Micolube India Ltd. v. Rakesh Kumar

Micolube India Ltd. v. Rakesh Kumar trading as Saurabh Industries & Ors.;

CS(OS) No. 1446 of 2011  

Mohan Lal, Proprietor of Mourya Industries v. Sona Paint & Hardwares;

CS(OS) No. 384 of 2008

199 (2013) DLT 740

Similar questions of law were involved in the above mentioned cases. The said questions of law were referred in the first case(Micolube) to a larger bench of the Hon’ble High Court of Delhi, by a single judge. Thus, the questions involved came to be heard by the full bench of the Hon’ble High Court of Delhi.


In the first case(Micolube), Plaintiff was in the business if manufacturing and marketing petroleum products and other allied and cognate goods. It claimed to have created two novel designs in containers used for selling the said products and obtaining registration for the same. When the Plaintiff found out that the Defendants were selling their goods in identical containers and are thus committing piracy of registered design of the Plaintiff, the Plaintiff instituted an action for permanent injunction against the Defendants.

In the second case(Mohan Lal), Plaintiff was in the business of manufacturing and trading of mirror frames, door pipe, handles and other allied and cognate goods. Plaintiff had two design registrations in respect of it’s two mirror frames.  Plaintiff came to know that the Defendant had started to manufacture and market products bearing designs which were identical and similar to Plaintiff’s designs. Thus, the Plaintiff instituted a suit against the Defendant seeking a decree for permanent injunction restraining piracy of registered design, passing off, damages, etc.

The questions/issues that were involved were as follows:

I. Whether the suit for infringement of registered Design is maintainable against another registered proprietor of the design under the Designs Act, 2000?

II. Whether there can be an availability of passing off in the absence of express saving or preservation of the common law by the Designs Act, 2000 and more so when the rights and remedies under the Act are statutory in nature?

III. Whether the conception of passing off as available under the Trade Marks can be joined with the action under the Designs Act when the same is mutually inconsistent with that of remedy under the Designs Act, 2000?

The Hon’ble full bench by 2:1 majority disposed off the reference in the following terms:

“Issue No. I: A holder of a registered design could institute a suit against a defendant who is also in possession of a registered design.”

It was held that a suit for infringement of registered Design is maintainable against another registered proprietor of the design under the Designs Act, 2000 and the expression “any person” found in Section 22 of the Designs Act would not exclude a subsequent registrant as no such words of limitation are found in Section 22.

Reliance was majorly placed on the following grounds/principles:

The Court relied on the basis of Section 2(d)(definition of “design”), Section 4(Prohibition of registration of certain designs), Section 5(Application for Registration of Designs), Section 6(Registration to be in respect of particular article), Section 9(Certificate of registration), Section 10 (Register of designs), Section 19(Cancellation of Registration) & Section 22 (Piracy of registered design) of the Designs Act, 2000 and held that a composite reading of the aforesaid provisions would show that a Plaintiff is entitled to approach the court and plead that his registered design is unique and that the defendant registrant has obtained registration which is neither new nor significantly distinguishable when compared to the Plaintiff’s registered design.

In a suit for infringement Plaintiff seeks to assert the monopoly rights based on uniqueness, newness and the originality of his design qua the registrant. The entry by the Controller of Designs in the Register of Designs is only a prima facie evidence of any matter so directed to be done by the Designs Act or authorized in the Register of Designs. In reaching the said conclusion, the Hon’ble Court relied on Section 10(4) and 38(Certificate of Controller to be evidence) of the Designs Act.

No procedure is prescribed for prior publication of an application made seeking registration of a design, followed by any request for entertaining an opposition to such an application for registration. The procedure under the Designs Act unlike that which is contained under the Patents Act and the Trade Marks Act does not entail entertaining an opposition to registration. There is thus, a marked difference in the language as contained in Sections 10(4) and 38 of the Designs Act as compared to Section 31(Registration to be prima facie evidence of validity) of the Trade Marks Act, 1999 which speaks of prima facie evidence of validity once a trademark is registered.

There are no words of limitation in Section 4, 11 and 22 which would exclude institution of an action against the subsequent registrant.

“Issue No. II – A holder of a registered design can institute an action for passing off.”

It was held that the Plaintiff would be entitle to institute an action for passing off in respect of a design used by him as a trademark provided that the action contains the necessary ingredients to maintain such a proceeding.

Reliance was majorly placed on the following grounds/principles:

Trade Marks Act confers certain statutory rights, it does not deprive a user of an unregistered trade mark the right to protect the misuse of his mark by a defendant Therefore, in so far as a design, which is registered under the Designs Act is concerned, it may not have the statutory rights, which a registered trade mark has, under the Trade Marks Act, it would certainly have the right to take remedial steps to correct a wrong committed by a defendant by instituting a passing off action.

A passing off action would be based on a plea that: the design, which is an unregistered mark, was being used by the plaintiff for the purposes of business; and that the plaintiff’s goods and/or services had acquired a reputation and/or goodwill, which were identified in the minds of the consumers, by associating the design/the mark, with the goods and/or services.  The plaintiff would not have to look to the Designs Act, for instituting such an action.

Therefore, the argument that the legislature by not incorporating a similar provision, such as Section 27(2) of the Trade Marks Act, 1999, has by necessary implication excluded the availability of such like remedy to a plaintiff, who uses a registered design, as his trade mark is untenable.

In order to institute a suit, a right has not to be necessarily found in a statute enacted by a legislature. Unless the statute expressly or by necessary implication prohibits the jurisdiction of a court to entertain a suit, a civil court cannot refuse to entertain a suit. Jurisdiction of Civil court to deal with civil cases can only be excluded by clear and unambiguous language used by special acts enacted for that purpose. Ordinarily, the ouster of a jurisdiction of a civil court is not to be inferred.

“Issue No. III – The two actions cannot be combined in two suits”

It was held that a composite suit for infringement of design and passing off would not lie. The Court could, however, try the suits together, if the two suits are filed in close proximity and/or it is of the view that there are aspects which are common to the two suits.

Reliance was majorly placed on the following grounds/principles:

Cause of action in the infringement suit under the Designs Act could be different from that which obtained in a passing off action.

The fundamental edifice of a suit for infringement under the Designs Act would be the claim of monopoly based on its registration, which is premised on uniqueness, newness and originality of the design. Whereas, the action for passing off is founded on the use of the mark in the trade for sale of goods and/or for offering service; the generation of reputation and goodwill as a consequences of the same; the association of the mark to the goods sold or services offered by the plaintiff and the misrepresentation sought to be created by the defendant by use of the plaintiff’s mark or a mark which is deceptively similar, so as to portray that the goods sold or the services offered by him originate or have their source in the plaintiff. It is trite to say that different causes of action cannot be combined in one suit.

Author: Ankit Rastogi

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