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28 April 2014
In May 2013, in a full-bench reference in relation to a batch of suits for design infringement and passing off of designs, the Delhi High Court held that a composite suit for infringement of a registered design and a passing-off action is not maintainable. According to the court, two independent suits must be filed (although these can be tried together if there are aspects that are common to both suits), but a single composite suit is not possible.
In arriving at this conclusion, the court took the view that since infringement of a registered design and passing off of the design are two independent causes of action, they cannot be combined in the same suit. However, it could be argued that as it is possible to file a composite suit for copyright and trademark infringement or for trademark infringement and passing off, both of which arise from the same act or series of acts by the defendant, it should be possible to file a composite suit for infringement of a registered design and passing off of the design.
In this regard, reference should be made to the Code of Civil Procedure 1908, which governs the conduct of civil suit proceedings, in particular Order 2 of the code. Rules 2 and 3 of Order 2 deal with framing of a suit and joinder of causes of action, respectively:
"Rule 2. Suit to include the whole claim
(1) Every suit shall include the whole of the claim which the plaintiff is entitled to make in respect of the cause of action; but a plaintiff may relinquish any portion of his claim in order to bring the suit within the jurisdiction of any Court.
(2) Relinquishment of part of claim. --Where a plaintiff omits to sue in respect of, or intentionally relinquishes, any portion of his claim, he shall not afterwards sue in respect of the portion so omitted or relinquished.
(3) Omission to sue for one of several reliefs.--A person entitled to more than one relief in respect of the same cause of action may sue for all or any of such reliefs; but if he omits, except with the leave of the Court, to sue for all such reliefs, he shall not afterwards sue for any relief so omitted.
Rule 3. Joinder of causes of action
(1) Save as otherwise provided, a plaintiff may unite in the same suit several causes of action against the same defendant, or the same defendants jointly; and any plaintiffs having causes of action in which they are jointly interested against the same defendant or the same defendants jointly may unite such causes of action in the same suit.
(2) Where causes of action are united, the jurisdiction of the Court as regards the suit shall depend on the amount or value of the aggregate subject-matters at the date of instituting the suit." (Emphasis added.)
In order to decide which of the above two provisions applies to the issue at hand, it is imperative to understand the distinction between 'cause of action', 'claim' and 'relief', as they are clearly not synonymous.
'Cause of action' has been defined by the Supreme Court to mean every fact that the plaintiff must prove in order to support its right to a decree. Simply put, a fact that has resulted in or amounts to infraction of the plaintiff's right, and that has in turn given rise to a cause or right to sue, is considered a cause of action.
Since a 'claim' is made in respect of a cause of action, it refers to the redressal sought by way of compensation for the infraction of the plaintiff's right. 'Relief' refers to the forms of solace that the law offers to an injured plaintiff. For instance, relief under the law could be injunctive, pecuniary or similar.
It is evident that infringement of a registered design and passing off of the design constitute two independent causes of action that arise from the same act or series of acts in a transaction of the same defendant(s). Consequently, Rule 3 of Order 2 applies to the issue of filing a composite suit, not Rule 2. Simply put, both causes of action may be combined to file a composite suit under Rule 3, provided that both causes of action arise within the territorial jurisdiction of the same court (following the law laid down by the Supreme Court in Dhodha House v SK Maingi). Surprisingly, the Delhi High Court discussed Rule 2 of Order 2 to arrive at its conclusion, but did not address Rule 3.
The running theme of the framework of the Code of Civil Procedure is that multiplicity of proceedings must be avoided wherever possible. Therefore, if multiple causes of action arise from the same infringing act or series of acts by the defendant, the code provides a mechanism by which the causes of action for a consolidated adjudication by the same court on multiple aspects of the defendant's conduct can be combined. This mechanism should arguably apply equally when a plaintiff wishes to file a composite suit for infringement of a registered design and passing off of the design.
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