Full Text
+
IN THE HIGH COHRT OF DELHI AT NEW DELHI
TR.P.(C)No.93/2018
■Tiidgment reserved on:02.08.2018 nate of decision: 11.06.2019
ANUMG SANGHI& ANR.
- Through; Mr.M.K.Miglani,Adv.with
Mr. SamreenKhan, Adv.
■' Tteough;, ^ A
■ +
TR,P:r(C)No.94/20l8; , < > '
ANURAGSANGHI&ANR. ' , ANUKAUo Mr.M.K.Miglani, Adv. with
,Mr. SamreenKhan, Adv.
Through;' ^ 'Mr.Ajay AmitabhSuman,Adv.
O ■ ■ ■ ■ , HON^EMS.JUSTICEANUMALHOTRA.nTDGMENT
ANTJmat TTOTRA, J.
JUDGMENT
1 The petitioners Mr.. Anurag; Sanghi and M/s Sanghi 2019:DHC:7964 M SanghibearingTMNo.178/2017&TMNo.179/2017bothpendingm theCourtoftheADJ-04,PHC,NewDelhitothisCourtandseekt at the same be tried with the suit titled as Knitpro International Vs. Anurag.Sanghi&Anr.bearing CS(COMM)NO.867/2018 already transferredtothisCourt.Sincetheissueinvolvedinboththetransfer petitions isthe same,thetwo petitionsare beingdisposed ofbyt e common order.
2. The proceedingsinCSi0P»800^whichsmtbearing No.CS918/2017wasihffltutedbefe^;thelearnedCoh^,oftheADJat ® PatialaHouse.Court,New Delhi wastransferred intdrrtistofSection 22(4) of the Designs Act, 2000tp'this Court vide prier dated 12.04.2018,ofthe learned ADJ-04,'PHC,;New Delhiin,view ofthe ■ defencetakenbythedefendantstothatsuiti.e.thepresentpetitioners herein which suit had been filed by-the respondent to the present petitions i.e.M/s.Knitpro ltiterha)jo.nal a^^plamtiffthereo,wi e defendantsinthesaidsuittfcthe prdsentT^tm^^ thatthecourtoftheADJdidnoj-hdve'wjurisdictiontouonsi er e. player for the cancellation ofthe design^the plamtiffof CS f) No918/2017i.e.therespqn|e^f^V^
3. The said suit was re-numbered as CS(COMM)867/2018.on receipt in^ this Court. The,proceedings, dated 11.05.2018 in C (COMM)867/2018readtotheeffect; Paint&Hardwares,AIR 2013Delhi143 nepresent suitisoneofthem andothersuitsareawaited. Liston 23:07.2018.
4 The avowedcontentionofthepetitionershereinarrayed asthe defendantstothe suitCS(COMM)867/2018 isto dte effectthat m ^ this suit CS(COMM)867/2018,the respondent herein as plaini thereof has alleged the piracy of its registered designs by the petitioners herein and has soughtto restrdn|re petitioners torn sellingLYKKEknittingneedleshayingcertaindesipyfeaturesw ic © thefespondentdierein are alleged ar^umitationof'ai^spondent's SYMFONIEfitting needles and also violate terms ofcppipromise arrived at between the partiesin an earner suitbearing No,CS(OS) No2142/2015asdecreedbythisCouft;s' Ithasbeenfurthersubmitledonbehalfofthepetitionersherein thaton12,09.2017therespondentdothepresenttransferpetitionsfiled u • tK/V "Mn 178/2017 titled as M/s Knitpro two more suits bearingfJM.No-T/s/^Ul0 ^ internationalrs.Arnrragm^ alleging cause of action for passing off by the petitioners herein involvingtheverysainej|wttingneedlesas^olved mthedesi^., suit and that the respondent"herein filed another suit earing No179/2017titledasM/sKnitproInternationalvs.Anurag ang i unot/ier(i.e.copyri^tsuit)alleginginfHpgement c rtfthe knitting needles asbeitig th J industrialdrawings ofone ofthe Knittmg[1] matteroftheDesignssuitandofthepassingoffsuit. © o o
6. Copies ofthe plaintofthe said suits bearingTM Nod78/2017 & TM No.179/2017 as also ofOS(COMM)867/2018 are placed on record.
7. Ithasthus beensubmitted bythe petitionersthatin view ofthe verdict of the Hon'ble Full Bench ofthis Court(comprising three Hon'ble Judges)in Mohan Lai,Proprietor ofMouryaIndustries v. Sona Paint & Hardwares, AIR 2013 Delhi 143 decided on 15.05.2013 where the suit,for uifingemetf^^^^^ suit for passing offhad been.filed in close proximity with eaph other,they may be tried together. The petitioners.have;also subjnitted that it wouldbeintheinterestofjusticeifthet^e'esuitsaretriedtdfetherby this Courtitfas much asthey are based'ph thesame causerofaction arisingoutofthesamesetbfTap^,£!nib|tweenthesamepartiesand thatitwouldalsosavejudiciafim|a||:|pifthethreeSuitsaretried together.,y^•.2- ' ^,
8. The respondenthas petitioners.Itisessentialtoobserve,However,thatintheproceedings in CS(COpvI)867/2018 which isthe suit alleging infringementof the designsintheneedl%filedbyt|||S#deHt,thecounselfor thp norties thp* wnnld include the counselfor the plaintiffofCS ■r01VIMt867/7.niR he. the counsel for the respondent to the presentnetition hadinformedthelearned Courtofthreesuitshaving been filed beforetheDistrictCourtand thatallthethree suitshad to /be heard by this Courtin view ofthejudgment ofthe Hon'ble Full.-'i 0- Furthermore,in TR.P(C)15/2015 vide proceedings dated 30.07.2015 it is indicated that the said transfer petition was filed by the present petitioners againstthe same respondenton whose behalf,the counsel presenthad accepted notice and.submitted thathe had no objection if the suit bearing tM No.l7Q/2015 that was pending in the Court of ADJ,PHC,New Delhi wastransferred to this Courtto be tried with CS (OS) 2142/2015 between the same- patties in respect of the infringement ofthe 'design'Jfierydihg;in tiiis Court.It has also been observed by this Court vide the.|ai^prder dated,|(|p[7].2^ to the effect: i ^ "Botii'suits have to he tried together,in view oftheidw laiddown in Mohan Lai vs. Sana Paint & Hardwar^y 2013(55)PTC61(Del)(FB}. ^ Accordingly,file ofsuit bearing TM No.170/2015 pending in the court ofMs.-Vrinda Kurnari, Learned Additional District Judge, fqtiala House Courts, Delhi is withdrawn,and transferred to this Court. The said:suit on receipt by transferee tried with CS(OS) ■. 2142/2015. '. „ Thepetition is dispd^ed-'pfin above terms.
9. The contention raised on behalf of the respondent is to the "© effect that there is a distmdtion in'thei|:u)ises of action in the suits filed,i.e. • seeking the permanent injunction against piracy of-registered designs; • seeking an action againstpassingoffsuit; n 10, ItHasbeen deniedonbehalfoftherespondentthattheproducts in the three,suits i.e. TM No.178/2017, TM No.179/2017 & CS No.918/2017nowrenumbered asCS(COMM)867/2018arethesame ■ and.Ithasbeensubmittedthatthe productsinthecopyrightsuitatone hand and designs and trademarks suit on the other hand are hot identicalandthatCSNo.918/2017i.e.CS(COMM)867/2018pertains totheinfringementofdesignandtoSuitNo;i78/2017pertainstothe passing off-and Suit No.l79/2017 pertaihs.to the infringement of copyright in,the indhstrial desip.and that whereas the suit for ^ infringementofdesignshadbeentransferredtothisCdutt.byvirtueof operation of Section 22.(4),of &e Designs Act, 2O0O-::.iio such provisions are availableundertheTrademark Actand CopyrightAct and different provisions ofIgiyiaid/applibable in suits pertaining to infringenient of designs. infrin^meht|bf copyright in industrial drawings and passing offpd that,die defence available in the said three suits aye different,./c <
11 TherespondenthasSrthersuhMt^'thatthe questionsoflaw involved m all the three suits are also,different and that thus the © ^ transfer petitions are hJfeppe:®ectgi|#sato onbehalfoftherespondentwhilstplacingrelianceontheobservations ofthe Hon'ble Full Bench ofthis Court(comprising three Hon'ble Judges)inJl/uAanid/(sHpra)topara33.3totheeffect; "We are also ofthe view that a composite siiitfor mfringententofaregistered design andapasstngoff action wouldnotlie/ne Cmrtcould,however,tr which are common to the two suits. The discretion of the court in this matter would necessarily be paramount."
12. The chart submitted by the petitioners of the pending suits shows the subject matter, date ofinstitution, status,ofthe suits and products involved in the suits with the respondent's admission m relationtheretothatthe suits areto betriedtogethertothe effect: © CHARTOFFENDINGSUITS T.R.P.(C)93/2018AND 94/2018 SuitNo. Subject matter Date ofinstitution: Status as. 918/2018 Piracy of registered design -;23.08.20^:/: y.1?■■.'i-V 'A'. • Transferred. (6 this Hon'ble Court, renumbered as C.S. (COMM) 867of2018 T.M.178/ ' 2017 Passingoff, 12.09.2017. 5 !•; v.-.'. ■■ •-!',. ^. Subjectmatter of TR.P. (C.) 93 of2018 T.M. 179/2017 Infringement of copyright -12.09:201(7 Subjectmatter of TR.P.(C.)94of2018 I. IDENTITYOF C4W^ OFACTION as. 918/2017 Product involved:- LYKKE's Fixed Circular Knitting Needle, interchdrig^lei^^^ing WMdle & Cable thereof& SinglePointKnittingNeedle^
25. That the impugned designs are identical and/or a substantial and fraudulent imitation of the Plaintiffs saidregistered designs. The defendants have copied all impugnedgoodsfor thepurpose ofsale. The defendants are alsopublishing,exposingorcausing to bepublished or exposedfor sale their impugned goods bearing the impugned design and are otherwise so using it in relation thereto in the course oftrade. Comparison of defendants'impugned designs applied on the impugned goods and corresponding registered design andpending application oftheplaintiffisproducSherein^below: Comparison pf Plaintiffs prpduct A and Defendants' productD Plaintiffs Registered Design No.249067 (KNITPRO BAMBOO ' FCNVDSISV,.'.,. a?' Defendant's ImpiignedDesign FCN-US[7]) D Comparison:of Plaintiffsproduct At and Defendants' productDI Front View PlaintiffsRegistered Design No.249067 (KNITPRO BAMBOO ICN- US[7]) ImpugnedDesign (LYKKEICN- VS[7]) >■ - ■ V 3 « ' ' r; ' ■ '■*,[3] 1'.... -.J; 1 { •:; ■■■' o Comparison of Plaintiffsproduct AZandDefendants' productD[2] Desigit No.240967 (lOUTPRO CABLE) Defendants (LYKKECABLE) Plaintiffs product B and Defendants' productE Pldihtiff Registered Design No}:^249066 (KNITPRO BAMBOO ICN - US15) Defendant's I impugned Design (LYKKEICN US15) 1.1, Mfm ■# a PlaintiffsproductC andDefendants' productF Design Nd.263053 (KNITPRO BAMBOOSTN-US
10) (LYKKESTN- USIO \ l ^ i ■ -i V "" 'v'' ' ■ mmw "imm {»8 • '■/' ' i ••: i
1. A8'- ■•-A' 1 l 4^-jil'- 1 i 1- F f- /V r LYKKEINTERCHANGEABU NEEDLE•US7(4.S0ram) SSSs ^.U KNITPROSYMFONIEINfERCHANGEABLE NEEDLE-US7(4.50mml lYKKEIHTERCHANtjCAUU NEEPIE-US7(fl-Mmm)■ m Al Cause ofAction ^ "36. The cause ofactionfor thepresentsuit has been set out in the preceding paras. The caiise ofactionfor the present suit hasfor thefirst time arose on the plaintiff become aware of the defendants' adoption and use of o designs in the month ofLast Week ofJune 2017in the market of New Delhi markets viz. Parliament Street, Bafakhamba, Chanakyapuri etc. Cause ofactionfurther arose when plaintiffs enquiry made thereafter revealed that the defendants are commercially using, soliciting, selling,publishing,exposing,etc. theimpugned deignsin relation to the impugned goods and were doing so in the markets ofDelhi including New Delhi markets and also through the various wieb-sites jnamely wwri'.lvkkecrdfts.corm www athazdn.com. \^-'\www. frinsesuipblvco.com: www.wolfandfauh.com etc. wherein the defendants are also sohctim^i distributors ahd retailers of their impugnedfgopds iunder the impugned designs, the cause of ddiipif continuing and is accruing day-by-day mdshdffcontinue to so accrue till the defendants cease with' T(L impugned adoption and user. V ^ i' iLT.M.i78/20l[7] Product Inolved:-^lYKKE's'F0dfkircular Knitting Needle, interchangeable Knitting Needle & Cable thereof&SinglePointKnittingNeedle.
24. That the impugned LYK.IC shape trademark/trade dress applied by the defendants in relation to their T- O said lOllTPRO SYMFONIE shape trademark/trade dress. The defendants have copied all the above mentioned shape trademark/trade dress ofthe plaintiff. The Defendants are applying the impugned KNITPRQ SYMFONIE shape trade mark/trade dress on their impugnedgoodsfor thepurposeofsate. The defendants are alsopublishing,exposing orcausing to bepublished or exposedfor sale theirimpugned goods bearing the impugned shap^ trade^ mark/trade dresf pnd are otherwiseso usingifin reladpmihefeto in the course of trader Comparisonofd^^ ' impugnedshape trade mark/trade dress applied on the impugned goods (Uid the plaintiffs said KNITPRQ SYMFONIEshape trade \ ii • ^ Tr •' y. mdrk/trade dressisproduced herpin-below: Plaintiffs a said KNitPROSYMFOME SHAPE MARK/TRAilE DRESS l§iTRADE^ Impugned LYRIC \SHAPF>\- TRADE ^MARK/TRADE DRESS V o Al A[2] D[1] D[2] O' O' m I IS Cause ofAction:-
35. The cause ofactionfor thepresentsuit has been set outin theprecedingparas. The cause ofactionfor the presentsuit hasfor thefirst time arose on theplaintiff become aware ofthe defendants ' adoption and uSe'of impugned trademark/trade dress when they came across the impugned, LYKKE products of the defendants bearing the impugned trademark/trade dress in the month ofLast Week ofJune 2017in the market of New Delhi markets viz. Parliament Street, Barakhamba, Chanakyapuri etc. CauSe of action further arose whien-piaintiff^^hq0y made thereafter revealed that the defendants are commercially using, soliciting, selling, publishing, exposing, etc. the impugned KNITPRO SYMFONIE shape trade mark/trade dress in relation to the impugnedgoods and Were doing so in the markets ofDelhi including New ' f O www, frinsesuyylvco.com. www, olfandfaun.com etc. wherein the defendants are also soliciting distributors and retailers of their impugned goods under the impugned trademark/trade dress. The cause ofaction is still continuing and is accruing day-by-day and shall continue to so accrue till the defendants cease with its impugned adoption and user." Hi. T.M.179/2017 Product involved:-, LYKKE'S Interchangeable Knitting Needle& Cablkassemblydhere^
8. Thatby virtue copyj;igfit m-t^^4dif drawing, the plaintiff has the ekclusiMfights therein, inter alia within the meaning of'iS'i^tidffflMIpfthe Copyright Act 1957including topubKsfnhd-feproh^ the work in any materialform includikgft^Aepictwn:in materialform in three dimensions ofa 2-dimensidhdTwork and vice-verse and otherwise deal with it in the course of trade. The technical IndUstrial'Mrdfiiig fff-Ylhe- subject matter product namely KNITPRO SYMFORNIE inter changeable circular needle shall refer and include the technical Industrial Drawing of its variant also. The technical Industrial drawing of the plaintiffs subject o o > Aa _J2M 3as 1L& ifiQ g^s, -I-^n. - lao an. changeablecircular Needle C[3].5mm) tLiOSS ?—sa&s JEfiiL-,; 128;! >Ni 3&a £as JUl... • eiSQ.lun' m. L ! r^qrq fo&f afo/iiwm;ifli^aL3c;a3K T eSM q:.U. -e- (2.04; SZlSLRtL C».fJ / O 4«iRKk9KSH58Q5r®^^ 1 „ 1 ! toi // <0 n; E[7] ±0.[1] 3&0 Cause ofAction:-
34. The cause ofactionfor thepresentsuit has been set out in the preceding paras. The cause ofactionfor thepresent suit hasfor the first time arose on the plaintiff become aware of the defendants' adoption and use of impugned Industrial Drawing when they came across the impugned goods under the impugned the impugned LYKKEproducts (based on the impugned Drawing) in the month ofLast Week ofJune2017in the marketofNew Delhimarkets viz. Parliament Street, Barak^qh^ etc. Cause of action further arose wkehv^gmtiffs enquiry made thereafter revealed that the dejp^qnts are commercially using, soliciting, selling^ pui(0hmg, exposing, etc. the impugned LYKKE prbdiicts 'ifbased on the impugned Drawing) and were^Moihg <so^n the markets of Delhi including New DelhVfnarketshr^00ihrough the various web-sites namely www.lvkkecrdfts.ebm. www,amazon.com, www, frinsesuvplyco.com. www,wolfandfaun.com etc. wherein the defendants dPfflso^Mieii^ distributors and retailers oftheir impugned goods. The cause ofaction is still continuing and is accruing day-by-day and shall continue to so accrue till the defendants cease with its impugned adoption and user." T • Order dated11/05/2018in C.S. (COMM)867of2018 • Order dated30/07/2015in TR.P.(C)no.15of2015"
13. Reliance was also placed on behalf of the respondent on the verdict of this Court in Smithkline Beecham Consumer Healthcare GMBH and Ors. Vs. Hindustan Lever Limited and Ors. 2002(1) ALLMR 1043 decided on 03.07.2002 to contend that the three suits are based on separate causes of:uGtion with the reliance having placedon paras 19&20 ofthe said verdictwhich read to the effect: "19. In the light cfthe princifl^/Uiid'down by the Privy Council arid affirmed by the Suppeme--^ can it be.said that thesuitoftheplaintiffs is.ffitrfed by OrderII, Rulepl of the C.P.C.? Theplaintiffsfiled ihespit in DelhiHigh Court for infringementofdesigniqnd'fpfpassing offas also unfair competition. Primary fplfpf?plqmdd in that suit was injunction restraining thefpffiilffiffdn ofthe design articles in question (toothbrushes),for ff iMfw^ose ofsale and by way of ancillary orders including deactivation or handffgfbfer'dfmbfMifdies and casts and 'Other material used on the offending articles were claimed. The pfesentTsuit of the plaintiff is. based on the infringement oftheir copyright and reliefhas
1999. Thus the cause of action in the present suit has accrued much after thefiling ofthe Delhi Suit. The issues involved in Delhi Suit are differentfrom the issues involved which the evidence required is a copy of the design registration. In respect of passing off the evidence to establish, the right is advertisements and sale of toothbrushes of the plaintiffs. In a copyright auction the evidence will be totally different. In any event everyfresh act of importation of a fresh mould would give to the plaintiffs under Section 51 read with Section 2(m) ofthe Copyright Act, 1957. In the facts of the present case, admittedly the cause of action upon which the plaintiffs have sited is different and distinctfrom the cause ofaction in the Delhiproceedings. Afpbserved by-theSupreme Court in Bengal Waterproof }LM.Is casdwhenever,and wherever a - person commits breach of qr registered trade mark of another he commits a recurring act of breach' df such trademark giving a recurring'andfresh cause ofaction at each tithe ofsuch infringement to the party aggrieved.'The ratio ofthisjudgmentis clearlycaqffticqble tothefactsofthe present case. It is, therefore, not possible to sustqin the finding of the learned-Single Judge that the suit of the plaintiffs was barred by Order!fRule 2. Regarding question(iiifi ^ ' ■ ■ ■ ■. ■ • J-,.
20. Having held thaPffe.suit is.mot barred under Order II, Rule 2 ofthe C.P.C. the questiqn pfthe said suit being an ■ abuse of process of law really does not survive. Dr. Tulzapurkar, however, urged that if one looks into the O material on which'hhPf>e^hSfft^qf0l^, it is clear that cause of action was avditaMe tofhe'plaintiffs when the plaintiffs discovered that the defendants PepsodentPopular toothbrush were available in the mdrket and that by reason of sale of said Pepsodent Popular toothbrush, plaintiffs rights were allegedly Violated. He, submitted thqt the plaintiffs could have also claimed infringement ofcopyright in Delhi Suit. Moreover, the plaintiffs chose not to agitate dA plaintiffs, according to Dr. Tulzapurkar, amounts to abuse ofprocess oflaw. Dr. Tulzapurkar relied upon the decision ofthe Supreme Court in the case ofState ofU.P. v. Nawab Hussein. We are unable to accept the submission of the learned Counsel. In Nawab Hussein's case the Supreme Court was concerned with a question whether the suit was barred by res judicata. There the petitioner who was dismissedfrom servicefiled a writpetitionfor quashing the disciplinary proceedings on the ground that he was not afforded a reasonable opportunity to meet the allegations against him and the action tdken against him was malafide. The Petition wasj dismissed: Thereafter he'filed a suit in which he challenged the order ofdismissal, on the ground, vJ inter alia, that he had been:appointed by theI.G.P:and that the Dy.I.G.P. wds nqt'compete0:to dismiss him byvirtue of Article 311(1) ofthe Constitution. The'Supreme Coui^theld that the suit was barredby theprinciples ofconstructive res judicata. Thus the Supreme Court:was:dealing with a case where the previously instituted.p' roceedings and the proceedings in which a^decisibh^iyd^:given were in respect ofthe same cause ofactiond.b.'0s^issalfrom service. The said decision has no a0>licdtpl0g0if^fgcts ofthe present case.In the presentcase thesipfBjbMsedon totally different cause ofaction and thqfasis,^theJgitt'suit is importation ofmoulds into Bombay inf9^ihjljf§je circumstances it is difficultto accept the argument that the proceedings in the saidsuitamountto abuse ofprocess oflaw." O " ffTtf© ■ ■
14. Undoubtedly,in view ofthe verdict ofthe Hon'ble Full Bench of,this Court (comprising three Hon'ble Judges) in Mohan Lai (supra) it has been laid that the three suits are based on separate causes,of action nevertheless in terms ofthe verdict ofthis Court in Mohan Lai(supra) itself it has been led vide para 33.[3] as observed © the Court is ofthe view that there are aspects which are common to the all suits.
15. The verdict ofthe Hon'ble Full Bench ofthis Court(comprising five Hon'ble Judges) dated 14.12.2018 in Carlsberg Breweries A/S. Vs. Som Distilleries and Breweries Ltd. AIR 2019 Delhi23 indicate that the issue involved in Mohan Lai(supra) was subject matter ofa reference,which was taken up in Carlsberg Breweries A/S(siipra) wherein the Hon'ble Full Behcfi fom to be determined by it withthe third issne-bping to the effect;:
"III. Whether the conception ofga$sihg offas•available under the Trade Marks can befoined with thkpction under the Designs Act when the same is mutually inconsistent with that ofremedy'under the Designsi^Act, ■ 2000?"
16. The Hon'ble Full Bench ofthis.Court(comprising five Hon'ble "tv.v.--w- 6 '- ". w'fvi?. rT K ■ ■ Judges)in Carlsberg Breweries A/S(supra) observed vide para 45&46thereoftothe effect: - ^ "45. It is clear therefore, that'the basic,facts which,impel a plaintiff to approach a court, complaining of design 0^ infringement are thp-sdnteyas in tlwfase\ofpassing off. In such circumstances, itis-ihaiihicei0M^f}mta cause ofaction 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 td join disparate causes ofaction. Order II Rule 2 compels the whole claim to be clubbed together.Speaking on the effectofthelatter(OrderIIRule[2]) the Supreme Court, noting its previous rulings, said in M/s Raptakos, Brett vi' M/S Ganesh Property AIR 1998SC 3085, (S^
46. We are also ofthe opinion that a composite suit has the advantage ofa bird"s eye view by the court, with respectto a common set offacts: iffor some reason, the claimfor design infringement is prima facie weak and the plaintiff cannot secure interim relief, it does not have toface uncertainty of another action before another court; the same court can review the samefacts and evidence, and conclude pendente lite, ifprima facie passing off is made out, necessitating interim relief" After having made reference to the. verdict of the Hon'ble Supreme Courtin Kusum Ingots & Alloys Union ofIndia 2004(6) ^ see254observed vide para44totheifeffect: "44, It is evident that there is.a similarity betwkenrthe nature ofinferences and conclusions that are presentedfp the court, in the two causes ofaction. Significantly, the complaint ofpassing offas well as that of design infringementfmpftafffrom the same fact: ' sale or offerfor sale, byfheJdefendant ofthe rivalproduct. In this context, it is relevantJp potice that the expression "cause ofaction" wasi{explainedInfhis incisive manner in Kusum Ingots cfe Alld^fy Uffori ofdndia 2004(6)SCC254 as: X ^.L..- "everyfact which would be necessaryfor theplaintiff O to prove, iftraversMfdn-prde^ tQifSiffyp6ft his right to the judgment ofthe Court'. Negativelff^ut;it would mean that everything which, if not proved, gives the defendant an immediate right to judgment, would be part of cause of action." thus, obsemng to the effect that the suits for complaining of design infringement and the suit of a case of passing off are based on T and thus it is inconceivable that the cause of action can be 'split' in I ■. - ■; ■ some manner and be presented in different suits. Vide paras 63 & 64 ofthe verdict ofthe Hon'ble Full Bench of this Court(comprising five Hon'ble Judges) in Carlsberg Breweries yl/S'(sMpra/the reference was answered to the effect:
63. On accountofexistence ofcommon questions oflaw and fact between the two causes ofaction ofinfringement ofa registered design and. passing off. therefore to a considerable extent, the evidence ofthe two causes ofaction will be common.In such.a slfuation to avoid multiplicity of ^ proceedings there shbuld take place joinder of the two causes ofaction ofinfringement ofa registered design and passing!off against the same ^defendant in one.-suit, otherwise multiplicity ofproceedings.will result in waste of time, money andenergypftheparties andalso ofthe courts. r' ^''^1
64. The reference is. answeFed/ Ihy holding that one composite suit can be ifiled by'.p'plaintiff against one defendant by joining two ^causes] of action, one of infringementofthe registered^desi'^pfjheplaintiffand the secondpfthe defend^ffassingyof^itk]goods as that ofthe plaintiff on account ofThe gd&ds'^of the defendant being fraudulent or obvious imitation i.e. identical or deceptively _ similar, to the good&i(^theplaintiffj
17. it is thus apparent thltHrfthe Wcurns^ of the case, it becomes inevitable that the proceedings of the TM No.178/2017 & TM No.179/2017have essentially to be transferred to the Court where the proceedings in CS(COMM)No.867/2018 are pending and the proceedings in TM No.178/2017 & TM No.l79/201.[8] are directed to [ttj^Gi:-i ^' ■-■4^':ff-l^ 1. r o^ the proceedings in CS (COMM) 867/2018 to be placed before the Roster Bench on 05.07.2019 along with the records of the said,cases. JUNE ll^ 2019/vm ANUMALHOTRA^/j.^^ I -f ! r ^ vXA /• ' V ^, 1, Hi,H ^,[1] '/ft',[1] •-S ' XU. V- A,, A[3] •fji.Y'' "Sf'.W'i-. 'M X> I?'-! i> f»« '• "3 •A' i w i/vj-'-n r u