Passing off and design cancellation: overall product similarity sustained injunction, while prior publication defeated the design infringement claim.

Title to the registered design was established through the registration certificate, assignment papers and recording of the plaintiff as proprietor, so ownership in the highlighter design was proved. The design infringement claim nevertheless failed because the earlier Designs Act, 1911 was treated as repealed and the Designs Act, 2000 applied to cancellation and prior-publication objections; on that footing, the design was prima facie vulnerable to cancellation for prior publication. Passing off was made out because the competing products were deceptively similar in overall get-up, colour scheme, configuration and presentation, and the word mark was merely descriptive. Injunctive relief followed on the passing-off claim.

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Issues: (i) whether the plaintiffs established title and proprietorship over the registered design in the highlighter; (ii) whether the design registration could be attacked on the ground of prior publication and whether the cancellation and defence provisions of the Designs Act, 2000 governed a design registered under the Designs Act, 1911; and (iii) whether the defendants' product amounted to passing off by reason of deceptive similarity in the trade mark, get-up, colour scheme, configuration and overall presentation.

Issue (i): whether the plaintiffs established title and proprietorship over the registered design in the highlighter

Analysis: The certificate of registration, the assignment and reconfirmation documents, and the subsequent recording of the plaintiff as proprietor showed that the design had been transferred and re-vested in the plaintiff. The reference to "appearance of goods" in the assignment documents was treated as referring to the design in context. The evidence was sufficient to establish ownership and title to the registered design.

Conclusion: The issue was decided in favour of the plaintiffs.

Issue (ii): whether the design registration could be attacked on the ground of prior publication and whether the cancellation and defence provisions of the Designs Act, 2000 governed a design registered under the Designs Act, 1911

Analysis: The earlier Act was treated as repealed, while the savings clause was read as preserving prior acts only to the extent they continued under the corresponding provisions of the new Act. The scheme and objects of the Designs Act, 2000 showed an intent to enlarge the grounds of prior publication and to apply the new cancellation framework. Accordingly, prior publication outside India could be relied on under the post-2000 regime, and the design was found prima facie vulnerable to cancellation on that basis.

Conclusion: The issue was decided against the plaintiffs on the question of relief based on design infringement.

Issue (iii): whether the defendants' product amounted to passing off by reason of deceptive similarity in the trade mark, get-up, colour scheme, configuration and overall presentation

Analysis: The word mark itself was treated as descriptive and not shown to have acquired exclusive source significance. However, the overall get-up, arrangement of lettering, colour scheme, body shape, cap, clip, and general presentation of the competing products were found to be so close that an average purchaser would likely be confused. Passing off was assessed on the overall deceptive similarity of the goods as sold in the market, not on the word mark alone.

Conclusion: The issue was decided in favour of the plaintiffs, and passing off was made out on the overall appearance of the goods.

Final Conclusion: The notice of motion was allowed and injunctive relief followed on the basis of passing off, while the design-based infringement claim failed because the registered design was held prima facie liable to cancellation for prior publication under the applicable statutory regime.

Ratio Decidendi: Upon repeal of the earlier designs legislation, the later Act governed cancellation and related defences for registered designs, and passing off is determined by the deceptive similarity of the goods as a whole and not by a descriptive word mark alone.

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