2003 (4) TMI 614 - HC - Indian Laws

Court Rules on Design Infringement: Prior Publication Leads to Cancellation, Passing-Off Injunction Granted.

The HC determined that the defendants infringed the plaintiff's registered design for a highlighter, but due to prior publication, the design was liable ... - Issues Involved:1. Infringement of Registered Design2. Ownership and Proprietorship of Design3. Prior Publication and Grounds for Cancellation4. Passing-Off and MisrepresentationIssue-wise Detailed Analysis:1. Infringement of Registered Design:The primary issue was whether the defendants infringed the plaintiff's registered design No. 174429 for a highlighter. The design, registered under the Designs Act, 1911, was characterized by its unique shape, configuration, and ornamental pattern. The court noted that the defendant's highlighter was similar in style and configuration, including the cap and bottom plug, which were judged solely by the eye to be indistinguishable from the plaintiff's design. Despite these similarities, the court had to consider the defendants' challenges to the plaintiff's entitlement to the design's proprietorship.2. Ownership and Proprietorship of Design:The defendants contested the plaintiff's ownership of the design, arguing that the proprietorship vested in another entity, A.W. Faber-Castell GmbH & Co., and had not been assigned to the plaintiffs. The court examined the chain of assignments and found that the design was originally owned by A.W. Faber-Castell Unternehmensverwaltung GmbH & Co. and was subsequently assigned to the plaintiffs. The court concluded that the plaintiffs were indeed the rightful owners and had a valid title to the registered design.3. Prior Publication and Grounds for Cancellation:The defendants argued that the design had been previously published in the USA and India, thus making it liable for cancellation under section 19 of the Designs Act, 2000. The court had to determine whether the cancellation should be governed by the old Designs Act, 1911, or the new Designs Act, 2000. The court concluded that the new Act applied, as it was Parliament's intention to govern matters of registration and cancellation under the new Act. The court found that the plaintiff's design was published in the USA and India before its registration, making it prima facie liable for cancellation. Consequently, the plaintiffs were not entitled to an injunction based on design infringement.4. Passing-Off and Misrepresentation:The plaintiffs claimed that the defendants were passing-off their goods as those of the plaintiffs, leveraging the trade mark 'TEXTLINER' and the overall configuration, shape, design, colour scheme, and get-up of the product. The court noted the significant similarity between the products, including the text arrangement, colour scheme, and overall appearance, which could confuse the average consumer. Despite the descriptive nature of the word 'TEXTLINER,' the court found that the defendants' product was deceptively similar to the plaintiffs' product, leading to misrepresentation and potential damage to the plaintiffs' reputation and goodwill. The court concluded that this constituted passing-off and granted an injunction in favor of the plaintiffs.