Micolube: Dual Protection and the Doctrine of Election

On 15th May, 2013 a three judge bench of the Delhi High Court delivered its decision on the Micolube case that was reserved to it by a single Judge Bench of the Delhi High Court in 2011. The plaintiffs in the case were registered owners of  designs who claimed that the defendants were infringing on their registered designs,  and sought the remedies of suing for infringement, even when the defendant is a registrant as well as that of passing off against the defendants. The issues framed by the Court were whether the two remedies were possible and that whether these remedies could be sought under a single suit.

The first issue framed by the Court was whether a suit for infringement could be filed against a defendant who was a registrant himself. This issue rises in the context where two registrants, might successfully establish  and agree that their designs are new and significantly distinguishable from known or existing designs while disagreeing about the newness and distinguishability between their two designs. Registration of a design creates a monopoly in favour of the registrant and the Designs Act under Sections 19 and 22 seeks to protect that monopoly. The Delhi High Court ruled that a composite reading of the provisions of the Design Act indicated that a registrant, who has a monopoly right over a design could sue the defendant, who has a registered design,  on the grounds that his/her design was not new or significantly distinguishable as a natural corollary of his right to protect the monopoly of his design. 

The second issue discussed by the Court was whether the common law tort of passing off could be invoked by the holder of  registered design. This question arises as an action for passing off usually arises in the context of trademarks when the other party is misrepresenting, intentionally or otherwise, that his goods are that of the plaintiff and such misrepresentation causes or is likely to cause substantial damage to the reputation/ goodwill of the plaintiff and his/her goods. The 2011 decision of the Delhi High Court in the same case, had come into criticism for its decision that an action for passing off could not be intiated by the holder of a registered design as, such a remedy of passing off was not available under the Designs Act. This argument was discarded by the three judge bench of the Delhi High Court. The Court, in 2013, relying on McCarthy on Trademark and Unfair Competition noted that dual protection may exist under the two IPR regimes of design law and trademark law, especially as shape which was a relevant consideration in this case, is protected under trademark and design laws in India. The Court ruled that while simultaneous registration as a trademark and design is not permitted, there is no bar on a design post registration on being used as a trademark. Therefore, dual protection under design law and trademark law is permitted.

The final issue discussed by the Court was whether a composite suit for infringement of a registered design could be filed along with an action for passing off. The Court noted that the basis for a suit for infringement under the Designs Act was based on the” uniqueness,newness and originality of the design” while an action for passing off is opted for when a party is misrepresenting using the plaintiff’s trademark, the consequences of which includes damage to the reputation and goodwill of the plaintiff and his/her goods. Therefore, as the two remedies stem from different causes of action, the Court ruled that they cannot be combined in the same suit. The Court, however, noted that for convenience, if the two matters are instituted in the court at close proximity to each other and if the Court has jurisdiction in both matters, then they could be heard together, albeit as separate causes.