* IN THE HIGH COURT OF DELHI AT NEW DELHI

Reserved on: 27.08.2018

Pronounced on: 14.12.2018

+ C.S.(COMM) 690/2018 & I.A. No.11166/2018

CARLSBERG BREWERIES A/S. ..... Plaintiff

Through: Mr. Sudhir Chandra, Senior Advocate with

Mr. C.A. Brijesh, Mr. Peeyoosh Kalra, Ms. V. Mohini,
Mr. Udayvir Rana, Advocates.
Mr. Chander M. Lall, Sr. Adv. with Ms. Nancy Roy and
Mr. Rupin Bahl, Advocates for Intervenor.

Versus

SOM DISTILLERIES AND BREWERIES LTD. .. Defendant

Through: Mr. Kapil Wadhwa, Ms. Devyani Nath,

Ms.Kaveri Jain and Ms.Deepika Pokharia, Advocates for
defendant.
Mr. Rohan Alva, Mr.Reshabh Bajaj, Mr.Ankit Kaushal
and Mr.Sushant Singh, Advocates for Intervener.

Mr. Hemant Singh, Ms. Mamta. R. Jha, Ms. Shrutima and

Mr. Pranav Narain, Advocates, for interveners.

Mr. Dinesh Kumar Sharma, Advocate, Independent

Counsel Assisting the Court in terms of order dated
26.7.2018.
CORAM:
HON'BLE MR. JUSTICE S. RAVINDRA BHAT
HON'BLE MS. JUSTICE HIMA KOHLI
HON'BLE MR. JUSTICE VIPIN SANGHI
HON'BLE MR. JUSTICE VALMIKI. J. MEHTA
HON'BLE MR. JUSTICE VIBHU BAKHRU

CS (COMM) 690/2018 Page 1 of 67

MR. JUSTICE S. RAVINDRA BHAT
%
1. The reference to this larger, Special Bench of five judges, was
occasioned by the detailed speaking order of a learned Single Judge, in the
present suit, which sought the reliefs of infringement of design and a decree
for injunction against passing off. The learned Single Judge, by the order
dated 02.05.2017, referred the question as on the whether the decision in
Mohan Lal v. Sona Paint, 2013 (55) PTC 61 (Del) (FB) - hereafter “Mohan
Lal” on the aspect of maintainability of a composite suit in relation to
infringement of a registered design and for passing off, where the parties to
the proceedings are the same needs re-consideration by a larger bench in
the light of Order II Rule 3 CPC, which permits joinder of causes of action.
The decision in Mohan Lal (supra) was by a Full Bench of three judges.
During the pendency of this reference the dispute inter parties was rendered
moot due to a mutually acceptable settlement; nevertheless this court was
requested to hear and decide the issue, on account of the importance of the
subject matter.
2. We had the benefit of the draft judgment by Valmiki. J. Mehta, J. We
agree with his conclusions as well as his analysis and reasoning. However,
we are of opinion that it is also necessary to state additional reasons while
recording the same conclusions.
3. The facts are not elaborately discussed; the present suit (out of which
this reference arose) was filed, complaining of infringement of a registered
design as well as passing off (of the plaintiff‟s trade dress) in respect of the
bottle and overall get up of the “Carslberg” mark. The defendant objected to
the frame of the suit, pointing out that per Mohan Lal (supra), the two claims

CS (COMM) 690/2018 Page 2 of 67

(for passing off and reliefs regarding design infringement) could not be
combined in one suit. The single judge analysed parties‟ submissions and felt
that the issue decided in Mohan Lal (supra) required a second look; he
therefore, referred the matter for appropriate orders to the Chief Justice. This
Special Bench was constituted, resultantly.
4. Mohan Lal (supra) decided, principally the question whether a passing
off remedy is maintainable in the context of a complaint for infringement of
copyright in the design (hereafter for clarity referred to as “design right” and
“design infringement” to avoid confusion with the overlap with copyright).
The Full Bench formulated three questions to be determined by it; the third
issue:
"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?"

5. The majority in Mohan Lal (supra) held that as the cause of action for
a suit for infringement of a registered design is different from the cause of
action on which a claim of passing off is premised, two separate suits have to
be filed though, if filed at the same time, or in close proximity, they may be
tried together as there may be some aspects which may be common.
Pertinently, the majority view states:
"24.3 Thus, the 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

CS (COMM) 690/2018 Page 3 of 67

 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 [See Dabur India
Limited v. K.R. Industries (2008) 10 SCC 595 @ page 607
paragraph 34].

25. Having regard to the nature of the two actions, in our

opinion, the two actions cannot be combined. Though as
indicated, at the beginning of discussion of this issue if the two
actions are instituted in close proximity of each other the court
could for the sake of convenience try them together, though as
separate causes, provided it has jurisdiction in the matter.
Before we conclude our discussions, we would like to refer to
some of the cases which have been adverted to in the order of
reference which represent the dichotomy in the view expressed
by different Benches of this Court. It is these differences, which
led to the instant reference being made.

25.1 The first case to which reference has been made is: Tobu
Enterprises. This was a case where the plaintiff being a
manufacturer of "mini bike tricycle", obtained registration qua
the design of its product, on 16.08.1976. Defendant no. 1 in that
case, also obtained registration for design for its product,
which was also, a tricycle; though on a later date, i.e.,
06.10.982. A learned Single Judge of this court refused to grant
injunction on the ground that the plaintiff had not approached
the court with "clean hands" in as much as, it had attempted to
obtain an injunction based on its latest model of tricycle,
whereas it had in fact obtained registration of a different design
of the said tricycle. The other ground on which the injunction
was refused, was that, the design of the plaintiff was distinctly
different from that in respect of which the defendant had

CS (COMM) 690/2018 Page 4 of 67

 obtained registration. The learned Judge was of the view that
not only the general appearance was different but the absence
of the front-wheel mudguard in the design of the plaintiff made
all the difference.

25.2 While these reasons were given in the latter part of the
judgment, the learned Single Judge in the earlier part of the
judgment discussed his view on certain aspects of law, based on
the acceptance of the allegation made by the plaintiff that the
defendant's design was identical to that of the plaintiff. The
learned Single Judge was considering the provisions of the old
Designs Act of 1911 (in short the Old Act). It must be stated
that substantially the provisions in respect of which the learned
Judge expressed his opinion, are parimateria with the
corresponding provision obtaining in the Designs Act, i.e., the
Act of 2000. The learned Single Judge, while interpreting old
Section 53 (now Section 22) came to the conclusion that since
both the plaintiff and defendant no. 1 were proprietors of
registered designs, it would be "absurd" to issue injunction in
favour of one of the parties to the suit by restraining the other
from using the registered design. The learned Single Judge
went on to observe that: "The net result, therefore, is that when
the design of both the parties is registered, no action in the
nature of issue of injunction or recovery of damages is
permissible". The view taken was: the remedy available to an
aggrieved party in such a case would be to move for
cancellation of registration under Section 51 of the old Act
(now Section 52). The learned Judge, while recognizing the fact
that Section 47 of the old Act (now Section 11) created a
substantive right in favour of the person whose design was
registered, the said provision, according to the learned Judge,
did not state that a registration which is obtained earlier in
point of time will prevail over the later registration. The
learned Judge thus opined: "that registration of a design can,
therefore, prevail and is to be protected against infringement
only when the opposite party does not possess any registration.
The obvious result is that if each of the parties is having

CS (COMM) 690/2018 Page 5 of 67

 registration of design, each of them can use that design for its
products." (See paragraphs 6, 7 & 9 to 11 at pages 361 to 365)

25.3 On the aspect of the availability of the remedy of passing

off, the learned Judge opined that passing off was a common
law right and that right was subject to the provisions of a
particular statute. Since Section 53 of the old Act provided for a
remedy by way of an injunction and claim of damages and
rendition of accounts, passing off remedy stood excluded.
Learned Judge in coming to this conclusion found support from
the provisions of Section 53 of the old Act which placed a cap
on the maximum damages which could be claimed by a
plaintiff. This, according to him, was in contradiction to what
the general law or common law provided. (see paragraph 12
pages 365 and 366).

25.4 This view found favour with another Single Judge of this
court in the case of Indo Asahi Glass Co. Ltd. vs. Jai Mata
Rolled Glass Ltd. & Anr. Though in this case the learned Single
Judge declined to grant an injunction based on the principle set
forth in Tobu Enterprises case - what is not discernable clearly
from the facts stated in the judgment, as to whether the
defendant also had a registration in its favour. The plaintiff in
this case was in the business of manufacturing and selling, inter
alia, sheet glass. In respect of the same, the plaintiff had
obtained registration under the Designs Act. The defendant
appears to have pleaded that the design applied on its product
was supplied by a West German firm. As indicated above, the
narration of facts do not indicate as to whether the German
firm had obtained a registration in its favour. Since the
judgment in the case of Tobu Enterprises has been applied, one
would have to presume that there was registration both in
favour of plaintiff and the defendant. We must confess that this
judgment does not independently discuss the intricacy of the
Designs Act, a fact which has been noticed in a subsequent
judgment of this Court. The reference to Tobu Enterprises is
found in paragraphs 24 and 25 of the judgment.

CS (COMM) 690/2018 Page 6 of 67

 25.5 The view taken in Tobu Enterprises was also followed in
S.S. Products of India vs. Star Plastics 2001 PTC 835 (Del). It
appears that the learned Single Judge was not referred to the
views expressed in a latter judgment, that is, Joginder Metal
Works case and Alert India vs. Naveen Plastics 1997 PTC (17)
(Del).

25.6 In the line of judgments which have taken the view

expressed in Tobu Enterprises is a judgment of the Madras
High Court in the case of Eagle Flask Industries Pvt. ltd. vs.
Bon Jour International &Anr. 2011 (48) PTC 327 (Mad). This
is a short judgment where the learned Single Judge declined to
grant injunction to the plaintiff since one of the partners of the
defendant firm claimed it also had a registered design in its
favour. The product in issue was a vacuum flask. The learned
Judge noted that both parties had applied for cancellation of
each others registered design, with the Controller of Designs,
and therefore, in those circumstances he was of the view that
they could not prevent each other from applying their
respective registered design to the products manufactured by
them. The learned Single Judge appears to have applied the
principles encapsulated in Section 30(2)(e) of the Trademarks
Act.

26. With respect to, in our view, the judgment in Tobu

Enterprises failed to appreciate that the registration of a design
is prima facie evidence of the fact that the design is unique,
novel or original or that it is significantly distinguishable from
any known design or combinations of designs. Thus, the
registration in that sense creates a monopoly in favour of the
registrant for the period prescribed under Section 11 of the
Designs Act. The registrant thus has, in our opinion, the right
to assert this monopoly against all and sundry, including a
subsequent registrant. There are no words of limitation in
Section 4, 11 and 22 which would exclude institution of an
action against the subsequent registrant. The decision in the
suit would leave ultimately only one party unscathed.
Therefore, in our opinion, the rationale supplied in Tobu

CS (COMM) 690/2018 Page 7 of 67

 Enterprises that the only remedy available to the plaintiff
against a subsequent registration would be to seek cancellation
of the registration, is flawed.

26.1 It is precisely for this reason, if in a suit for infringement

the defendant pleads in defence the grounds which are
available for cancellation under Section 19, the suit is
necessarily required to be transferred to the High Court under
the provisions of Section 22(4) of the Designs Act. In our
opinion, the manner in which the scheme of the Designs Act
operates, a decree passed in a suit for infringement, shall be
binding on the Controller, who will have to cause an entry in
that regard in the register of designs. On the other hand, an
order of cancellation under Section 19 passed by the Controller
is amenable to appeal under sub-section (2) of Section 19. In
addition, under sub-section (2) of Section 19 of the Designs Act
the Controller has the power to refer, at any time, the petition
filed before him, to the High Court for decision.

27. We also, respectfully, disagree with the view taken by the

learned Single Judge in Tobu Enterprises with respect to non-
availability of a remedy of a passing off action qua a design
used as a trademark. The learned Judge has come to this
conclusion for the following reasons: Firstly, that Section 53 of
the old Designs Act does not provide for a remedy of action of
passing off and; secondly, Section 53 of the old Designs Act
caps the extent of damages which could be claimed in an action
for infringement and consequential relief of damages. Both
reasons, according to us, overlook the fundamental principle
that 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 a civil court to deal with civil
causes 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. The presumption is ordinarily otherwise. [See

CS (COMM) 690/2018 Page 8 of 67

 Dhulabhai vs. State of AIR 1969 SC 78, State of Andhra
Pradesh vs. Manjeti Laxmi Kantha Rao 2000 (3) SCC 689,
Guda Vijayalakshmi vs. Guda Ramachandra Sekhara Sastry
(1981) 2 SCC 646 and Kihoto Hollohan vs. Zachillhu (1992)
Supl. (2) SCC 651].

28. Section 9 of the Code clearly provides that a court shall

have jurisdiction to try all suits of civil nature except suits in
respect of which cognizance is either expressly or impliedly
barred.

29. A somewhat similar view has been taken by a single Judge

of this court in Joginder Metal Works. The view in this case is
contrary to the view taken by the single Judge in Tobu
Enterprises. We respectfully agree with the view taken in the
Joginder Metal Works.

30. Another Single Judge of this Court in Alert India vs. Naveen
Plastics has disagreed with the view taken in Tobu Enterprises.
This was a case, where the plaintiff which was a manufacturer
of footwear soles, had filed a suit for infringement of its
registered design and for passing off and other ancillary reliefs.
The defendant no. 2 in that case, who was the proprietor of
defendant no. 1, pleaded in defence that he had also obtained a
registered design, and thus, had the exclusive right to apply the
said design to the product manufactured by it. To be noted, the
defendant in that case, was also manufacturing footwear soles.
The design of the defendant, however, was registered, in point
of time later to that of the plaintiff.

30.1 Based on the judgment of Tobu Enterprises it was

contended that such a suit was not maintainable against the
holder of a registered design, and that, the only remedy
available was to seek cancellation under Section 51-A of the
old Designs Act.

30.2 The learned Single Judge, however, repelled both these

contentions. The single Judge based his judgment on the

CS (COMM) 690/2018 Page 9 of 67

 Division Bench judgment of the Allahabad High Court and the
Lahore High Court in the case of Mohd. Abdul Karim vs. Yasin
& Anr. AIR 1934 All. 798 (DB) and Qadar Bakhsh vs. Ghulam
Mohd. AIR 1934 Lah. 709, respectively. The learned Single
Judge while taking into account the fact that the plaintiff's
design was registered at an earlier point in time, observed that:
"if the two designs are same or identical, in that case the
defendant, whose design was registered much later, cannot be
said to be 'proprietor' of a new or original design, not
previously published in India". The learned Single Judge based
on the judgments of the Allahabad High Court and Lahore
High Court, came to the following conclusion: a person
claiming to be proprietor of a registered design, which is not
new or original, and which is being used by others, since prior
to his registration, or such design, notwithstanding such
registration, is not entitled to seek legal remedies provided
under Section 53 of the Act (i.e., the old Act). The learned
Single Judge was thus, of the view that, the defendant would not
be entitled to seek legal remedies under Section 53 of the old
Designs Act, in case, he were to file a suit, against the plaintiff,
and therefore, could the defendant use such a registered design,
as a shield in a suit filed by the plaintiff. The learned Single
Judge was, therefore, of the view that the defendant who is
found to be a pirator of the design, cannot be allowed to defeat
the just and legal right available to him under law, including
the right to seek injunction under Section 53 of the old Act. (see
observations in paragraph 28 to 30 at pages 22).

31. On the aspect of non-availability of the remedy of a passing

off action, disagreement has been expressed by another Single
Judge of this court in the case of M/s. Smithkline Beecham Plc
& Ors. vs. M/s. Hindustan Lever Ltd. & Ors. 1999 PTC 775
(Del). The learned Single Judge has preferred the view taken in
Joginder Metal Works as against that which is expressed in
Tobu Enterprises. (See paragraph 13 at pages 781 and 782).”

CS (COMM) 690/2018 Page 10 of 67

6. The counsel for plaintiffs and others supporting them (Mr. Sudhir
Chandra and Mr. C.M Lall, senior counsel) argue that the Full Bench view is
incorrect because firstly, Order II Rule 3 CPC was noticeably overlooked. It
was submitted that the Supreme Court ruling in Dabur India Ltd. v. K.R.
Industries (2008) 10 SCC 595 was not correctly appreciated. It is argued that
Order II Rule 3 CPC specifically provides for joinder of different causes of
action in the same suit. It provides that the plaintiff "may unite in the same
suit several causes of action against the same defendant, or the same
defendants jointly; and any plaintiffs having causes of action in which they
are jointly interested against the same defendant or the same defendants
jointly may unite such causes of action in the same suit." Thus, the causes of
action in respect of the infringement of a registered design can be clubbed
with the cause of action arising on account of passing off, since the parties
are the same. Counsel submitted that Mohan Lal (supra), observed that
different causes of action cannot be combined in one suit and for that
purpose placed reliance on Dabur (supra), whereas, that decision is to the
contrary. In this regard, he points out that the Supreme Court ruled that two
causes of action may not be joined in the same suit, if the same Court does
not have the territorial jurisdiction to deal with both of them.
7. It was argued that Mohan Lal (supra) does not correctly appreciate the
conclusion drawn in Dabur India, and overlooks that two causes of action
cannot be clubbed in a composite suit, only where they do not arise within
the jurisdiction of the same Court. Reliance was also placed on two other
decisions of the Supreme Court in Paragon Rubber Industries & Ors. v.
Pragathi Rubber Mills & Ors. 2014 (57) PTC 1; and Dhodha House v. S.K.

CS (COMM) 690/2018 Page 11 of 67

Maingi (2006) 9 SCC 41, which were considered in Dabur India Ltd.
(supra).
8. Learned counsel argued that Order II Rule 3 CPC deals with joinder of
causes of action. The rule applies not only to cases involving only one
plaintiff, one defendant and several causes of action, but also to the cases
where there are two or more plaintiffs, two or more defendants and several
causes of action. Order II Rule 3 – counsel stressed, should be read with
Order I Rules 1 and 3. Two fundamental principles underlie Orders I and II,
namely,
(i) needless multiplicity of suits should be avoided; and
(ii) the trial of suits should not be embarrassed by simultaneous
investigation of totally independent and unconnected controversies.
9. It was submitted that if for some reason, the court feels, in a case that
the trial of multiple causes of action in a common suit is inexpedient,
inconvenient or likely to embarrass it, recourse to its powers to order
separate trials is always available, under Order II Rule 6. It was submitted
that these important provisions were lost sight of by the majority judgment in
Mohan Lal (supra) which proceeded on a textual interpretation of Order II
Rule 2, ignoring altogether the other provisions.
10. It was argued that Order II Rule 6, CPC enables the court to order
separate trials or to make such order as may be expedient in the interests of
justice wherever it appears it to be so if the joinder of causes of action in one
suit, may embarrass or delay the trial or is otherwise inconvenient. It was
emphasised that the expression “such other order” includes limiting the
action to some of the causes of action and excluding others or by directing
the plaintiff to elect which cause of action is to be proceeded with or with

CS (COMM) 690/2018 Page 12 of 67

which the plaintiff should proceed and which should not be proceeded with.
Counsel submitted that at the centre of exercise of discretion is the frame of
the suit. It was further urged that Order II Rule 6 is supplemental and in the
form of a remedy arising from Order II Rule 3. Learned counsel contended
that the latter rule enables the plaintiff to join all causes of action and unite
them in one suit against the defendant, where any right to relief in respect of
or arising from the same act or transaction or series of acts or transactions is
alleged to exist against one of several persons either jointly or severally. It
was submitted that Order II Rule 6 was inserted by an Amendment of 1976.
Before that, the rationale for ordering separate trials or to pass such orders
was that if two or more causes of action, joined in the same suit could not be
conveniently tried or disposed of under the amended rule, the court's power
to order separate trials (even though joined together), was enabled and
widened to order separate trials or make such similar order as were expedient
if it found that joinder of causes action could delay or embarrass the trial.
11. It was submitted that when two causes of action in respect of the same
party or parties arise out of the same subject matter, they should be clubbed
together for disposal on merits, in accordance with law to avoid any
conflicting decisions to state so, learned senior counsel relied upon Dr.
Kazimunissa v Zakia Sultana 2018 (11) SCC 208 and Hema Khattar v Shiv
Khera 2017 (7) SCC 716. It was argued that the court cannot require the
plaintiff to file separate suits but can only order separate trials. For that
purpose, the Court can call upon the plaintiff to suitably amend the plaint in
such a manner that allegations against different sets of defendants or in
respect of different reliefs may be set out separately so that the issue can be
separately framed for purpose of separate trials. Counsel relied on Inder

CS (COMM) 690/2018 Page 13 of 67

Bahadur Singh v Sita Ram (1941) ILR All 370 and Parshramsao v Hiralal
1947 Nag 86.
12. Counsel stressed that Order II Rule 6 does not contemplate that the
plaintiff should be asked to file separate suits and that failure to do so does
not empower the court to reject the plaint partially. It was stated that
convenience merely dictates that cause of action can at the most be ordered
to be tried separately, but within the framework of the same suit. It was
stated that the alternative order which Order II Rule 6 visualises must be
analogous to that order and not be for an order to file different suits.
Possibly, the court may frame issues for trial in one suit and order that the
trial will start with the issue regarding a relief and then proceed with an trial
of the issue regarding another cause to be sequentially later. It was submitted
that this is what is meant by “make such order or orders as may be
expedient”. However, separate suits cannot be insisted upon under the
provisions of the CPC.
13. It was stated that the joinder of allegations of design infringement and
of passing off, based on the same transactions and allegations against the
same defendant, was not a case of misjoinder of causes of action or parties
where the plaintiff could be called upon to elect which of the causes of
action it proposed to join. This was a suit based on a proper joinder of cause
of action in which the court is permitted for the sake of convenience, to order
separate trials if necessary, or make such orders in that regard and to that
end, as could be expedient. Parshramsao (supra), was relied upon by learned
counsel who also stated that Order VII Rule 10 is limited and confined in its
operation to returning the plaint where the court does not possess
jurisdiction. Likewise, the power of the court to reject the plaint under Order

CS (COMM) 690/2018 Page 14 of 67

VII Rule 11 is only in instances where the plaint does not disclose the cause
of action; or where the relief is undervalued; or where the relief claimed is
properly valued but the plaint is written upon insufficiently stamped paper;
and where the suit appears to be barred by law. It is submitted that the
ground of misjoinder of cause of action cannot be a ground for rejection of
the plaint in terms of the CPC, as it stands. Order VII Rule 11 contemplates
rejection of the plaint on grounds specifically provided. Therefore between
the two, i.e. Order VII Rules 10 and 11, the first dealing with the return of
plaint and the second, rejection of the suit, the ground of misjoinder of
causes of action cannot be covered by either. What is of importance in
considering whether the plaint is maintainable on allegations levelled or
contained in it and whether the court possesses jurisdiction (in all the shades
of its meaning i.e. subject matter territorial or pecuniary); the only concern is
if it does involve multifariousness in the sense that separate and several
disparate causes of action, each concerning separate defendants which
cannot be conveniently tried in one proceeding because they encapsulate
several unconnected causes of action, based on entirely different transactions
(and thereby seeking separate reliefs, thus fusing several suits into one) can
be fatal to the suit. In that event, the fatality is not one to be located within
Order II Rule 3, but because it is impermissible under Order II Rule 3.
14. On behalf of the defendants, it was argued by learned counsel, Mr.
Kapil Wadhwa and Mr. Rohan Alva, that the decision in Mohan Lal (supra)
has to be understood in the context of the Full Bench‟s ruling that
substantively, the two disparate causes of action were incapable of
unification in one suit. Therefore, the court emphasized that though the
underlying facts may be common, the nature of reliefs in many senses were

CS (COMM) 690/2018 Page 15 of 67

mutually exclusive, thus rendering a common trial inherently inconvenient.
It was urged that Order II Rule 3 might ipso facto lead one to conclude that
disparate causes of action can be united in one action. Yet, Order II Rule 6
contemplated that if the court felt that a common trial was inconvenient,
separate trials could be directed; the court could also order “otherwise”.
Here, it was emphasized that if and when the court felt – at any stage-
including at the threshold stage, that common trial or proceedings were
inconvenient, it could direct separate trials, or even that the plaint be
amended. If such an order was not complied with, courts were not helpless;
they could reject the plaint.
15. It is argued that Order I Rule 9 CPC provides specifically that no suit
shall be defeated for the reason of misjoinder or non-joinder of parties.
Counsel submitted that no such parallel provision exists under Order II with
respect to causes of action. Therefore, in case of misjoinder of causes of
action, a suit can be defeated. It is argued that misjoinder is not a bar for
maintainability of a suit under Order 7 Rule 11 (d) and a defect of misjoinder
of parties and cause of action can be waived. In this regard, counsel relied on
Prem Lata Nahata (supra) and Assembly of God Church v. Ivan Kapper
(2004) 2 CHN 360. Learned counsel outlined the diverse and disparate
elements in the two claims, i.e. for infringement and passing off and pointed
out that their trials involve often contradictory and diametrically different
claims, best suited to be proceeded separately. It was also submitted that
under the Designs Act, if the validity of a registered design is impugned, the
court in question has to cede the suit, which then has to be considered per
force by the High Court. On the other hand, no such compulsion exists in
respect of a passing off suit. This means, that if the design in a design

CS (COMM) 690/2018 Page 16 of 67

infringement suit (which also comprises a claim for passing off) is
challenged, a part of the suit only can validly be transferred. This
conundrum, emphasized counsel, exposes the weakness in the plaintiff‟s
argument with respect to incorrectness of Mohan Lal (supra).
16. It is clear from the above that the genesis of a composite suit is to
avoid needless multiplicity of suits and trial of suits should not be
embarrassed by simultaneous investigations of totally independent and
unconnected controversies. Under a composite design infringement and
passing off suit, there would be a parallel enquiry that the court would have
to undertake throughout the suit. Parties could also be faced with
contradictory situations such as a plaintiff could be required to prove prior
user which could provide evidence as to invalidity of a design. A composite
suit would also lead to a loss to the exchequer for the court fee payable for
each cause of action under Section 17 of the Court Fee Act. The reasoning in
Mohan Lal (supra) is in consonance with the provisions of Order II Rule 3
read with Rules 7 and Rule 8, and thus a composite suit for infringement of
registered design and action of passing ought to be held as a misjoinder.
17. It is argued by Mr. Dinesh Kumar Sharma, one of the learned counsel
assisting the court that a composite suit cannot be used as a ploy to confer
jurisdiction on a Court which has jurisdiction to try only the suit in respect of
one cause of action and not the other. This observation is relevant for a
composite suit in relation to infringement of copyright or trademark with a
passing off and not to a composite suit in relation to infringement of a design
with a passing off. This is because a provision similar to Section 62(2) of the
Copyright Act, 1957 which is specially designed to provide an additional
forum enabling the author to file a suit who may not otherwise be in a

CS (COMM) 690/2018 Page 17 of 67

position to file a suit at different places where his copyright was violated has
not been incorporated into the Designs Act, 2000. Therefore, akin to a
passing off action, a design infringement suit has to be instituted in a
jurisdiction where the defendant is located. Consequently, a composite suit
in relation to infringement of a design with a passing off should be
maintainable as on the same cause of action against the same defendants,
territorial jurisdiction made by the plaintiff on one cause of action, would be
sufficient for the other.
18. Mr. Rohan Alva, learned counsel argued that Part X of the Code of
Civil Procedure, 1908 (CPC) pertains to "Rules" and Section 129 therein
empowers the High Court of Delhi to make such rules to regulate its own
procedure in the exercise of its original civil jurisdiction. Furthermore,
Section 129 commences with a non-obstante clause and provides that such
rules may be made notwithstanding anything in this Code. He placed
reliance on M/s Print Pak Machinery v. M/s Jay Kay Papers Converters, ILR
(1979) II Del 28 (Full Bench); Iridium India Telecom Ltd. v. Motorola Inc.,
(2005) 2 SCC 145. It was highlighted further, that a Full Bench is
empowered in law to provide for a different procedure governing civil trials,
and in doing so, is not bound by the CPC and can so provide even when the
High Court rules are silent on that aspect. Counsel relied on Jugal Kishore
Paliwal v. S. Sat Jit Singh, (1984) 1 SCC 358 and Jasvinder Singh,
Geetanjali Singh & Anr. v. Mrigendra Pritam Vikramsingh Steiner & Ors.,
196 (2013) DLT 1 (FB).
19. It was submitted that Order II, Rule 3 is an enabling provision which
allows a plaintiff to exercise an option to institute a composite suit. Its
language read with other provisions of the CPC, makes it clear that a

CS (COMM) 690/2018 Page 18 of 67

plaintiff does not have an absolute right to file a composite suit. Since Order
II, Rule III is not a mandatory provision, it commences with the phrase "Save
as otherwise provided" which implies that unless otherwise prohibited, a
plaintiff may file a composite suit against a defendant. The said phrase needs
purposive interpretation to include different procedural rules for civil trials
as stipulated by judicial decision, especially those formulated by a Full
Bench. "Save as otherwise provided" should mean and include 'as otherwise
provided for by judicial decisions of the High Court', since the said phrase
does not use additional words limiting its scope or ambit. In this regard,
counsel sought aid of State of Rajasthan & Ors. v. Shri Noor Mohammad
(1972) 2 SCC 454.
20. The following points, arise for consideration by this court, in this
reference:
(a) Is the court compelled by anything in law to reject a plaint for
misjoinder, if two causes of action cannot be clubbed;
(b) Are the two causes of action, i.e. a claim for design infringement and the
other for passing off, so disparate or dissimilar that the court cannot try
them together in one suit;
Analysis and Conclusions
21. Point No.1: First, before this court discusses the rival contentions and
records its conclusions, it is necessary to extract the relevant provisions of
law. Order I CPC deals with joinder of parties. Its provisions, to the extent
relevant, (Rules 1 to 7) are as follows:

“1. Who may be joined as plaintiffs: All persons may be joined

in one suit as plaintiffs where-

CS (COMM) 690/2018 Page 19 of 67

 (a) any right to relief in respect of, or arising out of, the same
act or transaction or series of acts or transactions is alleged to
exist in such persons, whether jointly, severally or in the
alternative; and

(b) if such persons brought separate suits, any common

question of law or fact would arise.

2. Power of Court to order separate trial : Where it appears to

the Court that any joinder of plaintiffs may embarrass or delay
the trial of the suit, the Court may put the plaintiffs to their
election or order separate trials or make such other order as
may be expedient.

3. Who may be joined as defendants.: All persons may be joined

in one suit as defendants where-

(a) any right to relief in respect of, or arising out of, the same
act or transaction or series of acts or transactions is alleged to
exist against such persons, whether jointly, severally or in the
alternative; and

(b) if separate suits were brought against such persons, any

common question of law or fact would arise.

3A. Power to order separate trials where joinder of defendants

may embarrass or delay trial: Where it appears to the Court
that any joinder of defendants may embarrass or delay the trial
of the suit, the Court may order separate trials or make such
other order as may be expedient in the interests of justice.

4. Court may give judgment for or against one or more of joint

parties: Judgment may be given without any amendment-

(a) for such one or more of the plaintiffs as may be found to

be entitled to relief, for such relief as he or they may be entitled
to;

CS (COMM) 690/2018 Page 20 of 67

 (b) against such one or more of the defendants as may be
found to be liable, according to their respective liabilities.

5. Defendant not be interested in all the relief claimed: It shall

not be necessary that every defendant shall be interested as to
all the relief claimed in any suit against him.

6. Joinder of parties liable on same contract: The plaintiff

may, at his option, join as parties to the same suit all or any of
the persons severally, or jointly and severally, liable on any one
contract, including parties to bills of exchange, hundis and
promissory notes.

7. When plaintiff in doubt from whom redress is to be sought:

Where the plaintiff is in doubt as to the person from whom he is
entitled to obtain redress, he may join two or more defendants
in order that the question as to which of the defendants is
liable, and to what extent, may be determined as between all
parties.

22. Order II CPC, which deals with frame of suits, talks of joinder of
causes of action. The relevant provisions, Rules 1 to 8, are as follows:

“1. Frame of suit Every suit shall as far as practicable be

framed so as to afford ground for final decision upon the
subjects in dispute and to prevent further litigation concerning
them.

2. Suit to include the whole claim:(1) Every suit shall include

the whole of the claim which the plaintiff is entitled to make in
respect of the cause of action; but a plaintiff may relinquish any
portion of his claim in order to bring the suit within the
jurisdiction of any Court.

(2) Relinquishment of part of claim- Where a plaintiff omits to

sue in respect of, or intentionally relinquishes, any portion of
his claim, he shall not afterwards sue in respect of the portion
so omitted or relinquished.

CS (COMM) 690/2018 Page 21 of 67

 (3) Omission to sue for one of several reliefs- A person entitled
to more than one relief in respect of the same cause of action
may sue for all or any of such reliefs; but if he omits, except
with the leave of the Court, to sue for all such reliefs, he shall
not afterwards sue for any relief so omitted.

Explanation- For the purposes of this rule an obligation and a

collateral security for its performance and successive claims
arising under the same obligation shall be deemed respectively
to constitute but one cause of action.

Illustration

A lets a house to B at a yearly of rent Rs. 1200. The rent for the
whole of the, years 1905, 1906 and 1907 is due and unpaid. A
sues B in 1908 only for the rent due for 1906. A shall not
afterwards sue B for the rent due for 1905 or 1907.

3. Joinder of causes of action : (1) Save as otherwise provided,

a plaintiff may unite in the same suit several causes of action
against the same defendant, or the same defendants jointly; and
any plaintiffs having causes of action in which they are jointly
interested against the same defendant or the same defendants
jointly may unite such causes of action in the same suit.

(2) Where causes of action are united, the jurisdiction of the

Court as regards the suit shall depend on the amount or value
of the aggregate subject-matters at the date of instituting the
suit.

4. Only certain claims to be joined for recovery of immovable

property: No cause of action shall, unless with the leave of the
Court, be joined with a suit for the recovery of immovable
property, except-

(a) claims for mesne profits or arrear of rent in respect of the

property claimed or any part thereof;

CS (COMM) 690/2018 Page 22 of 67

 (b) claims for damages for breach of any contract under
which the property or any part thereof is hold; and

(c) claims in which the relief sought is based on the same

cause of action:

Provided that nothing in this rule shall be deemed to prevent

any party in a suit for foreclosure or redemption from asking to
be put into possession of the mortgaged property.

5. Claims by or against executor, administrator or heir : No

claim by or against an executor, administrator or heir, as such,
shall be joined with claims by or against him personally, unless
the mentioned claims are alleged to arise with reference to the
estate in respect of which the plaintiff or defendant sues or is
sued as executor, administrator or heir, or are such as he was
entitled to, or liable for, jointly with the deceased person whom
he represents.

6. Power of Court to order separate trials: Where it appears to

the Court that the joinder of causes of action in one suit may
embarrass or delay the trial or is otherwise inconvenient, the
Court may order separate trials or make such other order as
may be expedient in the interests of justice.

7. Objections as to misjoinder:All objections on the ground of

misjoinder of causes of action shall be taken at the earliest
possible opportunity and, in all cases where issues are settled,
at or before such settlement unless the ground of objection has
subsequently arisen, and any such objection not so taken shall
be deemed to have been waived.”

23. Order I Rule 3 prescribes that all persons may be joined as defendants
in a suit against whom any right to relief exists provided that such right is
based on the same act or transaction or series of acts or transactions against
those persons whether jointly, severally or in the alternative. Further, if
separate suits were brought against such persons, common questions of law

CS (COMM) 690/2018 Page 23 of 67

or fact would arise. The purpose of the Rule is to avoid multiplicity of suits.
It is evident that this provision to some extent, also deals with the joinder of
causes of action inasmuch as when the plaintiff frames the suit, he impleads
persons as defendants against whom he claims to have a cause of action.
Joinder of causes of action has been provided for in Order II Rule 3. These
two provisions, i.e. Order I Rule 3 and Order II Rule 3, together, indicate
that the question of joinder of parties also involves joinder of causes of
action. The underlying principle is that if one is made a party to a suit
because of a cause of action against him; when causes of action are joined,
the parties too are joined.Parties to a suit may be necessary or proper parties.
A necessary party is one whose presence is essential and against whom relief
is sought. A necessary party also is one in whose absence, no effective
decree can be passed. Conversely, a proper party is one without whom a
decree can be passed and whose presence is not necessary for a complete
adjudication of the dispute. Order I Rule 1 CPC requires joining of all
persons in one suit against whom any right to relief arising out of the same
act or transaction or series of acts is alleged to exist, jointly, severally, etc.
and if such person brings several suits, common questions of fact or law
arise. This provision deals with joinder of parties, and to a certain extent,
with the joinder of causes of action. Order II Rule 3 CPC deals with joinder
of causes of action. Order I Rule 4 of the Code too has to be read along with
Order 1 Rule 1. It states that a judgment may be given without any
amendment (a) for such one or more plaintiffs as may be found to be
entitled to relief, for such relief as he or they may be entitled to; or (b)against
such one or more defendants as may be found to be liable, according to their
respective liabilities.

CS (COMM) 690/2018 Page 24 of 67

24. Mulla‟s seminal work “the Code of Civil Procedure” (15th Edition)
observed as follows:
“Under this rule several persons may join as plaintiffs in one
suit, though their joinder of causes of action are separate and
distinct provided that -
(i) the right to relief, alleged to exist in them, arises out of the
same act or transaction or series of acts or transactions; and
(ii) the case is of such a character that, if such persons bring
separate suits, a common question of law or fact would arise.
Both these conditions must be fulfilled to enable two or more
persons to join as plaintiffs in one suit. The two conditions are
cumulative and not in the alternative. At the same time it is not
necessary that all questions arising in the case should be
common to all the parties. It is sufficient even if one of the
questions is common to them.”
25. Misjoinders thus, are classifiable into three (i) misjoinder of plaintiffs;
(ii) misjoinder of defendants and (iii) misjoinder of causes of action. Order I
Rule 1 CPC provides that two or more persons may be joined as plaintiffs in
one suit, if the right to relief alleged to exist in each plaintiff arises from the
same act or transaction and there is a common question of law or fact; if
there is no common question of law or fact, they cannot be joined as
plaintiffs in one suit; they must bring separate suits. If two or more persons
are joined as plaintiffs in one suit in a case not covered by Order I Rule 1
of CPC it results in misjoinder of plaintiffs.
26. As far as misjoinder of defendants goes, the relevant provision is
Order I Rule 3 CPC which was explained by the Supreme Court in Anil
Kumar Singh v. Shiv Nath Mishra ((1995) 3 SCC 147) thus:
“……… The object of the rule is to bring on record all the
persons who are parties to the dispute relating to the subject-

CS (COMM) 690/2018 Page 25 of 67

 matter so that the dispute may be determined in their presence
at the same time without any protraction, inconvenience and to
avoid multiplicity of proceedings. A person may be added as a
party-defendant to the suit though no relief may be claimed
against him/her provided his/her presence is necessary for a
complete and final decision on the question involved in the suit.
Such a person is only a proper party as distinguished from a
necessary party. ………”

27. Joinder of causes of action-dealt with in Order II Rule 3 enables the

plaintiff to “unite in the same suit several causes of action against the same
defendant, or the same defendants jointly; and any plaintiffs having joinder
of causes of action in which they are jointly interested against the same
defendant or the same defendants jointly may unite such joinder of causes of
action in the same suit.” Rule 3(2) states that if there is such joinder of
causes of action “jurisdiction of the court as regards the suit shall depend on
the amount or value of the aggregate subject-matters at the date
of instituting the suit.”
28. A reference may be usefully made to Ishwarbhai C. Patel v. Harihar
Bahera (AIR 1999 SC 1341), which noticed that misjoinder can be of three
types and, furthermore that a suit is bad for misjoinder (also called
multifariousness) “if different causes of action are joined separately against
different defendants. This is violation of Order II Rule 3 and Order I Rule 3
CPC.” In this context, it was observed, long ago in Harendra Nath Singha
Ray vs. Purna Chandra Goswami and Ors. AIR 1928 Cal 199 that :

“14. The question of joinder of plaintiffs or defendants and the

meaning of Rule 16, Rules 1 and 4, have been considered lately
by the Court of appeal (Lord Sterndale, M. E., Warrington,

CS (COMM) 690/2018 Page 26 of 67

 L.J., and Scrutton, L.J.) in Payne v. British Time Recorder Co.
Ltd. [1921] 2 K.B. 1 and it has been said:

Broadly speaking, where claims by or against different parties

involve or may involve a common question of law or fact
bearing sufficient importance in proportion to the rest of the
action to render it desirable that the whole of the matters
should be disposed of at the same time the Court will allow the
joinder of plaintiffs or defendants, subject to its discretion as to
how the action should be tried.

15. This is a good working rule for practical purposes and,

applying it to the present case, it seems to us clear that the
action as framed is justified by Order 1, Rules 1 and 3, Civil
P.C. Looking at the matter, however, from the point of view of
Order 1, Rule 2, we are of opinion that the trial of the suit as
laid is likely to be somewhat embarrassing, especially as some
of the questions that will arise so far as property A is
concerned, will have no bearing upon the claim as regards
properties B, C, D and E and also because the question of
costs, in so far as the deity is concerned will arise, which, if
possible, must be kept separate from these which the plaintiff
will incur or be entitled to recover in his personal capacity.

29. In Prem Lala Nahata (supra) the Supreme Court dealt with the issue
of joinder of causes of action and consequences of misjoinder,
comprehensively:
“10. Order II deals with frame of suits. It provides that every
suit shall be framed as far as practicable so as to afford ground
for final decision upon the subjects in dispute and to prevent
further litigation concerning them. It is also insisted that every
suit shall include the whole of the claim that a plaintiff is
entitled to make in respect of its subject matter. There is a
further provision that the plaintiff may unite in the same suit
several causes of action against the same defendant and
plaintiffs having causes of action in which they are jointly

CS (COMM) 690/2018 Page 27 of 67

 interested against the same defendant, may unite such causes of
action in the same suit. It provides that objection on the ground
of misjoinder of causes of action should be taken at the earliest
opportunity. It also enables the Court, where it appears to the
Court that the joinder of causes of action may embarrass or
delay the trial or otherwise cause inconvenience, to order
separate trials or to make such other order as may be expedient
in the interests of justice.

11. Thus, in a case where a plaint suffers from the defect of

misjoinder of parties or misjoinder of causes of action either in
terms of Order I Rule 1 and Order I Rule 3 on the one hand, or
Order II Rule 3 on the other, the Code itself indicates that the
perceived defect does not make the suit one barred by law or
liable to rejection. This is clear from Rules 3A, 4 and 5 of
Order I of the Code; and this is emphasised by Rule 9 of Order
I of the Code which provides that no suit shall be defeated by
reason of non-joinder or misjoinder of parties and the court
may in either case deal with the matter in controversy so far as
it regards the rights and interests of the parties actually before
it. This is further emphasised by Rule 10 of Order I which
enables the court in appropriate circumstances to substitute or
add any person as a plaintiff in a suit. Order II deals with the
framing of a suit and Rule 3 provides that save as otherwise
provided, a plaintiff may unite in the same suit several causes
of actions against the same defendant and any plaintiffs having
causes of actions in which they are jointly interested against the
same defendant may unite such causes of action in the same
suit. Rule 6 enables the Court to order separate trials even in a
case of misjoinder of causes of action in a plaint filed.

******* ********
******
13. It is well understood that procedure is the handmaid of
justice and not its mistress. The Scheme of Order I and Order II
clearly shows that the prescriptions therein are in the realm of
procedure and not in the realm of substantive law or rights.

CS (COMM) 690/2018 Page 28 of 67

 That the Code considers objections regarding the frame of suit
or joinder of parties only as procedural, is further clear from
Section 99 of the Code which specifically provides that no
decree shall be reversed in appeal on account of any misjoinder
of parties or causes of action or non-joinder of parties unless a
Court finds that the non-joinder is of a necessary party. This is
on the same principle as of Section 21 of the Code which shows
that even an objection to territorial jurisdiction of the Court in
which the suit is instituted, could not be raised successfully for
the first time in an appeal against the decree unless the
appellant is also able to show consequent failure of justice. The
Suits Valuation Act similarly indicates that absence of
pecuniary jurisdiction in the Court that tried the cause without
objection also stands on the same footing. The amendment to
Section 24 of the Code in the year 1976 confers power on the
Court even to transfer a suit filed in a Court having no
jurisdiction, to a Court having jurisdiction to try it. In the
context of these provisions with particular reference to the
Rules in Order I and Order II of the Code, it is clear that an
objection of misjoinder of plaintiffs or misjoinder of causes of
action, is a procedural objection and it is not a bar to the
entertaining of the suit or the trial and final disposal of the suit.
The Court has the liberty even to treat the plaint in such a case
as relating to two suits and try and dispose them off on that
basis.

14. Order VII Rule 11(d) speaks of the suit being "barred by
any law". According to the Black's Law Dictionary, bar means,
a plea arresting a law suit or legal claim. It means as a verb, to
prevent by legal objection. According to Ramanatha Aiyar's
Law Lexicon, 'bar' is that which obstructs entry or egress; to
exclude from consideration. It is therefore necessary to see
whether a suit bad for misjoinder of parties or of causes of
action is excluded from consideration or is barred entry for
adjudication. As pointed out already, on the scheme of the
Code, there is no such prohibition or a prevention at the entry
of a suit defective for misjoinder of parties or of causes of
action. The court is still competent to try and decide the suit,

CS (COMM) 690/2018 Page 29 of 67

 though the court may also be competent to tell the plaintiffs
either to elect to proceed at the instance of one of the plaintiffs
or to proceed with one of the causes of action. On the scheme of
the Code of Civil Procedure, it cannot therefore be held that a
suit barred for misjoinder of parties or of causes of action is
barred by a law, here the Code. This may be contrasted with
the failure to comply with Section 80 of the Code. In a case not
covered by Sub-section (2) of Section 80, it is provided in Sub-
section (1) of Section 80 that "no suit shall be instituted". This
is therefore a bar to the institution of the suit and that is why
courts have taken the view that in a case where notice under
Section 80 of the Code is mandatory, if the averments in the
plaint indicate the absence of a notice, the plaint is liable to be
rejected. For, in that case, the entertaining of the suit would be
barred by Section 80 of the Code. The same would be the
position when a suit hit by Section 86 of the Code is filed
without pleading the obtaining of consent of the Central
Government if the suit is not for rent from a tenant. Not only
are there no words of such import in Order I or Order II but on
the other hand, Rule 9 of Order I, Rules 1 and 3 of Order I, and
Rules 3 and 6 of Order II clearly suggest that it is open to the
court to proceed with the suit notwithstanding the defect of
misjoinder of parties or misjoinder of causes of action and if
the suit results in a decision, the same could not be set aside in
appeal, merely on that ground, in view of Section 99 of the
Code, unless the conditions of Section 99 are satisfied.
Therefore, by no stretch of imagination, can a suit bad for
misjoinder of parties or misjoinder of causes of action be held
to be barred by any law within the meaning of Order VII Rule
11(d) of the Code.

15. Thus, when one considers Order VII Rule 11 of the Code
with particular reference to Clause (d), it is difficult to say that
a suit which is bad for misjoinder of parties or misjoinder of
causes of action, is a suit barred by any law. A procedural
objection to the impleading of parties or to the joinder of
causes of action or the frame of the suit, could be successfully
urged only as a procedural objection which may enable the

CS (COMM) 690/2018 Page 30 of 67

 Court either to permit the continuance of the suit as it is or to
direct the plaintiff or plaintiffs to elect to proceed with a part of
the suit or even to try the causes of action joined in the suit as
separate suits.

16. It cannot be disputed that the court has power to

consolidate suits in appropriate cases. Consolidation is a
process by which two or more causes or matters are by order of
the Court combined or united and treated as one cause or
matter. The main purpose of consolidation is therefore to save
costs, time and effort and to make the conduct of several
actions more convenient by treating them as one action. The
jurisdiction to consolidate arises where there are two or more
matters or causes pending in the court and it appears to the
court that some common question of law or fact arises in both
or all the suits or that the rights to relief claimed in the suits
are in respect of or arise out of the same transaction or series
of transactions; or that for some other reason it is desirable to
make an order consolidating the suits. (See Halsbury's Laws of
England, Volume 37, paragraph 69). If there is power in the
court to consolidate different suits on the basis that it should be
desirable to make an order consolidating them or on the basis
that some common questions of law or fact arise for decision in
them, it cannot certainly be postulated that the trying of a suit
defective for misjoinder of parties or causes of action is
something that is barred by law. The power to consolidate
recognised in the court obviously gives rise to the position that
mere misjoinder of parties or causes of action is not something
that creates an obstruction even at the threshold for the
entertaining of the suit.

17. It is recognised that the court has wide discretionary power

to control the conduct of proceedings where there has been a
joinder of causes of action or of parties which may embarrass
or delay the trial or is otherwise inconvenient. In that situation,
the court may exercise the power either by ordering separate
trials of the claims in respect of two or more causes of action
included in the same action or by confining the action to some

CS (COMM) 690/2018 Page 31 of 67

 of the causes of action and excluding the others or by ordering
the plaintiff or plaintiffs to elect which cause of action is to be
proceeded with or which plaintiff should proceed and which
should not or by making such other order as may be expedient.
(See Halsbury's Laws of England, Vol. 37, paragraph 73).
Surely, when the matter rests with the discretion of the court, it
could not be postulated that a suit suffering from such a defect
is something that is barred by law. After all, it is the
convenience of the trial that is relevant and as the Privy
Council has observed in the decision noted earlier, the
defendant may not even have an absolute right to contend that
such a suit should not be proceeded with.”

30. In a more recent ruling, Hema Khattar and Ors. vs. Shiv Khera 2017
(7) SCC 716, the Supreme Court held as follows:
“In Black's Law Dictionary it has been stated that the
expression 'cause of action' is the fact or facts which give a
person a right to judicial relief. A cause of action, thus, means
every fact, which, if traversed, it would be necessary for the
Plaintiff to prove in order to support his right to a judgment of
the court. In other words, it is a bundle of facts which taken
with the law applicable to them gives the Plaintiff a right to
relief against the Defendant. It must include some act done by
the Defendant since in the absence of such an act no cause of
action can possibly accrue. It is not limited to the actual
infringement of the right sued on but includes all the material
facts on which it is founded.

19. Order II, Rule 3, provides for the joinder of several causes
of action and states that a Plaintiff may unite in the same suit
several causes of action against the same Defendant, or the
same Defendants jointly or several Plaintiffs having causes of
action in which they are jointly interested against the same
Defendant or Defendants jointly may unite them in one suit. The
remedy for any possible inconvenience with regard to said Rule
is supplied by the provisions of Order II, Rule 6, which
authorizes the Court to order separate trials of causes of action

CS (COMM) 690/2018 Page 32 of 67

 which though joined in one suit cannot be conveniently tried or
disposed of together.

20. Similarly, Order I Rule 1 of the Code permits joinder of

more than one persons any right to relief in respect of, or
arising out of, the same act or transaction or series of acts or
transactions is alleged to exist in such persons, whether jointly,
severally or in the alternative; and if such persons brought
separate suits, any common question of law or fact would arise.
Order I Rule 2 provides that where it appears to the court that
any joinder of Plaintiffs may embarrass or delay the trial of the
suit, the court may put the Plaintiffs to their election or order
separate trials or make such other order as may be expedient.

21. In this connection, it is pertinent to refer to a judgment of

this Court in Ramesh Hirach and Kundanmal v. Municipal
Corporation of Greater Bombay and Ors. 1992 (2) SCC 524
wherein it was held as under:

“14. It cannot be said that the main object of the Rule is to

prevent multiplicity of actions though it may incidentally have
that effect. But that appears to be a desirable consequence of
the Rule rather than its main objectives. The person to be
joined must be one whose presence is necessary as a party.
What makes a person a necessary party is not merely that he
has relevant evidence to give on some of the questions involved;
that would only make him a necessary witness. It is not merely
that he has an interest in the correct solution of some questions
involved and has thought or relevant arguments to advance.
The only reason which makes it necessary to make a person a
party to an action is that he should be bound by the result of the
action and the question to be settled, therefore, must be a
question in the action which cannot be effectually and
completely settled unless he is a party.”

22. In view of the foregoing discussion, we are of the opinion

that the Appellants even though had different causes of action
against the Respondent but it was a continuity of the agreement

CS (COMM) 690/2018 Page 33 of 67

 dated 06.06.2009 and oral agreement is evidenced by the
transcript of conversation between the Appellant No. 2 and the
Respondent on 6/07.04.2011, therefore, both the Appellants
could have joined as Plaintiffs in a suit and the suit is not bad
for misjoinder of parties or causes of action. Hence, learned
single Judge as also the division bench, was not right in giving
an option to the Appellants to pursue reliefs qua Appellant No.
1 or qua Appellant No. 2 only.”

31. An indisputable conclusion from the above authorities is that there is

no per se or threshold bar to maintainability of suits, on the perceived
ground of misjoinder of causes of action. In more senses than one, the
subject of joinder of causes of action is a mirror image of the issue of joinder
of parties. Prem Lata Nahata (supra) clearly enunciates that “in a case
where a plaint suffers from the defect of misjoinder of parties or misjoinder
of causes of action either in terms of Order I Rule 1 and Order I Rule 3 on
the one hand, or Order II Rule 3 on the other, the Code itself indicates that
the perceived defect does not make the suit one barred by law or liable to
rejection.” The court later analyzed Order VII Rule 11 (b) and stated that an
objection to the frame of a suit, is at best a procedural one, which cannot
result in rejection of a plaint. The court noticed that unlike Section 80 (of the
CPC) which enacted a clear substantive bar to the entertainment of a suit
unless a procedural step is taken, there is no such bar- or one by necessary
implication which renders a suit deemed improper (as to frame of suit for
misjoinder of causes of action), liable to rejection. It was noticed,
importantly that the objection to joinder or misjoinder is an insufficient
ground for appeal, if not raised at the earliest point. A very important
conclusion in Prem Lata Nahata (supra) (which has nowhere been
disapproved or distinguished from in any subsequent ruling by the Supreme

CS (COMM) 690/2018 Page 34 of 67

Court) is that objection to misjoinder (of causes of action) is procedural and
that rejection of a suit on that count cannot be resorted to:
“Thus, when one considers Order VII Rule 11 of the Code with
particular reference to Clause (d), it is difficult to say that a
suit which is bad for misjoinder of parties or misjoinder of
causes of action, is a suit barred by any law. A procedural
objection to the impleading of parties or to the joinder of
causes of action or the frame of the suit, could be successfully
urged only as a procedural objection which may enable the
Court either to permit the continuance of the suit as it is or to
direct the plaintiff or plaintiffs to elect to proceed with a part of
the suit or even to try the causes of action joined in the suit as
separate suits.”

32. This court also notices that in Girdhari Lal (Dead) by LRs. vs. Hukam
Singh & Ors. (1977) 3 SCC 347, it was held that misjoinder of causes of
action cannot be a ground for rejection of a suit.
33. Now, dealing with the judgments in Dabur (supra) and Dhoda House
(supra), (which were cited by the defendants in support of the argument that
disparate causes of action go to the root of a court‟s jurisdiction and
resultantly, such causes cannot be joined together) it is apparent that the
court dealt with whether having regard to the claim in the pleadings, the
court possessed territorial jurisdiction. In Dhodha House, the Supreme
Court held that a passing off action should not be filed before a court (the
Delhi Court) where no cause of action arose (after finding that mere
advertisement in the Trade mark journal without sale of any goods did not
constitute a cause of action), based on Section 62 (2) of the Copyright Act,
when the plaintiff was not resident of Delhi or carried on business there. The
court‟s observations, however, provide a useful clue:

CS (COMM) 690/2018 Page 35 of 67

 “Order II Rule 3 of the Code provides that the plaintiff may
unite in the same suit several causes of action against the same
defendant, or the same defendants jointly. The said order
contemplates uniting of several causes of action in the same
suit. By necessary implication, a cause of action for
infringement of Copyright and a cause of action for
infringement of Trade Mark or a cause of action of passing off
would be different. Even if one cause of action has no nexus
with another, indisputably Order II Rule 3 may apply.
However, by reason of application of Order II Rule 3 of the
Code ipso facto would not confer jurisdiction upon a court
which had none so as to enable it to consider infringement of
trade mark under the 1957 Act as also the 1958 Act.”

Later the court held that:

“For the purpose of invoking the jurisdiction of a court only

because two causes of action joined in terms of the provisions
of the Code of Civil Procedure, the same would not mean that
thereby the jurisdiction can be conferred upon a court which
had jurisdiction to try only the suit in respect of one cause of
action and not the other. Recourse to the additional forum,
however, in a given case, may be taken if both the causes of
action arise within the jurisdiction of the court which otherwise
had the necessary jurisdiction to decide all the issues.

In this case we have not examined the question as to whether if

a cause of action arises under the 1957 Act and the violation of
the provisions of the Trade Marks Act is only incidental, a
composite suit will lie or not, as such a question does not arise
in this case.”

34. In Dabur (supra), the ruling in Dhodha House (supra) was revisited
and the court noticed importantly that “There cannot be any doubt
whatsoever that the Parliament having inserted sub-section (2) in Section
62 of the 1957 Act, the jurisdiction of the Court thereunder would be wider

CS (COMM) 690/2018 Page 36 of 67

than the one under Section 20 of the Code.” Clearly, the court had
territorial jurisdiction in mind and no other bar (to entertaining a suit). This
is apparent from the discussion about the underlying intent of Section 62 (2)
of the Copyright Act and then, reverting to Dhodha House the Court stated
that in that decision the plaintiff sought a trademark infringement remedy,
without showing that the defendant‟s goods were sold in Delhi but based on
its assumption that Section 62 (2) of the Copyright Act, applied. The court
then went on to hold that:
“29. What then would be meant by a composite suit? A
composite suit would not entitle a court to entertain a suit in
respect whereof it has no jurisdiction, territorial or otherwise.
Order II Rule 3 of the Code specifically states so and, thus,
there is no reason as to why the same should be ignored. A
composite suit within the provisions of the 1957 Act as
considered in Dhoda House (supra), therefore, would mean the
suit which is founded on infringement of a copy right and
wherein the incidental power of the Court is required to be
invoked. A plaintiff may seek a remedy which can otherwise be
granted by the court. It was that aspect of the matter which had
not been considered in Dhoda House (supra) but it never meant
that two suits having different causes of actions can be clubbed
together as a composite suit.”

35. Plainly, what the court had in mind was a situation dealing with
joinder of causes of action, one of which could not be tried because the court
lacked jurisdiction. That however, did not mean that per se the court had no
jurisdiction to try a composite suit encompassing two causes of action. And
certainly Dabur (supra) never said that when the court has jurisdiction to try
the two causes of action, though disparate, it cannot entertain it, because of
disparateness. This conclusion is fortified by the court‟s recognition that

CS (COMM) 690/2018 Page 37 of 67

Order II Rule 3 entitles the court to entertain a composite suit; the caveat
only was that if jurisdiction in respect of one is lacking, the composite suit
cannot be taken on record. In Paragon Rubber Industries & Ors. (supra), the
Supreme Court noticed Dhodha House (supra), and held that:
"19. We see no conflict in the ratio of law laid down in the
aforesaid two cases. In both the cases, it has been held that for
the purpose of invoking the jurisdiction of the court in a
composite suit, both the causes of action must arise within the
jurisdiction of the court which otherwise had the necessary
jurisdiction to decide all the issues. However, the jurisdiction
cannot be conferred by joining two causes of action in the same
suit when the court has jurisdiction to try the suit only in
respect of one cause of action and not the other. In Dabur India
(supra) the ratio in Dhodha House has been explained.”

36. Again, long ago, in Mahanth Ramdhan Puri v. Chaudhury Lachmi

Narain, AIR 1937 PC 42 the objection that the suit had impleaded many
parties and many causes of action and that misjoinder was not merely
technical, but one which, affected the merits of the case, was considered. The
Privy Council held the objection to be without merit, saying that:
“It is desirable to point out that under the rules as they now
stand the mere fact of misjoinder is not by itself sufficient to
entitle the defendant to have the proceedings set aside or action
dismissed.”

37. This court also notices that interestingly, the CPC visualizes- in Order
II, (per Rules 4 and 5) what causes of action cannot be united in one suit.
These are, if one may say so, the express bar or exceptions to the rule in
Order II Rule 3. The other bar is the kind visualized in Section 80 CPC, a
threshold procedural step without following which a suitor cannot enter the
court (which the Supreme Court characterized in Prem Lata Nahata (supra)

CS (COMM) 690/2018 Page 38 of 67

as a “bar”). Furthermore, the CPC also provides internal evidence that
misjoinder per se is not a bar to jurisdiction, and that objection cannot
invalidate a decree on appeal (Section 99- again highlighted in Prem Lata
Nahata). Lastly, the provision in Order II Rule 6 enables the court to
segregate different causes, if it is inconvenient to try them together,or it is
likely to embarrass it.
38. One submission, on behalf of the defendants, was that the language of
Order II Rule 6, indicates that the court has the power to segregate different
causes of action and order separate trials or “or make such other order as
may be expedient in the interests of justice”. According to counsel, this is a
clear pointer to the court‟s power to direct the plaintiff to segregate causes of
action at any stage, including direction to amend the suit and file another suit
with respect to the cause(s) of action that cannot be conveniently tried and in
case the order is not complied with, the court has the discretion to reject the
plaint. This court is of the opinion that the expression “or make such other
order as may be expedient in the interests of justice”, may include, not only
directing the court or registry to separate the trial by registering the separate
causes of action, but also direct the sequencing of trial of the disparate
issues, in the manner convenient. It may also extend to any other steps to
facilitate the task of the court. However, this cannot extend to the power to
reject the plaint, given the clear law enunciated in Prem Lata Nahata (supra)
that disparate cause of action misjoinder is ipso not a “plaint rejection
occasion (or event)” if one may say so.
39. Given these authorities and for the reasons discussed above, it is held
that Mohan Lal’s conclusions – that two causes of action, one for relief in
respect of passing off, and other in respect of design infringement cannot be

CS (COMM) 690/2018 Page 39 of 67

joined, ignoring the material provisions of Order II Rules 3 to 6, are
erroneous; they are accordingly overruled.

Point No. 2
40. The defendants had argued that the reasoning in Mohan Lal (supra)
with respect to impermissibility of joinder of the claims vis-à-vis design
infringement and passing off, issound. In this regard it was argued that there
are significant differences between causes of action relating to design
infringement on the one hand, and those based on allegations of passing off.
Defendants had argued that (i) design infringement is based on a statutory
right, whereas passing off is a common law injury; (ii) the basis of the
former is design of an article, for sale, whereas the latter is based on
misrepresentation; (iii) Similarly, a design infringement suit alleges that the
design is novel, not based on any previous publication in India, whereas the
passing off suit has to establish that the shape or mark has developed
substantial goodwill and reputation and adoption of a deceptively or
confusingly similar design or shape by the defendant. (iv) The defenses,
likewise, are entirely different, submitted counsel: whereas in design
infringement suit, cancellation based on lack of novelty or existence of
previous publication can be the basis of defenses, the lack of any
distinctiveness (of the plaintiff‟s mark or design), prior user, bona fide use,
or lack of plaintiff‟s goodwill are defenses in the passing off suit. (v) Lastly
it was stated that although the court of competent jurisdiction under Section
20 of the Designs Act is identical to that in passing off, as soon as a defense
of cancellation is claimed by the defendant in a design infringement suit, it

CS (COMM) 690/2018 Page 40 of 67

has to be transferred to the High Court under Section 22 (2) of the Designs
Act.
41. In regard to both causes of action, suits claims are(i) against the same
defendant or set of defendants, and; (2) in respect of the same set of acts and
transactions. The only difference is that the relief claimed is different. The
question is whether Mohan Lal’s understanding on the inconsistency and
disparateness as to the relief being fundamental to the frame of the suit,
would defeat a composite action, per se.
42. A registered design owner, this court notices, facially satisfies the test
of novelty (of the product‟s design) and that it was not previously published.
For registration, the article must contain uniqueness or novelty in regard to
elements such as shape, configuration, pattern, ornament or composition of
lines of colours applied to any article; further there must be a visual appeal to
the article (i.e. the aesthetic appeal). However, if the defendant establishes
that indeed there was no novelty, or that a similar design had been published
earlier, in the public domain, the infringement claim would be repelled. In
respect of a passing of claim, distinctiveness of the elements of the mark, its
visual or other presentation and its association with the trader or owner needs
to be established. The factual overlap here is with respect to the presentation
– in the design, it is the novelty and aesthetic presentation; in a passing off
action, it is the distinctiveness (of the mark) with the attendant association
with the owner. To establish infringement (of a design) fraudulent imitation
of the article (by the defendant) has to be proved. Likewise, to show passing
off, it is necessary for the owner of the mark to establish that the defendant
has misrepresented to the public (irrespective of intent) that its goods are that

CS (COMM) 690/2018 Page 41 of 67

of the plaintiff‟s; the resultant harm to the plaintiff‟s reputation is an
actionable claim.
43. This court is also of the opinion that the Full Bench ruling in Mohan
Lal (supra) made an observation, which is inaccurate: it firstly correctly
noted that registration as a design is not possible, of a trade mark; it,
however later noted that “post registration under Section 11 of the Designs
Act, there can be no limitation on its use as a trademark by the registrant of
the design. The reason being: the use of a registered design as a trade mark,
is not provided as a ground for its cancellation under Section 19 of the
Designs Act.” This observation ignores that the Designs Act, Section 19 (e)
specifically exposes a registered design to cancellation when “(e) it is not a
design as defined under clause (d) of section 2.” The reason for this is that
Section 2 of the Designs Act, defines “design” as “…the features of shape,
configuration, pattern, ornament or composition of lines or colours applied
to any article…….; but does not include any trade mark as defined in clause
(v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act,
1958…..” Therefore, if the registered design per se is used as a trade mark, it
apparently can be cancelled. The larger legal formulation in Mohan Lal
(supra), that a passing off action i.e one which is not limited or restricted to
trademark use alone, but the overall get up or “trade dress” however, is
correct; as long as the elements of the design are not used as a trademark, but
a larger trade dress get up, presentation of the product through its packaging
and so on, given that a “passing off” claim can include but is also broader
than infringement of a trademark, the cause of action against such use lies.
44. It is evident that there is a similarity between the nature of inferences
and conclusions that are presented to the court, in the two causes of action.

CS (COMM) 690/2018 Page 42 of 67

Significantly, the complaint of passing off as well as that of design
infringement emanate from the same fact: sale or offer for sale, by the
defendant of the rival product. In this context, it is relevant to notice that the
expression “cause of action” was explained in this incisive manner in Kusum
Ingots & Alloys v Union of India 2004 (6) SCC 254 as:
“every fact which would be necessary for the plaintiff to prove,
if traversed, in order to support his right to the judgment of the
Court. Negatively put, it would mean that everything which, if
not proved, gives the defendant an immediate right to judgment,
would be part of cause of action.”

45. It is clear therefore, that the basic facts which impel a plaintiff to
approach a court, complaining of design infringement are the same as in the
case of passing off. In such circumstances, it is inconceivable that a 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 to
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 vs
M/S Ganesh Property AIR 1998 SC 3085 is an authority for the proposition
that a suit cannot be rejected as partly barred.
46. We 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

CS (COMM) 690/2018 Page 43 of 67

and evidence, and conclude pendente lite, if prima facie passing off is made
out, necessitating interim relief.

S. RAVINDRA BHAT
(JUDGE)

HIMA KOHLI
(JUDGE)

VIPIN SANGHI
(JUDGE)

VIBHU BAKHRU
(JUDGE)
DECEMBER 14, 2018

OPINION OF MR. JUSTICE VALMIKI J. MEHTA

1. The issue which is called for decision by this Full Bench of five
judges is whether in one composite suit there can be joinder of two causes of
action, one cause of action being of infringement by the defendant of a
design of the plaintiff which is registered under the Designs Act, 2000 and
the second cause of action being of passing off by the defendant of his/its
goods/articles as that of the plaintiff. It is noted that in case a plaintiff in a
suit does not have a design which has the benefit of being a validly
registered design under the Designs Act, then such a plaintiff cannot
maintain an action for infringement of a registered design by the defendant,

CS (COMM) 690/2018 Page 44 of 67

and such a plaintiff can then only sue on the cause of action of the defendant
passing off its goods/articles as that of the plaintiff.

2. By the reference order, the ratio of the Full Bench of this Court
in the case of Mohan Lal v. Sona Paint and Hardwares, AIR 2013 Delhi
143 (Full Bench) has been doubted. The judgment of the Full Bench of
three Judges of this Court in Mohan Lal’s case (supra), by a majority
opinion of 2:1, held that the causes of action with respect to the infringement
of a registered design and passing off are different and hence they cannot be
joined in one composite suit. The majority opinion in Mohan Lal’s case
(supra) has held that on account of the different nature of the two actions,
one for infringement of a registered design and other for passing off, the two
actions cannot be combined. To buttress this aforesaid conclusion that there
cannot be joinder of causes of action of infringement and passing off in one
composite suit against the same defendant, the majority opinion in Mohan
Lal’s case (supra) has placed reliance upon the ratio of the judgment of the
Supreme Court in the case of Dabur India Limited v. K.R. Industries,
(2008) 10 SCC 595. The relevant observations of the majority opinion in
Mohan Lal’s case (supra) laying down the ratio of disentitlement in one
composite suit as joinder of causes of action of infringement and passing off,
is contained in paras 24.3 and 25 of the judgment, and these paras read as
under:

“24.3 Thus, the 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 premises on uniqueness, newness and originality of the design.
Whereas, the action for passing off is founded on the use of the mark in the

CS (COMM) 690/2018 Page 45 of 67

 trade for sale of goods and/or for offering service; the generation of
reputation and goodwill as a consequence 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 (See Dabur India Limited v. K. R.
Industries (2008) 10 SCC 595 @ page 607 paragraph 34): (AIR 2008 SC
3123)
25. Having regard to the nature of the two actions, in our opinion,
the two actions cannot be combined. Though as indicated, at the
beginning of discussion of this issue if the two actions are instituted in
close proximity of each other the court could for the sake of convenience
try them together, though as separate causes, provided it has jurisdiction
in the matter.”
(Underlining Added)

3 Since para 24.3 above in Mohan Lal’s case (supra) has relied upon the
judgment of the Supreme Court in the case of Dabur India Ltd. (supra) for
holding that there cannot be joinder of causes of action, let us therefore refer
to that conclusion contained in the culminating para 34 of the judgment in
Dabur India Ltd.’s case (supra), and which reads as under:

“34. What then would be meant by a composite suit? A composite suit

would not entitle a court to entertain a suit in respect whereof it has no
jurisdiction, territorial or otherwise. Order II Rule 3 of the Code
specifically states so and, thus, there is no reason as to why the same
should be ignored. A composite suit within the provisions of the 1957 Act
as considered in Dhodha House (supra), therefore, would mean the suit
which is founded on infringement of a copy right and wherein the
incidental power of the Court is required to be invoked. A plaintiff may
seek a remedy which can otherwise be granted by the court. It was that
aspect of the matter which had not been considered in Dhoda House
(supra) but it never meant that two suits having different causes of actions
can be clubbed together as a composite suit.”

CS (COMM) 690/2018 Page 46 of 67

 (Underlining Added)

4. In order to understand the aforesaid observations of the Supreme

Court in para 34 of the judgment in Dabur India Ltd.’s case (supra), it
would but be necessary to refer to the earlier relevant paras of the said
judgment, and these relevant paras 9, 10, 22, 24, 25, 27, 28, 30 and 32 which
read as under:

“9. Mr. Fali S. Nariman, learned senior counsel appearing on behalf of

the appellant, submits that the Division Bench of the High Court
committed a serious error in passing the impugned judgment in so far as
it failed to take into consideration the effect of a consolidated suit under
the 1957 Act as also the Trade Marks Act, 1958 (for short 'the 1958
Act'), as would be evident from the following excerpts of Dhodha House
(supra):
“22. We are not concerned in this case with the maintainability of a
composite suit both under the 1957 Act and the 1958 Act.
Indisputably, if such a situation arises, the same would be
permissible; but the same may not be relevant for the purpose of
determining the question of a forum where such suit can be
instituted. Sub-section (2) of Section 62 of the 1957 Act provides for
a non obstante clause conferring jurisdiction upon the District
Court within the local limits of whose jurisdiction, at the time of the
institution of the suit or other proceeding, the persons instituting the
suit or other proceedings have been residing. In terms of Sub-
section (1) of Section 62, suit can be instituted and the proceedings
can be initiated in respect of matters arising under the said chapter
for infringement of the copyright in any work or the infringement of
any other right conferred thereunder. It does not confer
jurisdiction upon a District Court where the plaintiff resides, if a
cause of action arises under the 1958 Act.

* * *
43. The short question which arises for consideration is as to
whether causes of action in terms of both the 1957 Act and the 1958
Act although may be different, would a suit be maintainable in a
court only because it has the jurisdiction to entertain the same in
terms of Section 62(2) of the 1957 Act?

CS (COMM) 690/2018 Page 47 of 67

 44. A cause of action in a given case both under the 1957 Act as
also under the 1958 Act may be overlapping to some extent. The
territorial jurisdiction conferred upon the court in terms of the
provisions of the Code of civil Procedure indisputably shall apply to
a suit or proceeding under the 1957 Act as also the 1958 Act. Sub-
section (2) of Section 62 of the 1957 Act provides for an additional
forum. Such additional forum was provided so as to enable the
author to file a suit who may not otherwise be in a position to file a
suit at different places where his copyright was violated. Parliament
while enacting the Trade and Merchandise Marks Act in the year
1958 was aware of the provisions of the 1957 Act. It still did not
choose to make a similar provision therein. Such an omission may
be held to be a conscious action on the part of Parliament. The
intention of Parliament in not providing for an additional forum in
relation to the violation of the 1958 Act is, therefore, clear and
explicit. Parliament while enacting the Trade Marks Act, 1999
provided for such an additional forum by enacting Sub-section (2)
of Section 134 of the Trade Marks Act. The court shall not, it is well
settled, readily presume the existence of jurisdiction of a court
which was not conferred by the statute. For the purpose of
attracting the jurisdiction of a court in terms of Sub-section (2) of
Section 62 of the 1957 Act, the conditions precedent specified
therein must be fulfilled, the requisites wherefore are that the
plaintiff must actually and voluntarily reside to carry on business or
personally work for gain.”

10. Learned Counsel would contend that the jurisdiction of the court to
entertain a composite suit under the 1957 Act and the 1958 Act should be
determined having regard to the provisions of Section 55 of the former.
Then term 'Law' within the meaning of the said provision, it was
submitted, would not only include a statute law but also the common law
and, thus, viewed from that perspective a composite suit for infringement
of a copyright as also passing of shall be maintainable. Strong reliance
in this behalf has also been placed on Exphar Sa and Anr. v. Eupharma
Laboratories Ltd.
xxx xxx xxx
22. In Dhodha House this Court was concerned with the correctness of
judgments of the Allahabad High Court in Surendra Kumar Maingi v.
Dodha House and the decision of the Delhi High Court at New Delhi in
P.M. Diesels Ltd. v. Patel Field Marshal Industries. It was clearly held
that a judgment passed by a court having no territorial jurisdiction is a
nullity. As regards the cause of action under the 1957 Act and a cause of

CS (COMM) 690/2018 Page 48 of 67

 action under the 1958 Act and or a passing off action, it was held that
Sub-section (2) of Section 62 would confer jurisdiction on a court where
the plaintiff resides. The cause of action in respect of others was stated to
be where the defendant resides.
xxx xxx xxx
24. Noticing that whereas in Dhoda House the infringement complained
of primarily was that of 1958 Act and not under the 1957 Act, in Patel
Field Marshal (supra) the thrust was on the sale of products and/or
advertisement by the appellant for registration of trade marks in the
Trade Marks Journal and other local papers. The law was stated in the
following terms:
“54. For the purpose of invoking the jurisdiction of a court only
because two causes of action joined in terms of the provisions of the
Code of civil Procedure, the same would not mean that thereby the
jurisdiction can be conferred upon a court which had jurisdiction
to try only the suit in respect of one cause of action and not the
other. Recourse to the additional forum, however, in a given case,
may be taken if both the causes of action arise within the
jurisdiction of the court which otherwise had the necessary
jurisdiction to decide all the issues.”

25. What would, however, be the nature of composite suit, was also be
taken note of. The Court observed:
“55. In this case we have not examined the question as to whether if
a cause of action arises under the 1957 Act and the violation of the
provisions of the Trade Marks Act is only incidental, a composite
suit will lie or not, as such a question does not arise in this case.”

xxx xxx xxx

27. Sub-section (1) of Section 55 of 1957 Act provides for the remedies in
terms whereof the plaintiff shall be entitled to all reliefs by way of
injunction, damages, accounts and otherwise as are or may be conferred
by law for the infringement of a right. It must be read as 'ejusdem
generis'. It must take its colour from the words, 'any proceeding' namely
the right to obtain a decree by way of injunction, decree for damages,
accounts or other incidental reliefs which can be granted by a civil court.
Such a provision can be found in the Code of civil Procedure also,
namely Order VII Rule 7 thereof. It is, therefore, in our opinion, would
not be correct to read the word "as are or may be conferred by law" to

CS (COMM) 690/2018 Page 49 of 67

 mean, any other law, violation whereof although would give rise to
separate and distinct cause of action.
28. Under the Code claims arising under a statutes governing
substantive or procedural law, a number of remedies may be combined.
The Court may grant an order of injunction even in a passing off action.
It is trite that where the court has the jurisdiction/power to adjudicate, it
will necessarily have the incidental power therefore. It may, however, be
different if the Court may have exercised a power which is not provided
for as a supplemental proceeding e.g. Section 94 of the Code. (See State
of Punjab and Anr. v. Devans Modern Brewaries Ltd.). Thus, whereas an
incidental power is inherent in the court, a supplemental power may also
be exercised, keeping in view the ultimate relief which may be granted by
it. We may notice that this Court in Sakiri Vasu v. State of U.P. held that
the Magistrate will have power to grant interim maintenance, although
no such provision existed in Section 125 of the Code of Criminal
Procedure, 1973.
xxx xxx xxx
30. If a person is found to be guilty of violation of copyright he will be
bound to pay damages. For the purpose of quantification of damages,
taking of the accounts may be necessary and it is in this behalf the
Parliament thought it fit to use the word "otherwise". Thus the power
conferred by law within the meaning of Sub-section (1) of Section 55 of
1957 Act qualifies the power of the court to grant remedies as envisaged
thereunder if any other cause of action arose under a different Act. An
action for passing off is common law right but the same does not
determine the jurisdiction of the court. For exercising such jurisdiction,
the provisions of the Code would be applicable. 1957 Act being a special
law would, thus, prevail over the general law, viz., the Code.
xxx xxx xxx
32. There cannot be any doubt whatsoever that the Parliament having
inserted Sub-section (2) in Section 62 of the 1957 Act, the jurisdiction of
the Court thereunder would be wider than the one under Section 20 of
the Code. The object and reasons for enactment of Sub-section (2) of
Section 62 would also appear from the report of the Committee, as has
been noticed by this Court being a provision which has been specially
designed to confer an extra benefit upon the authors who were not in a
position to instate copyright infringement proceeding before the Courts.

CS (COMM) 690/2018 Page 50 of 67

 It is in the aforementioned context the law laid down by this Court in
paragraph 13 of Dhonda House (Supra) must be understood.”
(Emphasis Supplied)

5. To understand the ratio of a case, it must be kept in mind that ratio of

a case is facts dependent. The observations which are made in a judgment
are as per the facts of a particular case. Ratio of a judgment is for what the
judgment actually decides. In fact, the Supreme Court has cautioned in its
Constitution Bench Judgment in the case of Padma Sundara Rao (Dead)
and Others v. State of Tamil Nadu and Others, (2002) 3 SCC 533 that the
words of a judgment should not be read like a statute and even difference of
a single fact can make all the difference to the ratio of two cases. These
observations of the Supreme Court in the case of Padma Sundara Rao
(supra) read as under:

“9. Courts should not place reliance on decisions without discussing as

to how the factual situation fits in with the fact situation of the decision on
which reliance is placed. There is always peril in treating the words of a
speech or judgment as though they are words in a legislative enactment,
and it is to be remembered that judicial utterances are made in the setting
of the facts of a particular case, said Lord Morris in Herrington vs. British
Railways Board . Circumstantial flexibility, one additional or different fact
may make a world of difference between conclusions in two cases.”

(Underlining Added)

6(i). The facts before the Supreme Court in the case of Dabur India
Ltd. (supra) were that a composite suit was filed with respect to two causes
of action, where for one cause of action the court in which the suit was filed
had territorial jurisdiction, and for the other cause of action the court had no
territorial jurisdiction. The plaintiff in the suit filed in Dabur India Ltd.’s
case (supra) pleaded an entitlement to its copyright in a carton which was

CS (COMM) 690/2018 Page 51 of 67

pleaded to be an artistic work under the Copyright Act, 1957. In the suit,
plaintiff additionally pleaded the cause of action of passing off by the
defendant of its goods as that of the plaintiff. The goods of the plaintiff in
that case was a Tooth Powder called as “Dabur Red Tooth Powder” or
“Dabur Lal Dant Manjan”. As regards one cause of action in that suit
alleging infringement of copyright, the civil court before which the suit was
filed in Delhi, the said court at Delhi had territorial jurisdiction in view of
Section 62(2) of the Copyright Act, 1957 which allows a suit with respect to
infringement of copyright being filed at the place where the plaintiff resided
or voluntarily worked for gain or carried on business. So far as other cause
of action in the suit on the cause of action of passing off was concerned,
there was no territorial jurisdiction in Delhi because a passing off suit does
not have the benefit of an entitlement of being filed by the plaintiff where the
plaintiff resides or works for gain or carries on business, because such suit
alleging passing off can only be filed in that civil court as per Section 20
CPC i.e. where either cause of action wholly or in part arises or where the
defendant (not the plaintiff) resides or voluntarily works for gain or carries
on business. In Dabur India Ltd.’s case (supra) the defendant was a
resident of Andhra Pradesh, and therefore, the defendant filed an application
under Order VII Rule 11 CPC contending that the composite suit filed was
not maintainable because qua one cause of action of passing off the civil
court at Delhi did not have territorial jurisdiction. That a court must have
territorial jurisdiction qua both the causes of action which are joined is the
ratio of the judgment of the Supreme Court in the case of Dhodha House v.
S.K. Maingi, (2006) 9 SCC 41 i.e. if the civil court had territorial jurisdiction
qua one cause of action, then a second cause of action with respect to which

CS (COMM) 690/2018 Page 52 of 67

the civil court does not have the territorial jurisdiction, then such two causes
of action where the court has territorial jurisdiction only qua one cause of
action cannot be combined under Order II Rule 3 CPC for giving territorial
jurisdiction to a court qua a cause of action for which the court did not have
territorial jurisdiction, and the Supreme Court for holding so in the case of
Dhodha House (supra) placed reliance upon the first few words in Order II
Rule 3 CPC which read “save as as otherwise provided” i.e. save as
otherwise provided being the provisions of Sections 16 to 20 CPC. It is
therefore in the context of joinder of causes of action only specifically qua
the subject of territorial jurisdiction existing in the court qua both the causes
of action, that the issue was deliberated upon and decided in Dabur India
Ltd.’s case (supra) because the argument which was urged on behalf of
Dabur India Ltd./plaintiff in the said case was with respect to a composite
suit of infringement of design and passing off being maintainable even if for
one cause of action for passing off the court did not have territorial
jurisdiction and for which entitlement Dabur India Ltd. placed reliance upon
the observations made by the Supreme Court in para 22 in the case of
Dhodha House (supra). In light of such factual situation, the Supreme
Court in Dabur India Ltd.’s case (supra) held and negated the contention
urged by the Dabur India Ltd. that a composite suit joining two causes of
action of infringement and passing off can be filed in one civil court,
although for one cause of action of passing off pleaded in the civil suit, the
civil court in which the suit has been filed does not have the territorial
jurisdiction. This is so clarified by the Supreme Court in its above quoted
para 22 of its judgment in Dabur India Ltd.’s case (supra) by reference to
the judgment in the case of Dhodha House (supra) that the issue in the case

CS (COMM) 690/2018 Page 53 of 67

of Dhodha House (supra) pertained to the issue of disentitlement of filing a
composite suit joining two causes of action when qua one cause of action,
the civil court had no territorial jurisdiction and it was held that a composite
suit filed by joining two causes of action, can only be filed in a court which
has territorial jurisdiction qua both the causes of action. Similar
observations have been made by the Supreme Court in the above quoted para
24 of the judgment in the case of Dabur India Ltd. (supra) by reference to
para 54 of the judgment in a case of Dhodha House (supra).

6(ii). While so holding that a composite suit can be filed only in that
court which has territorial jurisdiction qua both the causes of action, the
Supreme Court in Dabur India Ltd.’s case (supra) then went to the further
aspect of a composite suit of that type where in the suit there exists one main
cause of action and relief, and the second cause of action is such by which
the relief prayed is only incidental to the main and first cause of action, and
qua this aspect, in para 25 in Dabur India Ltd.’s case (supra), the Supreme
Court has observed that this aspect had not been decided in Dhodha House’s
case (supra). Supreme Court in Dabur India Ltd.’s case (supra) then
proceeded to decide as to what is an incidental power to be exercised with
respect to a suit in which the civil court has jurisdiction qua the main cause
of action, and it was held that a court always has an incidental power to give
necessary reliefs once the court otherwise has jurisdiction and the power to
adjudicate the main cause of action, i.e. there can be filed a „composite suit‟
for two causes of action where the second cause of action is essentially a
right incidental to or supplemental to the main relief arising out of the main
cause of action. This is stated by the Supreme Court in above quoted para 28

CS (COMM) 690/2018 Page 54 of 67

of the judgment in Dabur India Ltd.’s case (supra), and in this para it is
further clarified that in certain cases besides an incidental power even
supplemental power can be exercised. Supreme Court however ultimately
clarified and laid down the ratio in para 34 that though a composite suit can
be filed with respect to main cause of action with relief arising therefrom,
and also for an incidental relief for which the incidental power of the civil
court is exercised by the court where the civil suit is filed, yet it has clearly
been clarified that where the court hearing the civil suit has no territorial
jurisdiction, partly or otherwise, a composite suit would not be entertained
qua the second main cause of action for which the court has not territorial
jurisdiction. It was accordingly concluded in terms of the last line of para
34 in the case of Dabur India Limted (supra) that two suits having different
causes of action cannot be clubbed for being filed as a composite suit, and it
is essentially this last line in para 34 in the judgment in the case of Dabur
India Limited (supra) which has been relied by the majority opinion in the
case of Mohan Lal (supra) to hold that there cannot be filed a composite suit
having two causes of action of infringement and passing off.

7. Thus it is seen that neither in Dhodha House’s case (supra), and

nor in the case of Dabur India Limited (supra), the issue had arisen with
respect to joinder of causes of action in one composite suit of infringement
of registered design and passing off inasmuch as both the judgments in the
cases of Dhodha House (supra) and Dabur India Limited (supra) were
concerned with, and as stated above, whether a civil suit can be entertained
by a civil court where the civil suit joins two causes of action but where qua
one causes of action the civil court did not have territorial jurisdiction to

CS (COMM) 690/2018 Page 55 of 67

decide the suit. We would therefore once again take note of the observations
of the Supreme Court in the case of Padma Sundra Rao (supra) that ratio of
a case is facts dependent and even difference of a single fact can make a
difference to the ratio of a case, and therefore, once the issue before the
Supreme Court neither in the case of Dhodha House (supra) nor in the case
of Dabur India Limited (supra) was with respect to joinder of causes of
action with respect to a composite suit having two causes of action of
infringement of a registered design and passing off, the observations in the
case of Dabur India Limited (supra) really could not have been relied upon
by the majority opinion in the case of Mohan Lal (supra) to hold that in one
composite suit filed in a civil court there cannot be joinder of two causes of
action of infringement of a registered design and passing off.

8. We must at this stage however hasten to observe that in the case

of Mohan Lal (supra) the majority opinion not only relied upon the
observations of Dabur India Limited (supra) for holding that there cannot
be joinder of causes of action of infringement of a registered design and
passing off, inasmuch as in paras 24.3 and 25 of the judgment in the case of
Mohan Lal (supra) it was held by the majority that the nature of two actions
and the fundamental edifices of two causes of action of infringement and
passing off were different, i.e. in effect the majority opinion in the case of
Mohan Lal (supra) held that there would arise no common questions of law
and fact between the two causes of action of infringement of a registered
design and passing off, and once there would arise no common questions of
law and fact, therefore it was held that there cannot be a composite suit

CS (COMM) 690/2018 Page 56 of 67

joining the two causes of action of infringement of registered design and
passing off.

9. The issue therefore which is required to be squarely addressed

by this Full Bench is as to whether there would arise common questions of
facts and law in the two causes of action of infringement of registered design
and passing off so that these two causes of action can be joined under Order
II Rule 3 CPC, and which is an issue which was not decided either in Dabur
India Ltd.’s case (supra) or in the case of Dhodha House (supra). Before
however we go on this aspect, the general law with respect to joinder of
causes of action under Order II Rule 3 CPC can be usefully referred to and
as held in the case of Prem Lata Nahata and Another v. Chandi Prasad
Sikaria, (2007) 2 SCC 551. The relevant ratio of the judgment of the
Supreme Court in the case of Prem Lata Nahata and Another (supra) is
contained in paras 11, 18 and 22 and these paras read as under:-

“11. Order 2 deals with frame of suits. It provides that every suit shall be
framed as far as practicable so as to afford ground for final decision
upon the subjects in dispute and to prevent further litigation concerning
them. It is also insisted that every suit shall include the whole of the claim
that a plaintiff is entitled to make in respect of its subject matter. There is
a further provision that the plaintiff may unite in the same suit several
causes of action against the same defendant and plaintiffs having causes
of action in which they are jointly interested against the same defendant,
may unite such causes of action in the same suit. It provides that
objection on the ground of misjoinder of causes of action should be taken
at the earliest opportunity. It also enables the Court, where it appears to
the Court that the joinder of causes of action may embarrass or delay the
trial or otherwise cause inconvenience, to order separate trials or to
make such other order as may be expedient in the interests of justice.
xxx xxx xxx

CS (COMM) 690/2018 Page 57 of 67

 18. It cannot be disputed that the court has power to consolidate suits in
appropriate cases. Consolidation is a process by which two or more
causes or matters are by order of the Court combined or united and
treated as one cause or matter. The main purpose of consolidation is
therefore to save costs, time and effort and to make the conduct of
several actions more convenient by treating them as one action. The
jurisdiction to consolidate arises where there are two or more matters or
causes pending in the court and it appears to the court that some
common question of law or fact arises in both or all the suits or that the
rights to relief claimed in the suits are in respect of or arise out of the
same transaction or series of transactions; or that for some other
reason it is desirable to make an order consolidating the suits. (See
Halsbury's Laws of England, Volume 37, paragraph 69). If there is power
in the court to consolidate different suits on the basis that it should be
desirable to make an order consolidating them or on the basis that some
common questions of law or fact arise for decision in them, it cannot
certainly be postulated that the trying of a suit defective for misjoinder of
parties or causes of action is something that is barred by law. The power
to consolidate recognised in the court obviously gives rise to the position
that mere misjoinder of parties or causes of action is not something that
creates an obstruction even at the threshold for the entertaining of the
suit.
xxx xxx xxx
22. In the case on hand, we have also to reckon with the fact that the suits
filed by the respondent against the respective appellants based on the
transactions combined together by the appellants, have already been
withdrawn for a joint trial with the present suit, C.S. No. 29 of 2003. In
those two suits, the nature of the transaction the respective appellants had
with the respondent have to be decided after trial. In the present suit, the
appellants are claiming the payments which also form the basis of the
claim of the respondent against the respective appellants in his two suits.
In the present suit, C.S. No. 29 of 2003, all that the appellants have done
is to combine their respective claims which are in the nature of counter
claims or cross suits to the suits filed by the respondent. The ultimate
question for decision in all the suits is the nature of the transactions that
was entered into by the respondent with each of the appellants and the
evidence that has to be led, in both the suits, is regarding the nature of
the respective transactions entered into by the respondent with each of
the appellants. To a great extent, the evidence would be common and
there will be no embarrassment if the causes of action put forward by the

CS (COMM) 690/2018 Page 58 of 67

 appellants in the present suit are tried together especially in the context
of the two suits filed by the respondent against them and withdrawn for a
joint trial. In the case on hand, therefore, even assuming that there was a
defect of misjoinder of causes of action in the plaint filed by the
appellants, it is not a case where convenience of trial warrants separating
of the causes of action by trying them separately. The three suits have to
be jointly tried and since the evidence, according to us, would be common
in any event, the Division Bench was in error in directing the appellants
to elect to proceed with one of the plaintiffs and one of the claims. We do
not think that on the facts and in the circumstances of the case one of the
appellants should be asked to file a fresh plaint so as to put forward her
claim. Even if such a plaint were to be filed, it will be a clear case for a
joint trial of that plaint with the present suit and the two suits filed by the
respondent. In any event, therefore, the Division Bench was not correct in
interfering with the decision of the learned single judge. The effect of
withdrawal of the two suits filed by the respondent against the appellants
for a joint trial has not been properly appreciated by the Division Bench.
So, on the facts of this case, the decision of the Division Bench is found to
be unsustainable and the course adopted by it unwarranted.”
(Emphasis Supplied)

10. The ratio of the judgment in the case of Prem Lata Nahata and
Another (supra) is that with respect to entitlement or otherwise of joinder of
causes of action, the question to be asked is as to whether the evidence to be
led in the two causes of action would be common, and if the substantial
evidence of two causes of action would be common, then there can be
joinder of causes of action under Order II Rule 3 CPC. Putting it negatively
if the evidence is for the most part different of the two causes of action, then
there cannot be joinder of causes of action.

11. Therefore since the crux of the matter for joinder of causes of
action under Order II Rule 3 CPC is to see if common questions of law and
facts arise in two separate causes of action and whereupon there can be
joinder of causes of action under Order II Rule 3 CPC in one composite suit

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which joins two causes of action, therefore we now proceed to examine as to
whether there would exist common questions of law and fact in the two
causes of action of infringement of registered design and passing off. For so
deciding first it would be necessary to refer to the meaning of cause of
action. Meaning of cause of action is explained by the Supreme Court in its
judgment in the case of Kusum Ingots & Alloys Ltd. v. Union of India and
Another, (2004) 6 SCC 254. The relevant paras 6 to 9 of the judgment read
as under:

“6. Cause of action implies a right to sue. The material facts which are
imperative for the suitor to allege and prove constitute the cause of
action. Cause of action is not defined in any statute. It has, however,
been judicially interpreted inter alia to mean that every fact which would
be necessary for the plaintiff to prove, if traversed, in order to support
his right to the judgment of the Court. Negatively put, it would mean that
everything which, if not proved, gives the defendant an immediate right
to judgment, would be part of cause of action. Its importance is beyond
any doubt. For every action, there has to be a cause of action, if not, the
plaint or the writ petition, as the case may be, shall be rejected
summarily.
xxx xxx xxx
9. Although in view of Section 141 of the Code of Civil Procedure the
provisions thereof would not apply to writ proceedings, the phraseology
used in Section 20(c) of the Code of Civil Procedure and clause (2) of
Article 226, being in pari materia, the decisions of this Court rendered
on interpretation of Section 20(c) CPC shall apply to the writ
proceedings also. Before proceeding to discuss the matter further it may
be pointed out that the entire bundle of facts pleaded need not constitute
a cause of action as what is necessary to be proved before the petitioner
can obtain a decree is the material facts. The expression material facts is
also known as integral facts.”

(Underlining Added)

CS (COMM) 690/2018 Page 60 of 67

12. Let us now accordingly examine as to what are the bundle of
facts, or the bundle of material facts, in the two causes of action of
infringement of a registered design and passing off, and as to whether there
would arise common questions of law and fact in the two bundle of facts of
the two causes of action of infringement of registered design and passing off.

13. To decide the issue of existence of common questions of law

and fact in the two causes of action of infringement of a registered design
and passing off, at this stage it would be instructive to refer to a judgment
passed by the Division Bench of this Court in the case of M/s. Jay Industries
v. M/s. Nakson Industries, 1992 SCC Online Del 84; AIR 1992 Del 338
because this judgment lays down the ratio for the issue at hand as to when
there can be joinder of causes of action. This judgment was passed on a
reference by a learned Single Judge of this Court to the Division Bench, to
decide as to whether there can be joinder in one suit of two causes of action,
one being of infringement of plaintiff‟s trademark and second of the
plaintiff‟s claim to a copyright in a label of the plaintiff. The relevant paras
1 to 3 and 5 to 7 of the judgment in the case of Jay Industries (supra) are
reproduced as under:

“1. The question which has been referred to this Bench, by a Single Judge
of this Court, turn decision is whether a single suit can be filed when it is
alleged that there has been an infringement of the plaintiff's trade mark
and copy right. In other words can one suit be filed in relation to two
distinct statutory causes of action.

2. The plaintiff in the suit had alleged that the defendant had infringed
the plaintiff's registered trade mark and also its copy right. The allegation
was that the plaintiff's copy right existed on the labels and carton in which
goods had been packed which carried the trade mark of the plaintiff. With

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 regard to the trade mark the allegation was that-the plaintiff was the
registered proprietor of the mark "JAY". It was also: alleged, with relation
to the copy right, that the plaintiff had been using distinctive cartons in
which the goods manufactured by the plaintiff namely, locks, meters, cut
outs etc. were packed. It was further alleged in the plaint that the
defendant was infringing the plaintiff's aforesaid registered trade mark
and also the copy right which existed in the artistic work on the cartons of
the plaintiff. Based on this allegation the suit was filed for injunction and
damages.
3. Before issuing summons the learned single Judge passed an
order dated 18th September, 1990 in which it was, inter alia, stated that
the plaintiff had alleged that two distinct statutory rights had been
violated, namely, the right granted by The Trade and Merchandise Marks
Act and the other right granted by the Copy Right Act. After referring to
Order Ii Rule 6, Civil Procedure Code the learned single Judge was of the
opinion that where two distinct statutory causes of action existed which
will require different kinds of proof then it would not be convenient to try
them as a part of the same suit. Because the learned Single Judge did not
agree with the observations of G. R. Luthra, J. in the case of Glaxo
Operations U.K.. Ltd. Middlesex (England) v. Samrat Pharmaceuticals
Kanpur AIR 1984 Delhi 265 (1) wherein a contrary view had been taken,
he directed that this issue be referred to a larger Bench. It is as a
consequence thereof that the reference has been heard by us.
xxx xxx xxx
5. Coming to the point in issue it appears that the consistent view
of this Court has been that in a suit similar to the present one separate
causes of action can be combined. Three different Judges of this Court
had occasion to deal with this matter in Deepchand Arya v. Kiran Soap
Works 1981 Raj LR 113(2) at page 117; Tata Oil Mills Company Ltd. v.
Reward Soaps Works, AIR 1983 Delhi 286 and AIR 1984 Delhi 265(3)
(supra). It was held, and in our opinion rightly, that these two different
causes of action can be agitated upon in a single suit.
6. In the present case there is one plaintiff and one defendant.
The two different causes of action in effect pertain to tile same
transaction. The allegation of the plaintiff is that the defendant is selling
goods by mislabeling them and by infringing the trade mark and copy
right of the plaintiff. The sale is alleged to be made in cartons similar to
the ones in which the plaintiff had a copy right and it is further alleged
that those cartons contain the trade mark which is registered in the

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 plaintiff's name. A single transaction of sale by the defendant, in effect;
allegedly results in the infringement of both the trade mark and copy
right of the plaintiff.
7. The Code of Civil Procedure clearly contemplates joinder of
causes of action as is evident from Order II Rule 3 Civil Procedure Code .
It is permissible and up to the plaintiff, to units in the same suit several
causes of action against the same defendant. There is no prohibition
against the causes of action being joined together under The Trade and
Merchandise Marks Act and The Copy Right Act. A single suit like the
present would clearly avoid multiplicity of proceedings and while
agreeing with the earlier decisions of this Court we would answer the
reference by observing that, on the basis of the averments made in the
plaint, a single suit relating to two different causes of action viz., Trade
Mark and Copy Right is maintainable.”
(Emphasis Supplied)

14. A reading of the observations made in the judgment of M/s. Jay

Industries (supra) shows that the Division Bench was of the view that two
different causes of action in fact can be a part of the same transaction. The
same transaction is that transaction of the selling of goods by the defendant
by packing and labeling them in such a manner which infringes the
trademark and the copyright of the plaintiff. In such facts there would be
common bundle of facts in the two causes of action of infringement of
trademark and copyright, because there is a single and same transaction of
sale of the goods by the defendant of its goods in cartons under being similar
to the cartons in which the plaintiff sells its goods and which as per plaintiff
results in violation of his rights in his registered trade mark and copyright in
his label. The Division Bench has concluded that since the transaction of
sale by the defendant in effect results in the infringement of both the
trademark rights and violation of copyright of the plaintiff, therefore under
Order II Rule 3 CPC it is permissible to join the two causes of action against

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the same defendant and that in fact in such cases the joinder of causes of
action would result in avoidance of multiplicity of proceedings.

15. It is therefore seen that once a transaction of sale which is

impugned by the plaintiff results in infringement of two rights of the plaintiff
of infringement of plaintiff‟s trademark and violation of plaintiff‟s copyright,
since there would be common questions of law and facts because it is the
transaction of sale with its bundles of facts which is impugned being
common in both the causes of action, therefore joinder of causes of action
can take place under Order II Rule 3 CPC, and ought to be done because this
will avoid multiplicity of proceedings, hence keeping this ratio laid down by
the Division Bench of this court in the case of M/s. Jay Industries (supra) in
mind alongwith the ratio of the judgment of the Supreme Court in the case of
Prem Lata Nahata and Another (supra), as also the meaning of the
expression “cause of action” as expounded in Kusum Ingots & Alloys Ltd.’s
case (supra), let us forthwith examine as to what are the material facts of the
two causes of action of infringement of registered design and passing off by
the defendant of the article of the defendant which is similar or identical to
the design-article of the plaintiff.

16(i). In a suit for infringement of registered design the requirement is

of pleading existence of a registered design. Once a design is registered in
favor of person under the Designs Act then such a person in whose name the
design is registered, has for a period of ten years (plus five years) exclusive
right to manufacture the goods/articles as per the registered design vide
Sections 11 and 22 of the Designs Act.

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16(ii). In a suit alleging infringement of registered design, the defences
which are available to a defendant essentially are three fold, firstly of their
being prior publication of the registered design and which design is found in
the public domain, secondly of whether the registered design even if is
different/variation of a design existing in public domain yet the
difference(s)/variation(s) do not cause the design of the plaintiff to be a new
or original design because plaintiff‟s design is only a trade variation of an
existing design or that such variations do not give newness or originality to
the plaintiff‟s goods/articles adopting the design, and thirdly as to whether
the article being sold by the defendant is a fraudulent or obvious imitation of
the article of the plaintiff containing the registered design. It bears note that
the words “fraudulent or obvious imitation” which are found in Section 22 of
the Designs Act, have their flavor similar to the words identity/identical or
deceptively similar as are found in Section 29 of the Trade Marks Act.

16(iii). In a passing off action filed by a plaintiff, the plaintiff

has/claims ownership of a design because of shape, features, combination of
colours, etc of the goods of the plaintiff being used by plaintiff as a trade-
mark, and that such user is so duly envisaged as legal as per the definitions
of the expressions „mark‟ and „trademark‟ in Sections 2(1)(m) and (zb) of
the Trade Marks Act and that the transaction of sale by the defendant of its
articles containing the same shape or features or combination of colours etc
etc results in the sale by the defendant of its goods being passed off as that of
the plaintiff. 17. Therefore once the transaction of sale is the same
transaction which will be in question in both the causes of action of
infringement of a registered design and passing off, a substantial part of the

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bundles of facts of the two actions will be same as to whether or not the article
being sold by the defendant of a particular design is or is not a fraudulent or
obvious imitation (identical or deceptively similar) to the article of the plaintiff,
therefore, there will clearly exist common set of facts with respect to the actions
of passing off and the defence of the defendant of the defendant‟s goods/articles
not being a fraudulent or obvious imitation by the defendant of the
articles/goods of the plaintiff, resulting in arising of common questions of law
and fact in the two actions of infringement of the registered design and passing
off.

18. On 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 situation to avoid multiplicity of
proceedings there should 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 of the parties and also of the courts.

19. The reference is answered by holding that one composite suit can be
filed by a plaintiff against one defendant by joining two causes of action, one
of infringement of the registered design of the plaintiff and the second of the
defendant passing off its goods as that of the plaintiff on account of the
goods of the defendant being fraudulent or obvious imitation i.e identical or
deceptively similar, to the goods of the plaintiff.

VALMIKI J. MEHTA
(JUDGE)
DECEMBER 14, 2018

CS (COMM) 690/2018 Page 66 of 67

 ORDER OF COURT ON REFERENCE
For the views expressed above, the reference is hereby answered by
holding that a composite suit that joins two causes of action – one for
infringement of a registered design and the other for passing of, of the
plaintiff‟s goods – is maintainable.
The reference is answered accordingly. The Registry is directed to list
the suit for appropriate directions before the concerned roster judge.

S. RAVINDRA BHAT
(JUDGE)

HIMA KOHLI
(JUDGE)

VIPIN SANGHI
(JUDGE)

VALMIKI. J. MEHTA
(JUDGE)

VIBHU BAKHRU
(JUDGE)
DECEMBER 14, 2018

CS (COMM) 690/2018 Page 67 of 67