Full bench of Delhi High Court on a reference held that:
(i) A plaintiff could institute a suit for infringement of a design against a defendant, who was also a holder of a registered design (subsequent registrant). The expression "any person" found in Section 22 of the Designs Act would not exclude a subsequent registrant as, no such words of limitation are found in said Section.
(ii) A plaintiff is entitled to institute an action of passing off in respect of a design used by him as a trade mark provided the action contains the necessary ingredients to maintain such a proceeding.
While Section 2(d) of the Designs Act excludes from the definition of a design, any trademark which is defined as such in clause (v) of sub-Section (1) of Section 2 of the 1958 Act or property mark, as defined in Section 479 of the IPC, or any artistic work as defined in clause (c) of Section 2 of the Copyright Act - the use of the design as a trademark post its registration, is not stipulated as a ground for cancellation under Section 19 of the Designs Act.
(iii) A composite suit for infringement of a registered design and a passing off action would not lie. The Court could, however, try the suits together, if the two suits are filed in close proximity and/or it is of the view that there are aspects which are common to the two suits. The discretion of the court in this matter would necessarily be paramount.