Trade mark versus design: a source-identifying lens feature can support passing off and justify interim restraint.

A source-identifying feature used on ophthalmic blanks or lenses may constitute a trade mark, even if it is also embodied in a physical form and registered as a design, where its function is to distinguish trade origin rather than create aesthetic appeal. The Delhi HC held prima facie that the "two ribs" feature served as a trade identifier and was not merely a design. It also accepted prima facie evidence of prior use, goodwill and trans-border reputation, and found that misuse by others could amount to passing off. Interim protection was therefore granted to restrain use of the feature, while the counter-request for restraint was rejected.

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Issues: (i) Whether the "two ribs" feature on ophthalmic blanks/lenses was a trade mark or a design; (ii) whether the plaintiffs had made out a prima facie case of prior use, goodwill and passing off so as to justify interim injunction.

Issue (i): Whether the "two ribs" feature on ophthalmic blanks/lenses was a trade mark or a design.

Analysis: The definitions of mark and trade mark under the Trade and Merchandise Marks Act, 1958 contemplated a device or other distinguishing mark used to indicate trade connection, while a design under the Designs Act, 2000 referred to features of shape, configuration, pattern or composition of lines or colours judged solely by the eye. The distinguishing feature on the lenses was found to be too small to serve an aesthetic purpose and was used by traders and opticians to identify source. Mere registration as a design was not conclusive where the feature functioned as a source identifier.

Conclusion: The "two ribs" feature was prima facie a trade mark and not a design.

Issue (ii): Whether the plaintiffs had made out a prima facie case of prior use, goodwill and passing off so as to justify interim injunction.

Analysis: The record showed long use and promotion of rib markings by the plaintiffs and their assignor, together with trade recognition and trans-border reputation. The assignment in favour of the plaintiffs was accepted prima facie, and the defendants had no right to use the mark to pass off their goods as those of the plaintiffs. The Court also found that the balance of convenience and irreparable injury favoured protection because the goods were used in vision correction and misleading use of the mark could harm consumers and goodwill.

Conclusion: The plaintiffs established a prima facie case for passing off and interim protection, and the injunction was warranted.

Final Conclusion: Interim relief was granted restraining the defendants from using the "two ribs" mark on ophthalmic blanks/lenses, while the defendants' counter-application for restraint against the plaintiffs was rejected.

Ratio Decidendi: A feature used in trade to identify source and distinguish goods, even if embodied in a physical form and registered by another as a design, may constitute a trade mark and can be restrained in passing off when prior use, goodwill and likelihood of deception are prima facie shown.

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