Anurag Sanghi & Anr v. M/S Knitpro International

o + 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. Samreen Khan, Adv. versus M/S KM II'ROINI FRNAI IONAI. :;■■■■ Respondent ■' Tteough;, ^ A ■ + TR, P:r(C)No.94/20l8; , < > ' ANURAGSANGHI&ANR. ' , ANUKAUo Mr. M.K. Miglani, Adv. with ,Mr. Samreen Khan, Adv. versus knitpro intIrnationa^ 7-Through;' ^ 'Mr. Ajay Amitabh Suman, Adv. O ■ ■ ■ ■ , HON^E MS. JUSTICE ANU MALHOTRA .nTDGMENT

ANTJ mat TTOTRA, J. The petitioners Mr. . Anurag ; Sanghi and M/s Sanghi Internatidhal Vide Transfer Petitions (C) 93/2018 & 94/2018 seek the ■ withdrawal of the suit titled ^ mitp>-^ ^''temational Vs. Anurag PagelofZ' TRPCC] 93 & 94/2017 ^ ' M Sanghi bearing TM No.178/2017 & TM No.179/2017 both pending m the Court of the ADJ-04, PHC, New Delhi to this Court and seek t at the same be tried with the suit titled as Knitpro International Vs. Anurag. Sanghi & Anr. bearing CS (COMM) NO.867/2018 already transferred to this Court. Since the issue involved in both the transfer petitions is the same, the two petitions are being disposed of by t e common order.

¶2The proceedings in CSi0P» 800^ which smt bearing No. CS 918/2017 was ihffltuted befe^; the learned Coh^,ofthe ADJ at ® PatialaHouse.Court, New Delhi was transferred in tdrrtistof Section 22(4) of the Designs Act, 2000 tp' this Court vide prier dated

12.04.2018 , of the learned ADJ-04, 'PHC, ;New Delhi in , view of the I defence taken by the defendants to that suit i.e. the present petitioners herein which suit had been filed by -the respondent to the present petitions i.e. M/s. Knitpro ltiterha)jo.nal a^^plamtiff thereo , wi e defendants in the said suittfc the prdsentT^tm^^ that the court of the ADJ did noj-hdve'w jurisdiction to uonsi er e . player for the cancellation of the design^ the plamtiff of CS f) No 918/2017 i.e. the respqn|e^f^V^

¶3The said suit was re-numbered as CS(COMM)867/2018 .on receipt in^ this Court. The, proceedings, dated 11.05.2018 in C

(COMM) 867/2018 read to the effect; and^ of this Court in TRP CO 93 & 94/2017 Paint & Hardwares, AIR 2013 Delhi 143 ne present suit is one of them and other suits are awaited. List on 23:07.2018. The avowed contention of the petitioners herein arrayed as the defendants to the suit CS (COMM) 867/2018 is to dte effect that m ^ this suit CS (COMM) 867/2018, the respondent herein as plain i thereof has alleged the piracy of its registered designs by the petitioners herein and has sought to restrdn |re petitioners torn selling LYKKE knitting needles haying certain desipy features w ic © the fespondentdierein are alleged ar^umitation of 'ai^spondent's SYMFONIE fitting needles and also violate terms of cppipromise arrived at between the parties in an earner suit bearing No,CS(OS) No 2142/2015 as decreed by this Couft ; - s' It has been further submitled on behalf of the petitioners herein that on 12,09.2017 the respondentdo the present transfer petitions filed u • tK/V "Mn 178/2017 titled as M/s Knitpro two more suits bearing fJM .No-T/s/^Ul 0 ^ international rs. Arnrragm^ alleging cause of action for passing off by the petitioners herein involving the very sainej|wtting needles as^olved m the desi^., suit and that the respondent "herein filed another suit earing No 179/2017 titled as M/s Knitpro International vs. Anurag ang i unot/ier (i.e. copyri^t suit) alleging infHpgement c rtf the knitting needles as beitig th J industrial drawings of one of the Knittmg 1 - matter of the Designs suit and of the passing off suit. © Page 3 of 2" TRP CQ ^ 94/2017 o o

¶6Copies of the plaint of the said suits bearing TM Nod78/2017 & TM No.179/2017 as also of OS (COMM)867/2018 are placed on record.

¶7It has thus been submitted by the petitioners that in view of the verdict of the Hon'ble Full Bench of this Court (comprising three Hon'ble Judges) in Mohan Lai, Proprietor of Mourya Industries v. Sona Paint & Hardwares, AIR 2013 Delhi 143 decided on

15.05.2013 where the suit, for uifingemetf^^^^^ suit for passing off had been.filed in close proximity with eaph other, they may be tried together. The petitioners .have; also subjnitted that it would be in the interest of justice if the t^e'e suits are triedtdfether by this Court itf as much as they are based'ph the same causerof action arising out of the same set bfTap^,£!nib|tween the same parties and that it would also save judiciaf im|a||:|p if the three Suits are tried together. ,y^• .2- ' ^ ,

¶8The respondent has petitioners. It is essential to observe, However, that in the proceedings in CS (COpvI) 867/2018 which is the suit alleging infringement of the designs in the needl% filed by t|||S#deHt, the counsel for thp norties thp* wnnld include the counsel for the plaintiff of CS I r01VIMt867/7.niR he. the counsel for the respondent to the present netition had informed the learned Court of three suits having been filed before the District Court and that all the three suits had to /be heard by this Court in view of the judgment of the Hon'ble Full Bench of this Court in Mohan Lai (supra) and that CS (COMM) 867/2018 was one of them and that the others were awaited. TRP CC] 93 & 94/2017 Page.4 of: .-'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 against the same respondent on whose behalf, the counsel present had accepted notice and .submitted that he had no objection if the suit bearing tM No.l7Q/2015 that was pending in the Court of ADJ, PHC, New Delhi was transferred to this Court to be tried with CS (OS) 2142/2015 between the same-patties in respect of the infringement of the 'design'J fierydihg;in tiiis Court. It has also been observed by this Court vide the.|ai^prder dated,|(|p7.2^ to the effect: i ^ "Botii'suits have to he tried together ,in view ofthe idw laid down in Mohan Lai vs. Sana Paint & Hardwar^y 2013 (55) PTC 61 (Del) (FB}. ^ Accordingly, file of suit bearing TM No. 170/2015 pending in the court of Ms. -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) I . 2142/2015. ' . " The petition is dispd^ed-'pfin above terms.

¶9The 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 against passing off suit; . and: seeking action for infringement ofcopyright in industrial drawings of the products. - TRP CQ 93 & 94/2017 n 10, It Has been denied on behalf of the respondent that the products in the three, suits i.e. TM No.178/2017, TM No. 179/2017 & CS No.918/2017 now renumbered as CS (COMM) 867/2018 are the same I and. It has been submitted that the products in the copyright suit at one hand and designs and trademarks suit on the other hand are hot identical and that CS No.918/2017 i.e. CS (COMM) 867/2018 pertains to the infringement of design and to Suit No;i78/2017 pertains to the passing off-and Suit No.l79/2017 pertaihs . to the infringement of copyright in, the indhstrial desip . and that whereas the suit for ^ infringement of designs had been transferred to this Cdutt.by virtue of operation of Section 22 .(4), of &e Designs Act, 2O0O-::.iio such provisions are available under the Trademark Act and Copyright Act and different provisions of Igiyiaid/applibable in suits pertaining to infringenient of designs. infrin^meht|bf copyright in industrial drawings and passing off pd that, die defence available in the said three suits aye different, ./c < The respondent has Srther suhMt^' that the questions of law involved m all the three suits are also, different and that thus the © ^ transfer petitions are hJfeppe:®ectgi|#sato on behalf of the respondent whilst placing reliance on the observations of the Hon'ble Full Bench of this Court (comprising three Hon'ble Judges) in Jl/uAan id/(sHpra) to para 33.3 to the effect; "We are also of the view that a composite siiit for mfringentent of a registered design and a passtng off action would not lie/ne Cmrt could, however, tr suits together, if the two suits are fded in dose proximity and/or it is of the view that there are aspects Page 6 of 2'1' TRP CC] 93 & 94/2017 . which are common to the two suits. The discretion of the court in this matter would necessarily be paramount."

¶12The chart submitted by the petitioners of the pending suits shows the subject matter, date of institution, status, of the suits and products involved in the suits with the respondent's admission m relation thereto that the suits are to be tried together to the effect: © CHART OFFENDING SUITS T.R.P. (C) 93/2018 AND 94/2018 Suit No. Subject matter Date of institution: 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) 867 of 2018 T.M.178/ ' 2017 Passing off ,

12.09.2017 . 5 !•; v.-.'. ■■ •-!' ,. ^ . Subject matter of TR.P. (C.) 93 of 2018 T.M. 179/2017 Infringement of copyright -12.09:201(7 Subject matter of TR.P.(C.)94of2018 I. IDENTITY OF C4W^ OF ACTION as. 918/2017 Product involved:- LYKKE's Fixed Circular Knitting Needle, interchdrig^lei^^^ing WMdle & Cable thereof & Single Point Knitting Needle^

¶25That the impugned designs are identical and/or a substantial and fraudulent imitation of the Plaintiffs said registered designs. The defendants have copied all the above mentioned designs of the plaintiff. The Defendants are applying the impugned design on their TRP Cd 93 & Page 7 of 2.7-impugned goods for the purpose of sale. The defendants are also publishing, exposing or causing to be published or exposed for sale their impugned goods bearing the impugned design and are otherwise so using it in relation thereto in the course of trade. Comparison of defendants' impugned designs applied on the impugned goods and corresponding registered design and pending application of the plaintiff is producSherein^below: Comparison pf Plaintiffs prpduct A and Defendants' product D Plaintiffs Registered Design No. 249067 (KNITPRO BAMBOO ' FCNVDSISV ,.'., . a?' Defendant's Impiigned Design FCN-US7) D TRP (C] 93 & 94/2017 Page is of 2,7 Comparison: of Plaintiff s product At and Defendants' product DI Front View Plaintiffs Registered Design No. 249067 (KNITPRO BAMBOO ICN-US7) Defendant's Impugned Design (LYKKEICN-VS7) >■- ■ V 3 « ' ' r; ' ■ '■* ,3 1 ' .... -.J; 1 { A1 DI •:; ■■■' TRP [Q 93:& 94/2017 Page 9 of 2 / o Comparison of Plaintiff s product AZ and Defendants' product D2 Plaintiffs Registered Desigit No. 240967 (lOUTPRO CABLE) Defendants Impugned Design (LYKKE CABLE) Comparison of Plaintiffs product B and Defendants' product E Pldihtiff Registered Design No} :^249066 (KNITPRO BAMBOO ICN - US15) Defendant's I impugned Design (LYKKE ICN US15) .1, B Mfm ■#f TRP (C) 93 & 94/2017 Page 10 of 27-a Comparison of Plaintiffs product C and Defendants' product F Plaintiffs Registered Design Nd.263053 (KNITPRO BAMBOO STN-US 10) Defendant's Impugned Design (LYKKESTN-USIO \ l ^ i I -i V "" 'v'' ' I mmw "imm {»8 • '■/' ' i •• : i 1 . A 8'- ■•-A' l 4^-jil'- i 1-F TRP (C) 93 & ^Al2Qn Page 11 of2^?; f- /V r LYKKEINTERCH ANGEABU NEEDLE • US7 (4.S0ram) SSSs ^.U KNITPRO SYMFONIE INfERCHANGEABLE NEEDLE-US7 (4.50mml lYKKE IHTERCHANtjCAUU NEEPIE - US7 (fl-Mmm) I m Al Cause of Action ^ "36. The cause of action for the present suit has been set out in the preceding paras. The caiise of action for the present suit has for the first time arose on the plaintiff become aware of the defendants' adoption and use of impugned designs when they came across the impugned LYKKE products of the defendants bearing the impugned TRP (C] 93 & 94/2017 Page 12"of 2' o designs in the month of Last Week of June 2017 in the market of New Delhi markets viz. Parliament Street, Bafakhamba, Chanakyapuri etc. Cause of action further arose when plaintiffs enquiry made thereafter revealed that the defendants are commercially using, soliciting, selling, publishing, exposing, etc. the impugned deigns in relation to the impugned goods and were doing so in the markets of Delhi including New Delhi markets and also through the various wieb-sites j namely 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 md shdff continue to so accrue till the defendants cease with' T(L impugned adoption and user. V ^ i' iLT.M.i78/20l7 Product Inolved:-^lYKKE's 'F0dfkircular Knitting Needle, interchangeable Knitting Needle & Cable thereof & Single Point Knitting Needle.

¶24That the impugned LYK.IC shape trademark/trade dress applied by the defendants in relation to their impugned goods and business are identical and/or a substantial and fraudulent imitation of the Plaintiffs TRP CC] 93 & ^ T-O said lOllTPRO SYMFONIE shape trademark/trade dress. The defendants have copied all the above mentioned shape trademark/trade dress of the plaintiff. The Defendants are applying the impugned KNITPRQ SYMFONIE shape trade mark/trade dress on their impugned goods for the purpose of sate. The defendants are also publishing, exposing or causing to be published or exposed for sale their impugned goods bearing the impugned shap^ trade^ mark/trade dresf pnd are otherwise so using if in reladpmihefeto in the course of trader Comparison of d^^ ' impugned shape trade mark/trade dress applied on the impugned goods (Uid the plaintiffs said KNITPRQ SYMFONIE shape trade \ ii • ^ Tr •' y. mdrk/trade dress is produced herpin-below: Plaintiffs a said KNitPRO SYMFOME SHAPE MARK/TRAilE DRESS l§iTRADE^ Defendant's Impugned LYRIC \SHAPF>\-TRADE ^MARK/TRADE DRESS r • A D TRP CC] 93 & 94/2017 Page 14 of.2'? V o Al A2 B D1 D2 l|1 R 515 of 2^ O' O' m I IS Cause of Action:-

¶35The cause of action for the present suit has been set out in the preceding paras. The cause of action for the present suit has for the first time arose on the plaintiff become aware of the 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 of Last Week of June 2017 in 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 impugned goods and Were doing so in the markets of Delhi including New Delhi markets and also through the various web sites narnely wwwJvkkecrafts.com. www, amazon. com. TRP [C) 93 & 94/2017 ' 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 of action 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 & Cablk assemblydhere^

¶8That by virtue copyj;igfit m-t^^4dif drawing, the plaintiff has the ekclusiM fights therein, inter alia within the meaning of 'iS'i^tidffflM Ipf the Copyright Act 1957 including to pubKsf nhd-feproh^ the work in any material form includikgft^Aepictwn: in material form in three dimensions of a 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 matter KNITPRO SYMFONIE inter-changeable circular needle including its different variants has been given as herein below:-TRPCC) 93 & 94/2017 Page 17 of 2' o o > Aa _J2M 3as 1L& ifiQ g^s, -I-^n . -lao an. changeable circular Needle C3.5 mm) tLiOSS ?—s-a&s JEfiiL-,; 128;! >Ni 3&a £as JUl... •eiSQ.lun' m . L ! r^qrq HsM circular Needle (4.5 mm.) f-o&f a fo/i iwm;i fli^aL3c;a3K T eSM q:.U. -e-(2.04; SZlSLRtL C».fJ / O 4«iRKk9KSH58Q5r®^^ " ! toi // <0 n; E 7 ±0.1 3&0 ES==S=E===q=^ jSjgjsaoaygtsei—-^->-=F===»~»^=' --ft— ' ^ ~ tssaaaaaae&tacgr TRP [C] 93 & 94/2017 Cause of Action:-

¶34The cause of action for the present suit has been set out in the preceding paras. The cause of action for the present suit has for 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 LYKKE products (based on the impugned Drawing) in the month of Last Week of June 2017 in the market of New Delhi markets 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 of their impugned goods. The cause of action 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." Respondent's admission that suits are to be tried together in: TRP[C] 93 &94/2017 . Page 20 of2, T • Order dated 11/05/2018 in C.S. (COMM) 867 of 2018 • Order dated 30/07/2015 in TR.P. (C) no. 15 of 2015"

¶13Reliance 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 placed-on paras 19 & 20 of the said verdictwhich read to the effect: "19. In the light cf the princifl^/Uiid'down by the Privy Council arid affirmed by the Suppeme- -^ can it be. said that the suit of the plaintiffs is.ffitrfed by Order II, Rulepl of the C.P.C.? The plaintiffs filed ihespit in Delhi High Court for infringement of design iqnd'fpf passing off as also unfair competition. Primary fplfpf?plqmdd in that suit was injunction restraining the fpffiilffiffdn of the design articles in question (toothbrushes),for ffiMfw^ose of sale and by way of ancillary orders including deactivation or handffgfbfer 'df mbfMifdies and casts and 'Other material used on the offending articles were claimed. The pfesentTsuit of the plaintiff is. based on the infringement of their copyright and relief has O . been claimed in thot pespect. The causp^^^ action in the present suit is impofidtion offfifringingfopy (moulds) into India. According to the plaintiffs it is only in August, 1999 they acquired knowledge of the existence of Bombay mould. In fact the learned Trial Judge has recorded a prima facie finding of fact that mould has been imported in Bombay in 1999. Thus the cause of action in the present suit has accrued much after the filing of the Delhi Suit. The issues involved in Delhi Suit are different from the issues involved in the present suit. The evidence in the Delhi Suit is entirely different from the evidence in the present suit. The Delhi Suit was based upon an action for design infringement for TRPCC] 93 & 94/2017 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 every fresh act of importation of a fresh mould would give to the plaintiffs under Section 51 read with Section 2(m) of the Copyright Act, 1957. In the facts of the present case, admittedly the cause of action upon which the plaintiffs have sited is different and distinct from the cause of action in the Delhi proceedings. Afpbserved by-the Supreme Court in Bengal Waterproof }LM.Is casd whenever, 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'and fresh cause of action at each tithe of such infringement to the party aggrieved. 'The ratio of this judgment is clearlycaqffticqble to the facts of the 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!f Rule 2. Regarding question (iiifi ^ ' I I I I . I • J- , .

¶20Having held thaPffe. suit is.mot barred under Order II, Rule 2 of the C.P.C. the questiqn pf the said suit being an I 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 to fhe'plaintiffs when the plaintiffs discovered that the defendants Pepsodent Popular 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 of copyright in Delhi Suit. Moreover, the plaintiffs chose not to agitate violation of copyright in thai suit qnd when they could not succeed in getting interim relief they moved the Court at Barodq. and thereafteir this Court. This conduct of the dA TRP eg 93 & 94/2017 , . . Page 22 pf 27 plaintiffs, according to Dr. Tulzapurkar, amounts to abuse of process of law. Dr. Tulzapurkar relied upon the decision of the Supreme Court in the case of State of U.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 dismissed from service filed a writ petition for 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 mala fide. The Petition wasj dismissed: Thereafter he'filed a suit in which he challenged the order of dismissal, on the ground, vJ inter alia, that he had been: appointed by the I.G.P: and that the Dy. I.G.P. wds nqt'compete0:to dismiss him by virtue of Article 311(1) of the Constitution. The'Supreme Coui^theld that the suit was barred by the principles of constructive 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 of the same cause of actiond. b. '0s^issal from service. The said decision has no a0>licdtpl0g0if^fgcts of the present case. In the present case the sipfBjbMsedon totally different cause of action and thq fasis, ^ the Jgitt'suit is importation of moulds into Bombay in f9^ihjljf§je circumstances it is difficult to accept the argument that the proceedings in the said suit amount to abuse ofprocess of law. " O " ffTtf© I I

¶14Undoubtedly, in view of the verdict of the 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 of the verdict of this Court in Mohan Lai (supra) itself it has been led vide para 33.3 as observed hereinabove where the said suits were filed in close proximity with each other it would be appropriate that they are tried together where TRPCC] 93 & 94/2017 Page-23 of2: © the Court is of the view that there are aspects which are common to the all suits.

¶15The verdict of the Hon'ble Full Bench of this Court (comprising five Hon'ble Judges) dated 14.12.2018 in Carlsberg Breweries A/S. Vs. Som Distilleries and Breweries Ltd. AIR 2019 Delhi 23 indicate that the issue involved in Mohan Lai (supra) was subject matter of a reference, which was taken up in Carlsberg Breweries A/S (siipra) wherein the Hon'ble Full Behcfi fom to be determined by it with the third issne-bping to the effect;: "III. Whether the conception of ga$sihg off as •available under the Trade Marks can be foined with thkpction under the Designs Act when the same is mutually inconsistent with that of remedy' under the Designsi^Act, I 2000?"

¶16The Hon'ble Full Bench of this. Court (comprising five Hon'ble "tv . v.--w-6 '- " . w'fvi?. rT K I I Judges) in Carlsberg Breweries A/S (supra) observed vide para 45 & 46 thereof to the 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\ of passing off. In such circumstances, itis-ihaiihicei0M^f}mta cause of action 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 of action. Order II Rule 2 compels the whole claim to be clubbed together. Speaking on the effect of the latter (Order II Rule 2) the Supreme Court, noting its previous rulings, said in M/s Raptakos, Brett vi' M/S Ganesh Property AIR 1998 SC 3085 , is an authority for the proposition , that a suit cannot be rejected as partly barred. , TRPCC] 93 & 94/2017 (S^

¶46We are also of the opinion that a composite suit has the advantage of a bird"s eye view by the court, with respect to a common set of facts: if for some reason, the claim for design infringement is prima facie weak and the plaintiff cannot secure interim relief, it does not have to face uncertainty of another action before another court; the same court can review the same facts and evidence, and conclude pendente lite, if prima facie passing off is made out, necessitating interim relief " After having made reference to the. verdict of the Hon'ble Supreme Court in Kusum Ingots & Alloys Union of India 2004 (6) ^ see 254 observed vide para 44 to theifeffect: "44, It is evident that there is. a similarity betwkenrthe nature of inferences and conclusions that are presentedf p the court, in the two causes of action. Significantly, the complaint ofpassing off as well as that of design infringement fmpftaff from the same fact: ' sale or offer for sale, byfheJdefendant of the rival product. In this context, it is relevantJp potice that the expression "cause of action" wasi{explained In f his incisive manner in Kusum Ingots cfe Alld^fy Uffori ofdndia 2004 (6) SCC 254 as: X ^ .L..- "every fact which would be necessary for the plaintiff O to prove, if traversMfdn-prde^ tQifSiffyp6ft his right to the judgment of the 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 basically the same facts which impel the^ plaintiff to approach a Court TRP CC] 93 & 94/2017 T and thus it is inconceivable that the cause of action can be 'split' in I I . - I ; I some manner and be presented in different suits. Vide paras 63 & 64 of the verdict of the Hon'ble Full Bench of this Court (comprising five Hon'ble Judges) in Carls berg Breweries yl/S'(sMpra/the reference was answered to the effect:

¶63On account of existence of common questions of law and fact between the two causes of action of infringement of a registered design and. passing off. therefore to a considerable extent, the evidence of the two causes of action will be common. In such.a slfuation to avoid multiplicity of ^ proceedings there shbuld take place joinder of the two causes of action of infringement of a registered design and passing! off against the same ^defendant in one.-suit, otherwise multiplicity of proceedings .will result in waste of time, money and energy pf the parties and also of the courts. r' ^''^1

¶64The reference is . answeFed/ Ihy holding that one composite suit can be i filed by'.p'plaintiff against one defendant by joining two ^causes] of action, one of infringement of the registered^ desi'^pfjhe plaintiff and the second pf the defend^ffassingyof^itk]goods as that of the plaintiff on account of The gd&ds'^of the defendant being fraudulent or obvious imitation i.e. identical or deceptively _ similar, to the good&i(^ the plaintiff j

¶17it is thus apparent thltHrfthe Wcurns^ of the case, it becomes inevitable that the proceedings of the TM No. 178/2017 & TM No. 179/2017 have 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.l 79/201.8 are directed to be tra:nsferred from the Court of the ADJ-04, PHC, New Delhi where they were pending initially to this Court to be taken Up together with TRPCC] 93 & 94/2017 Page 26 of 2" [ttj^Gi :-i ^' ■-■4^':ff-l^

¶1r 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 ANU MALHOTRA^/j.^^ I -f ! r ^ vXA /• ' V ^ , 1, Hi,H ^ ,1 '/ft' ,1 •-S ' XU . V-A,, A3 •fji .Y'' "Sf'.W'i- . 'M X> I?'-! i> f»« '• "3 •A' i w i/vj-'-n r u TRP CC)93 & 94/2017 Page 27 of.