Passing off turns on overall commercial impression; deceptively similar get-up can justify injunction even if the word mark is descriptive.

A passing-off claim may succeed even where the word mark is descriptive, if the composite get-up, colour scheme, arrangement and presentation of the competing products create deceptive similarity and misrepresentation of trade origin. The article also notes that a registered design can be challenged for prior publication under the Designs Act, 2000, and that publication in India or abroad before registration may defeat a design infringement claim. On the facts discussed, the court treated prior publication as a valid defence to design infringement, while the overall appearance of the defendants' product supported injunctive relief for passing off.

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Issues: (i) whether the defendants could resist the injunction on the ground that the registered design was liable to cancellation for prior publication under the applicable design law, and (ii) whether the defendants' highlighter amounted to passing off by reason of deceptive similarity in the mark, configuration, colour scheme and get-up.

Issue (i): whether the defendants could resist the injunction on the ground that the registered design was liable to cancellation for prior publication under the applicable design law.

Analysis: The registered design was originally obtained under the Designs Act, 1911, but the dispute over infringement and cancellation had to be considered in the light of the Designs Act, 2000. The repeal-and-savings provision preserved things done under the old Act, yet matters of registration and cancellation were treated as governed by the new Act, which introduced global prior publication as a ground of cancellation. The design was found to have been published in India and abroad before registration, and the Court treated that as a valid defence to the design infringement claim.

Conclusion: The design infringement claim was not available to the plaintiff, as the registered design was prima facie vulnerable on the ground of prior publication under the Designs Act, 2000.

Issue (ii): whether the defendants' highlighter amounted to passing off by reason of deceptive similarity in the mark, configuration, colour scheme and get-up.

Analysis: The word mark used by the plaintiff was held to be descriptive when viewed by itself and not shown to have acquired exclusive distinctiveness. However, the overall presentation of the goods was examined as a whole, including the body colour, cap, plug, lettering, arrangement of words and general get-up. On that composite assessment, the defendants' product was found to create a confusing and deceptive resemblance likely to mislead purchasers and cause misrepresentation of trade origin.

Conclusion: The passing-off claim succeeded, as the defendants' get-up and overall presentation were deceptively similar to the plaintiff's product.

Final Conclusion: The motion was granted because the plaintiff established a prima facie case of passing off based on the overall deceptive similarity of the competing products, and the defendants' use of the impugned get-up warranted injunctive relief.

Ratio Decidendi: In a passing-off action, a court must assess the overall commercial impression of the competing goods, and even if a word mark is descriptive, injunctive relief may follow where the composite get-up, colour scheme, arrangement and presentation create deceptive similarity and misrepresentation of trade origin.

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