Plea Of ‘Passing-Off’ Can’t Be Negated Solely On Ground That Plaintiff Had Asserted Trademark Rights In Registered Designs: Delhi High Court

[22 June 2022] The Delhi High Court has held that a plea of passing-off cannot be negated solely on the ground that the Plaintiff had asserted trademark rights in the registered designs. A composite suit seeking action in respect of both design infringement and passing off is maintainable.
A single judge bench comprising Justice Jyoti Singh observed that while it is trite that asserting trademark rights in registered designs makes the designs vulnerable, however, where the elements of the design are used as a larger trade dress get-up, presentation through its packaging etc., the passing off claim shall lie. It observed, “A composite suit that joins two causes of action, one for infringement of a registered design and other for passing off the Plaintiff’s goods, is maintainable…Even if the Plaintiff asserts a claim of trademark in a registered design, which makes a design vulnerable, it is open to the Plaintiff to plead that it has a goodwill and reputation and Defendant No.1, by misrepresentation is passing off its goods as that of the Plaintiff, thereby causing damage and injury and Defendant No.1 by fraudulent imitation of the article to which the registered design is applied is guilty of infringement of the said design.” The court found merit in the contention of Defendant that Plaintiff had sought to assert trademark rights in the registered designs, thereby making the designs vulnerable and entitling Defendant to take this as a defence. However, the question raised was whether irrespective of the said pleadings, Plaintiff could lay a claim of passing off, not restricted or limited to the registered design alone but in the overall get-up, trade dress etc.
The court stated that – “It is settled law that parties can raise alternate and inconsistent pleas but should not be permitted to raise pleas which are mutually destructive of each other. Therefore, even if the Plaintiff asserts a claim of trademark in a registered design, which makes a design vulnerable, it is open to the Plaintiff to plead that it has a goodwill and reputation and Defendant No.1, by misrepresentation is passing off its goods as that of the Plaintiff, thereby causing damage and injury and Defendant No.1 by fraudulent imitation of the article to which the registered design is applied is guilty of infringement of the said design.” Thus, the plea of passing off could not be negated only on the ground that the Plaintiff had asserted trademark rights in the registered designs and required consideration on its own merits.
The court also found that the defendant was estopped from taking any objection to the novelty of Plaintiff’s design since it has itself applied for registration of its own design in 2021 and the application was for registration in shape, configuration and surface pattern. Thus, its contention that no monopoly could be claimed over a concept which is common place or exists in nature was devoid of merit. The court held that– “Estoppel prevents Defendant No.1 from taking such contradictory stands. And the principle is clearly based on the maxim quod approbo non reprobo that no party to a litigation can be allowed to approve and reject or blow hot and cold at the same time.”