Court injunction restrains passing off highlighters, despite cancelable design. Plaintiffs win on passing-off claim.

The court granted an injunction to restrain the defendants from passing off their highlighters as those of the plaintiffs due to deceptive similarity and misrepresentation, despite the plaintiffs' design being liable for cancellation for prior publication. The plaintiffs were found to have ownership of the registered design, which was deemed valid under the Designs Act, 2000. The court ruled in favor of the plaintiffs on the passing-off claim, highlighting the likelihood of confusion among customers and the deceptive similarity between the products.

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Issues Involved:
1. Infringement of registered design.
2. Ownership of the registered design.
3. Validity of the registered design under the Designs Act, 2000.
4. Prior publication and its impact on the validity of the design.
5. Passing-off of goods.

Detailed Analysis:

1. Infringement of Registered Design:
The plaintiffs sought an injunction to restrain the defendants from infringing their registered design of a highlighter sold under the trademark "Textliner." The plaintiffs claimed that the defendants had adopted an almost identical configuration, shape, design, color scheme, and get-up for their product. The court noted that the defendants' highlighter was similar in style and configuration to the plaintiffs' highlighter, with both being flat in shape and having similar caps and bottom portions.

2. Ownership of the Registered Design:
The defendants challenged the plaintiffs' ownership of the design, arguing that the design's proprietorship vested in A.W. Faber-Castell GmbH & Co. and had not been assigned to the plaintiffs. The court found that the design was originally owned by A.W. Faber-Castell Unternehmensverwaltung GmbH & Co. and was assigned to A.W. Faber-Castell GmbH & Co., which later reorganized into Faber-Castell Aktiengesellschaft (plaintiff No. 1). The plaintiffs applied for recording their names as subsequent proprietors, and the Controller of Design recorded plaintiff No. 1 as the subsequent proprietor. Thus, the court concluded that the plaintiffs had title to the design.

3. Validity of the Registered Design under the Designs Act, 2000:
The defendants argued that the design at issue did not qualify as a design under the Designs Act, 2000, because it was registered only for the cap and plug, which are parts of an article not capable of being made and sold separately. The court rejected this argument, stating that the design was in respect of the shape and configuration of the entire highlighter, with particular novelty in the cap and plug portions.

4. Prior Publication and Its Impact on the Validity of the Design:
The defendants contended that the design was previously published and therefore liable to be canceled under section 19 of the Designs Act, 2000. The court considered whether the cancellation of the design should be governed by the Designs Act, 2000 or the Designs Act, 1911. The court concluded that the new Act of 2000 should govern matters of registration and cancellation, including prior publication on a global basis. The court found that the plaintiffs' design had been published in the U.S. and India prior to its registration, making it liable for cancellation. Consequently, the plaintiffs were not entitled to an injunction based on the infringement of the design.

5. Passing-off of Goods:
The plaintiffs claimed that the defendants were passing off their goods as those of the plaintiffs, leading to potential damage to the plaintiffs' reputation and goodwill. The court noted that the plaintiffs had acquired a reputation for their highlighters under the trademark "Textliner." The court found that the defendants' products were substantially similar to the plaintiffs' products, creating a likelihood of confusion among customers. The court rejected the defendants' argument that "Textliner" was purely descriptive, stating that the plaintiffs' claim for passing-off was based on the overall configuration, color scheme, trade dress, and get-up of their products. The court concluded that there was a deceptive similarity and misrepresentation, warranting an injunction to prevent the defendants from passing off their goods as those of the plaintiffs.

Conclusion:
The court allowed the Notice of Motion in terms of prayer clause (c), granting an injunction to restrain the defendants from passing off their highlighters as those of the plaintiffs, based on the overall deceptive similarity and misrepresentation.

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