Finally ‘Two-in-One’ is ‘Good-to-Go’

It is now possible for trademark and design infringement to be alleged in a single lawsuit. A five-judge bench of the Delhi High Court reaffirmed this no-brainer last month in Carlsberg Breweries v. Som Distilleries and Breweries (Decision dated 14.12.2018 in CS(COMM) 690/2018). However, the path to this common-sense ruling is rife with five years of legal uncertainty resulting from the court’s earlier decision on the issue in 2013 – by a three-judge bench (Mohan Lal v. Sona Paint, 2013 (55) PTC 61 (Del) (FB)).

In its 2013 Mohan Lal decision, the Delhi High Court ruled that trademark infringement and design infringement, must initially, be alleged in separate lawsuits and can only, subsequently, be consolidated in a single law suit (with the court’s permission). The court’s 2013 ruling was premised on the approach that trademark infringement and design infringement allegations should, initially, be presumed to be distinct and unrelated wrongdoings (since they are governed by different statutes), and if and only if the complainant can, subsequently, show the court that trial would be expedited by a consolidated suit – consolidating the two suits into one was justifiable.

However, in Carlsberg Breweries, a five-judge bench of the court called into question the court’s Mohan Lal decision by asking – Is a composite lawsuit (alleging trademark and design infringement) inadmissible owing to practice rules that identify lawsuits as per the relief claimed? The obvious reason for answering this in the negative is that in composite IP suits – the relief claimed is, generally, an injunction, whereas trademark infringement and design infringement are merely the grounds on which the claim is based. Since the claim is one (albeit on different grounds), the lawsuit must necessarily be one.

Besides the above reason, another reason why the court departed from its earlier view was that the 2013 Mohan Lal decision did not discuss the implications of a practice rule that, in fact, encouraged consolidation of lawsuits to expedite trial.

The Carlsberg Breweries decision offers a sigh of relief to pending IP suits where injunctions have been claimed on the basis of different kinds of IP violations. These lawsuits are no longer at risk of being rejected merely on the basis that the complainant did not, initially, file separate lawsuits for each kind of IP violation.