The three-judge bench verdict in Mohan Lal v. Sona Paint, overruled by Five-judge bench of the Delhi High Court in Carlsberg Breweries A/S. V. Som Distilleries and Breweries Ltd.

The High Court held that two causes of action – one for relief in respect of passing off, and another in respect of design infringement under the Designs Act, 2000 – can be joined and tried in a composite suit.

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

The present suit concerns infringement of the registered design as well as passing off of the plaintiff Carlsberg’s trade dress and overall get up of the “Carlsberg” mark by defendant, Som Distilleries and Breweries.

The two questions before the Bench for consideration were:

 (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

Under the Civil Procedure Code, there is no threshold bar on maintainability of suits on the perceived ground of mis-joinder of causes of action, thus preventing the court from trying a composite suit for two causes of action.

The causes of action that can be united in one suit have already been visualized under Order II Rule 3 of the CPC, and any bar, if so, is expressly provided for. The other bar can be said to be indicated in Section 80 CPC.”

Thus, holding that the conclusion in Mohan Lal, that two causes of action, cannot be joined, was erroneous.

For the second question, the Court noted that both causes of action, are against the same defendants, in respect of the same set of acts and transaction, with the only difference being that the relief claimed is different.

 “In such circumstances, it is inconceivable that a cause of action can be “split” in some manner and presented in different suits.”

The Court observed that a composite suit rather gives the advantage of a “bird’s eye view”, with respect to a common set of facts.

The same court can review the same facts and evidence, and conclude pendente-lite if prima facie passing off is made out,  necessitating interim relief.

Hence, it is important under Order II Rule 3 CPC to see if common questions of law and facts arise in two separate causes of action, whereupon there can be joinder of causes of action in one composite suit which joins two causes of action.

 The Court held that “On account of the 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.”

Thus, “…a composite suit that joins two causes of action – one for infringement of a registered design and the other for passing off, of the plaintiff’s goods – is maintainable.”