designs Act
Plaintiffs compared the Designs Act with the Trade Marks Act, arguing passing off must apply because misrepresentation and confusion are equally possible. Defendants noted the Trade Marks Act expressly provides for passing off while the Designs Act does not, and pointed to legislative intent.
The courts clarified that a design can be used as a trademark, and if its use generates goodwill in trade, it can be protected by a passing-off action — subject to the plaintiff proving the usual ingredients. In unequivocal terms, passing off is available under the law of designs.
(c) One suit for both — the point Carlsberg settled
Following from (b), a passing-off suit is maintainable. On combining both remedies, the plaintiffs said a single suit could lie even though the actions are independent. The Delhi HC (Mohan Lal era) disagreed — favouring passing off as a remedy but holding the two actions could not be combined, though a court could try them together as separate causes if instituted in close proximity and within its jurisdiction. That is exactly the point Carlsberg later overruled, holding a composite suit maintainable.
The dissent worth reading
J. Manmohan Singh’s articulate dissent answered all three in the negative: the words “any person” in the piracy provision exclude a registered proprietor; passing off is distinct from statutory design monopolies and cannot be treated as complementary; and a common-law action in deceit for novel shapes cannot be added to the statutory design right without undermining legislative intent.
The takeaways
- You can sue a registered proprietor for design infringement — registration is only a rebuttable presumption of validity.
- Passing off is available under design law where the design functions as a mark and has goodwill.
- A composite suit is now maintainable (Carlsberg, 2018) — the old bar in Mohan Lal no longer holds.
- Plead novelty carefully — the whole first issue turns on showing the defendant’s design isn’t new.
Frequently asked questions
Can I sue a registered design proprietor for infringement in India? Yes — registration is a rebuttable presumption of validity, and a plaintiff can assert its monopoly and challenge the defendant’s design as not new or novel.
Is passing off available under the Designs Act? Yes — where a design is used as a trademark and acquires goodwill, a passing-off action lies, subject to proving its essential ingredients.
Can I combine design infringement and passing off in one suit? Yes, now — the Delhi High Court Full Bench in Carlsberg v. Som Distilleries (2018) held a composite suit maintainable, overruling Mohan Lal.
What was the dissent’s view? Justice Manmohan Singh would have answered all three questions no — excluding registered proprietors from infringement, and rejecting both passing off and a combined suit as against legislative intent.
Useful official resources
- The Designs Act, 2000
- Designs — IP India