Trademark

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.

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L. Gopika Murthy

Gopika is a fourth year student at National Law School of India University, Bangalore. She was formerly the Chief Editor of the Indian Journal of Law and Technology. Her first exposure to Intellectual property law and SpicyIP was through the University Moot Rounds at NLSIU, Bangalore in her first year. She has been regularly following the developments in the field of IPR since then and she hopes to contribute to the reporting of such developments. Her areas of interest in IP include copyrights, open access, fair dealing and trademarks.

One comment.

  1. AvatarGajendra Phulwari

    Dear blogger first of all very nive post but it raises a lot of questions in my mind

    what is the rational behind that you cannot institute both infringement and passing of action in the same suit just because the cause of action for both actions is different under statute and common law principals ..?

    is it just bacause the grounds for both actions are different and what happens if the plaintiff is falling under both criterias but plaintiff’s goods are being passed of in different jurisdictions in India … does he have to go separately in each court of relevant jurisdiction .. does the very reasoning of the court is not contrary to effective remedy and prevention of multiplicity of suits..

    what do we mean by close proximity…?

    Reply

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