9911796707
TMI Blog2003 (4) TMI 614X X X X Extracts X X X X X X X X Extracts X X X X ..... on of the plaintiffs highlighter and states as follows : The novelty resides in the shape and configuration of the line marker in particular in the cap portion C and the ornamental surface pattern P. as illustrated. There is an ornamental surface pattern on the plug at the bottom of the highlighter. The plug is that part of the highlighter used for filling the fluorescent ink. The registered design is dated 31-7-1997 and certified on 12-1-1998. 3. The unique features of the plaintiff s products are : (i) A dark green body; (ii) A unique cap of the same colour as the colour of the ink; (iii) Gold lettering on the green body; (iv) Trade mark TEXTLINER . The defendants have adopted body of an identical green colour, identical colour cap with gold lettering on the green body, the trade mark TEXTLINER as also identical text which is even arranged in the same manner as on the plaintiff s highlighter. 4. The plaintiffs have commenced marketing their product. They claim that the trade mark and design have become distinctive of their goods and the marks have come to be exclusively associated with the plaintiffs because of the unique shape and configuration, colour scheme and get-up. In Indi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... by the defendants as to the entitlement of the plaintiffs to the proprietorship of the design and those must be dealt with first. 7. The defendants challenged the plaintiffs ownership of the design. They submit that the plaintiffs are not the registered proprietors of the design since, according to the defendants, the proprietorship of the design vests in A.W. Faber-Castell GmbH Co. , and it has not been assigned to the plaintiffs i.e., Faber-Castell Aktiengesellschaft i.e., the plaintiffs No. 1 and A.W. Faber-Castell (India) Pvt Ltd. i.e., the plaintiff No. 2. This contention is mainly based on the document dated 23-12-1998 by which A.W. Faber-Castell Unternehmensverwaltung GmbH Co. has purported to transfer its various rights in trade marks, service mark, logo, appearance of goods in favour of A.W. Faber-Castell GmbH Co. On 20-12-2000 this last company A.W. Faber-Castell GmbH Equal Co. has been reorganized and Faber-Castell Aktiengesellschaft i.e., the plaintiff No. 1 has come into existence. But according to the plaintiffs, the assignment in favour of A.W. Faber-Castell Aktiengesellschaft itself does not result in the assignment of the design because what is assigned are trade ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of being made and sold separately. Therefore, the design does not qualify as design at all. This submission deserves to be completely rejected. It is clear from the certificate at exh. C that the design is in respect of the shape and configuration of the line maker i.e., the whole of it and not only the cap and the plug. It is only in particular that the cap portion and the plug portion are identified as novel. 9. The next contention on behalf of the defendants is that the design was previously published and, therefore, it is liable to be cancelled under section 19 of the Designs Act, 2000. Such a ground for cancellation is available as a ground of defence by virtue of section 22(3) of the Designs Act, 2000 and, therefore, the plaintiffs are not entitled to an injunction based on such a design which has been published in a country outside India i.e., the U.S.A. as well as in India. Now it must be noted that under the Designs Act, 1911, only a design not previously registered in India could be registered vide section 43. Likewise, a petition for cancellation of the registration of the design could be presented on the ground that the design had been published in India prior to the d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ncement of this Act, continue to be in force and have effect as it made, issued, given or done under the corresponding provisions of this Act. (3) The provisions of this Act shall apply to all applications for registration of designs pending at the commencement of this Act and to any proceedings consequent thereon and to any registration granted in pursuance thereof. (4) Notwithstanding anything contained in this Act, any proceeding pending in any Court at the commencement of this Act may be continued in that Court as if this Act has not been passed. The consequence is clearly this, that the old Act of 1911 is repealed. As regards registration, etc., done under the old Act, sub-section (2) clearly lays down that it shall continue to be in force and have effect as if done under the corresponding provisions of the new Act. This means that registration of the design must continue in force and have effect as thing done under section 4 of the Act. It is, therefore, clear that the intention of Parliament is that all things done under the old Act can only be continued to be in force and have effect as if made under the corresponding provision of the new Act. The only exception made in sec ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... It also prohibits registration of designs which had been disclosed to the public anywhere in India or in any other country by publication in tangible form or in any other way prior to the filing date or which is not significantly distinguishable from non designs or combination of non-designs or comprises or contains scandalous or obscene matter. Clause 5. This clause corresponds to section 43 of the existing Act and deals with application of registration of designs. The existing clause has been modified in order to register any design which is new or original or not previously published in India or in any other country and which is not contrary to public order and morality. This clause also seeks to provide for the application for registration of every design to be referred to an examiner appointed under clause 3 of the proposed legislation for ascertaining the registrability of the design. In view of introduction of classification of articles based on International System of Classification, the designs need not be registered in more than one class unlike under the existing Act. This clause also seeks to provide that the appeals may be preferred to the High Court instead of the Cen ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... was observed by Tindal, C.J., in the case of Kay v. Goodwin (ER p. 1405) The effect of repealing a statute is to obliterate it as completely from the records of the Parliament as if it had never been passed; and, it must be considered as a law that never existed, except for the purpose of those actions which were commenced, prosecuted, and concluded whilst it was an existing law. 53. The provisions of a repealed statute cannot be relied upon after it has been repealed. But, what has been acquired under the Repealed Act cannot be disturbed. But, if any new or further step is needed to be taken under the Act, that cannot be taken even after the Act is repealed. (p. 122) This view was reiterated by their Lordships in Parripati Chandrasekharrao Sons v. Alapati Jalaih [1995] 3 SCC 709. It is, therefore, clear that it is the intention of Parliament that all matters pertaining to registration and its cancellations are intended to be governed by the new Act i.e., the Designs Act, 2000 and not the old Act i.e., the Designs Act, 1911. 11. The learned counsel for the plaintiffs relied on the decision of the Supreme Court in Thyssen Stahlunion GmbH v. Steel Authority of India Ltd.: AIR 1999 S ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hat it is the intention of Parliament that matters of registration and cancellation should be dealt with under the new Act. I do not consider it appropriate to nullify or in any way dilute that intention on the alleged ground of hardship. It was argued that registrations granted under the old Act would suddenly become vulnerable on the ground that those designs were published outside India - a ground not available at the time of registration; and that there would be many applications for cancellation of registrations. Firstly, such a consequence even assuming it to be real cannot be allowed to affect the intention of Parliament. Even otherwise, admittedly, registrations are granted for a fixed duration such as 10 years and are not permanent. The argument of hard consequences does not have much substance in this case. The learned counsel for the defendant submitted that the registered design of the plaintiffs has been published outside India i.e., in the U.S.A. and also in India, prior to the date of registration of the plaintiffs design. The plaintiffs design was registered on 1-8-1997. According to the defendants, a substantially similar design was published on 5-5-1992 and 2-11-1 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d to constitute publication. In Wimco Ltd., Bombay v. Meena Match Industries, Sivakasi 1983 P.T.C. 373, the Delhi High Court accepted the meaning of publication as stated in Russel-Clarke in Copyright in Industrial Designs, Fourth Edition. The Delhi High Court observed as under : 8. The word published used in sections 43 and 51A of the Act has not been defined in the Act. Publication within the meaning of the Act means the opposite of being kept secret. It is published if a design is no longer a secret. There is publication if the design has been disclosed so the public or the public has been put in possession of the design. Russel-Clarke in Copyright in Industrial Designs, Fourth Edn. (pages 41-42) says : ...........It is sufficient, and there will be publication if the knowledge was either:- (1) Available to members of the public; or (2) Actually in fact shown and disclosed to some individual member of the public who was under no obligation to keep it secret. It is not necessary that the design should have been actually used. There will just as much be publication if it is shown that it was known to the public without ever having been actually put into use. Thus, publication may ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... any misrepresentation which is likely to lead confusion or deception and whether there is a likelihood of any damage to the plaintiffs reputation. 15. At the outset, it must be noted that the plaintiffs are claiming an injunction against passing-off not only on the basis of the trade mark TEXTLINER , but they claim a uniqueness in the configuration, shape, design, colour scheme and get-up of their products. Prima facie, one must observe that the defendants products strike the eye as very similar to the plaintiffs product. In fact, from a distance they are virtually indistinguishable. Mr. Tulzapurkar, learned counsel for the defendants, however, submits that the plaintiffs are not entitled to claim any property in the trade mark TEXTLINER because that word is purely descriptive of the nature and the character of the function to be performed by the goods in question, viz., a device/instrument to mark or line the text or any written or printed matter. According to him, therefore, the word TEXTLINER is purely descriptive of the nature and/or character and the function of the goods in question is not and cannot be a trade mark at all. The learned counsel refers to para 1(d) of the 2nd ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tiffs success that they should prove that these terms no longer mean what they say or no longer mean only what they say but have acquired the secondary and further meaning that the particular goods are goods made by the plaintiffs, and, as I have already indicated, it is in my view difficult to conceive cases in which the facts will come up to this. Prima facie, it would follow that the word Textliner is neither adapted to distinguish nor capable of distinguishing the goods of a particular manu-facturer from those of another. 16. But is it the case that the plaintiffs goods taken as a whole have nothing distinctive so as to identify them with the plaintiffs? The plaintiffs have claimed an injunction against passing-off based not only on the mark TEXTLINER , but also on the configuration and colour scheme, trade dress and get-up. The question, therefore is whether taking the plaintiffs highlighter as a whole and the defendants highlighter as a whole, it could be said that the defendants are passing-off their goods as those of the plaintiffs. I am of view that the answer must be in the affirmative. Now the theory of passing-off has been described adequately in a passage from Reckitt ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the body of the highlighter. These instruments may come in many shape, round, oval, tapering from one end to the other, etc. With this, the similarities between the two may be considered. To take up the plaintiffs Textliner first, the text of the plaintiffs reads as follows : FABER-CASTELL TEXTLINER 48 REFILL PAPER-COPY-FAX. The text of the defendants reads as follows : KOLORPIK TEXTLINER 999 PAPER-COPY-FAX. Between the first two lines, line of the same size runs amongst both marks. The text is written in gold lettering in almost identical font. Even the words in the last line Paper-copy-fax are written identically with the full-stop in between. Other than the plaintiffs there is no other highlighter which is called Textliner . Thus while it is possible to argue that anybody looking at the text of both would be able to see that the plaintiffs have Faber-Castell written on it and the defendants Kolorpik written on it, in fact however the way the text is arranged and the colour of the lettering used makes it confusing, particularly when they are not looked at and compared simultaneously. Such simultaneous comparison does not necessarily take place while purchasing. Therefore, if the ..... X X X X Extracts X X X X X X X X Extracts X X X X
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