Summary

A three-judge bench of the Delhi High Court delivered a landmark judgment affirming that holders of registered designs can file infringement suits against other registered proprietors, invoke common law passing off remedies even without explicit statutory provisions in the Designs Act, and pursue both remedies concurrently — though not in a single consolidated suit.

Case Background: Mohan Lal v. Sona Paint & Hardwares

The Delhi High Court adjudicated three critical questions arising from Mohan Lal's suit as proprietor of Mourya Industries (and co-plaintiff Micolube India Ltd.) against Sona Paints & Hardware and related parties under the Designs Act, 2000.

Three Issues Decided

Issue I — Infringement Suits Against Registered Proprietors: Whether a suit for infringement of a registered design is maintainable against another registered proprietor?

Issue II — Passing Off for Registered Design Holders: Whether the remedy of passing off is available to a holder of a registered design in the absence of express statutory provisions in the Designs Act?

Issue III — Composite Suits: Whether passing off actions can be combined with infringement actions under the Designs Act in a single suit?

Key Holdings

Issue I — Infringement Suits: Maintainable. The Court held that Section 22 of the Designs Act uses the broad term "any person" without carving out an exception for registered proprietors. If Parliament had intended to exclude registered proprietors, it would have expressly stated so. Requiring the design holder to instead bring cancellation proceedings (under the Tobu Enterprises interpretation) imposes unnecessary procedural hurdles. The validity of the defendant's registration can be challenged as a defence in the infringement suit under Section 22(3).

Issue II — Passing Off: Available. The Court conclusively held that common law passing off remedies are available to protect registered designs, even though the Designs Act lacks an express saving provision like Section 27(2) of the Trade Marks Act. Common law remedies are not excluded by statute unless expressly stated. Designs can acquire distinctive character and goodwill through extensive commercial use. All essential elements of passing off (goodwill, misrepresentation, damage) can be proven in design disputes. Multiple prior decisions — Alert India v. Naveen Plastics (1997), Smithkline Beechem Plc v. Hindustan Lever Ltd. (1999), Gorbatschow Wodka KG v. John Distilleries Ltd. (2011) — have recognized passing off in design disputes.

"Common law remedies are not excluded by statute unless expressly stated. The absence of a provision like Section 27(2) of the Trade Marks Act does not imply exclusion — it simply means the legislature did not feel the need to expressly preserve what already exists in common law." — Delhi High Court, Three-Judge Bench

Issue III — Concurrent But Separate Suits. Infringement (statutory, strict liability) and passing off (common law, tort-based) are different causes of action and should be treated as separate suits — but courts may choose to hear them simultaneously for procedural efficiency.

Significance

This three-judge bench decision was subsequently considered — and partially overruled — by the five-judge bench in Carlsberg Breweries v. Som Distilleries (December 2018), which maintained the holdings on infringement maintainability and passing off availability, but overruled the prohibition on composite suits. Together, the two decisions establish that design proprietors can now: file infringement suits against other registered proprietors; invoke passing off in the same or concurrent proceedings; and — following Carlsberg — combine both causes of action in a single composite suit.