S.A. Bobde, J.@mdashThis is a Plaintiffs Motion for an injunction restraining the defendants from infringing the plaintiffs registered design of a marker pen or a highlighter sold by the plaintiffs under the trade mark "TEXTLINER". The plaintiffs also claim an injunction restraining the defendants from passing-off their highlighter or marker pen under the trade mark "TEXTLINER" by use of the impugned trade mark "TEXTLINER" and by adopting the almost identical configuration, shape, design, colour scheme and get-up for their product.
2. The plaintiffs are proprietors of registered design No. 174429 dated 1.8.1997. This registration is under the Designs Act, 1911. It was issued on 12.1.1998. The Certificate of Registration contains a pictorial representation 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 filing the fluorescent ink. The registered design is dated 31.7.1997 and certified on 12.1.1998.
3. The unique features of the plaintiffs produces 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 plaintiffs'' 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 India, the plaintiffs claim annual sales, upwards of one crore per year. The sale figure for 1998 to 2002 are at exh. ''F''. The defendants appear to have started marketing their highlighter bearing an identical trade mark "TEXTLINER" in October 2002. The defendants highlighter bears "KOKORPIK". It also contains the word mark "TEXTLINER" and other words which are identical to the plaintiffs highlighter. These similarities have given rise to this dispute.
5. The first question that arises is whether the defendant is infringing registered design No. 174429 of the plaintiffs in respect of the highlighter. The design is registered for a term of ten years from 1.8.1997 u/s 11(1) read with Section 2(c) of the Designs Act, 1911. "Design" has been defined by Section 2(5) of the Designs Act, 1911 to mean the features of shape, configuration, pattern or ornament applied to any article and which in the finished article appeal to and are judged solely by the eye. The exact definition reads as follows:-
"(5) "design" means only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in Clause (v) of Sub-section (1) of Section 2 of the Trade and Merchandise Marks Act, 1958, or property mark as defined in Section 479 of the Indian Penal Code."
The defendants'' highlighter is similar in style and configuration with that of the plaintiffs. Both are flat in shape, not round. The cap is similar and also the bottom portion of the highlighter consisting of plug is also similar. Equally important, the body of the defendants'' highlighter is similar to that of the plaintiffs and identical in every respect. According to the plaintiffs, the defendants have obviously imitated the plaintiffs'' design and the cap of the defendants'' line makers is very close to that of the plaintiffs.
6. It must be stated at the outset that judged solely by the eye, there is an inescapable similarity in the designs. In fact, barring the slight curves at two ends of the body, the design appears to be the same. However, several questions have been raised 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 challenge 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 of goods" in favour of A.W. Faber-Castell Gmbh & Co. On 20.12.2000 this last company A.W. Faber-Castell Gmbh & Co. has been reorganised 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 marks, service marks, logos and appearance of goods. In the submission of the learned counsel for the defendants, the design has not been assigned and "the appearance of goods" cannot be design. This submission does not seem to be correct. Design means the features of shape, configuration, pattern, etc., which appeal and are judged solely by the eye. Prima facie, in the context, therefore, "appearance of goods" really means "design". It appears that the expression "design" has not been used in the document submitted to this Court since the document is a certified translation from the German language. I, therefore, find from the document dated 23.12.1998 that the design was originally owned by A.W. Faber-Castell Unternehmensverwaltung Gmbh & Co., and was assigned along with the entire industrial proprietary rights of that company to A.W. Faber-Castell Gmbh & Co. On 20.12.2000 as a result of the reorganisation of A.W. Faber-Castell Gmbh & Co., the plaintiff No. 1 Faber-Castell Aktiengesellschaft came into being. Further, in January 2003 the plaintiffs applied for recording their names as subsequent proprietors of the suit design and in February 2003, A.W. Faber-Castell Unternehmensverwaltung Gmbh & Co. executed a deed of reconfirmation, transfer and assignment of registered design to the plaintiff No. 1. Thus the plaintiff have filed a deed of reconfirmation with the Controller for recording themselves as subsequent proprietor and on 19.4.2000, the Controller of Design recorded the plaintiff No. 1 as subsequent proprietor of the registered design. This last document is at exh. ''E'' to the affidavit of Mr. Govardhan Gajjal dated 28.4.2003. I, therefore, find that the plaintiffs are the owners and have a title to the said design.
8. The next contention on behalf of the defendants is that the design at exh. ''C'' to the plaint is not a design as defined under the Designs Act, 2000. According to the learned counsel for the defendants, "design" has been defined by Section 2(d) to mean only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article. "Article" has been defined by Section 2(a) to mean any article of manufacture and includes any part of an article capable of being made and sold separately. The submission is that the design is registered only in respect of cap and plug and these are parts of an articles which are not capable of being made and sold separately. Therefore, the design does not quality 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 u/s 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 date of registration vide Section 51A. The contention of the leaned counsel for the defendants is that an injunction should be refused on the ground that the design has been published not only in India prior to its registration but also in the U.S.A. which is any other country as contemplated by Section 19(1)(b) of the Designs Act, 2000. This contention is strongly resisted by the plaintiffs because, according to the plaintiffs, the registration of the design in question cannot be cancelled on the ground that it has been published in any other country prior to the date of the registration simply because this ground for registration has been introduced, for the first time, by the Designs Act, 2000. The design in question having been registered under the Designs Act, 1911, its cancellation is governed entirely by the provisions of that Act. Since that Act made provision for cancellation of the design only on the ground that it had been published in India alone prior to the date of registration, the vulnerability of the design for the purpose of cancellation can be considered only with reference to the Designs Act, 1911 and not the Designs Act, 2000. In sort, whether the registration of the design in question should be considered as liable for cancellation must be decided only on the basis whether the design had been published in India prior to its registration and not whether it was published outside India; the latter being the ground for cancellation provided only by the new Act, i.e., Designs Act, 2000.
The question is whether the cancellation of the design in question is governed by the Designs Act, 2000 or the Designs Act, 1911. The Designs Act, 2000 i.e. Act No. 16 of 2000 was enacted on 25.5.2000 as "an Act to consolidate and amend the law relating to protection of designs". This enactment repeals the earlier Act i.e. the Designs Act, 1911. Section 48 of the new Act reads as follows:-
"48. Repeal and savings.--The Designs Act, 1911 (2 of 1911) is hereby repealed.
(2) Without prejudice to the provisions contained in the General Clauses Act, 1897 (10 of 1897) with respect to repeals, any notification, rule, order, requirement, registration, certificate, notice design, determination, direction, approval, authorisation, consent, application, request or thing made, issued, given or done under the Designs Act, 1911 (2 of 1911), shall, in force at the commencement of this Act, continue to be in force and have effect as if 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 a thing done u/s 4 of the Act. It is, therefore, clear that the intention of Parliament is that the 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 Section 48 is provided in Sub-section (4) which provides that any proceeding pending in any Court at the commencement of the new Act may be continued in that Court as if the new Act had not been passed. It is, therefore, clear that Parliament intended that all things done under the old Act, after the enactment of the new Act be governed only by the new Act, the old Act being completely repealed.
In particular, as regards the question of registration and its cancellation, the Statement of Objects and Reasons for the new Act throws light on the intention of Parliament to govern these matters according to the new Act of 2000. The relevant part reads as follows:-
"Since the enactment of the Designs Act, 1911 considerable progress has been made in the field of science and technology. The legal system for the protection of industrial designs requires to be made more efficient in order to ensure effective protection to registered designs. It is also required to promote design activity in order to promote the design element in an article of production. The proposed Designs Bill is essentially aimed to balance these interests. It is also intended to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity while removing impediments to the free use of available designs."
To achieve the above purposes, the Bill incorporates inter alia, the following:-
(a) .......................................
(b) it amplifies the scope of "prior publication";
..............................................
(l) it introduces additional grounds in cancellation proceedings and makes provision for initiating the cancellation proceedings before the Controller in place of High Court;
.....
(n) it contains provisions for grounds of cancellation to be taken as defence in the infringement proceedings to be initiated in any court not below the court of the District Judge;
.............................................................
2. In view of the extensive amendments necessitated in the Designs Act, 1911 it has been thought fit to repeal and re-enact the said Act incorporating the necessary changes."
The relevant portions of the Notes on Clauses published in the Gazette of the India Extraordinary reads as follows:-
"Clause 4.--This clause is a new one and it relates to prohibition of registration of certain designs. This clause prohibits designs which lacks novelty or originality. 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 contain 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 more in 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 Central Government as specified under the existing Act.
.............................................................
Clause 19.--This clause corresponds to Section 51A of the existing At and it deals with cancellation of registration of designs. In addition to the grounds of cancellation provided in the existing provisions, the following grounds have been added, namely:-
(i) that the design is not registrable under the proposed legislation;
(ii) that it is not a design as defined in Clause (b) of Clause 2 of the proposed legislation,
the provision contained in Sub-clause (b) of Sub-section (1) of Section 51A of the existing Act is proposed to be amplified in order to consider the prior publication on global basis instead of regional basis, i.e. in India.
The said additional grounds will help interested person to get cancelled the registered design in better comprehensive manner. All grounds of cancellation can be taken up before the Controller irrespective of any particular time limit in place of restricted ground and specified time limit under the existing Act. Such amplification will avoid expenses and time involved in High Court as mandatory under the existing Act."
It is obvious, that it was the avowed intent of Parliament to provide for new ground for cancellation of registration so as to include prior publication in any other country and also to bring about changes in the conditions for registration of designs vide Clause 5. It appears that it is the intention of Parliament to specifically consider the question of prior publication "on global basis instead of regional basis i.e. in India" vide Clause 19.
10. In
"..... By Amending Act the legislature has withdrawn the protection hitherto enjoyed by the tenants who were paying Rs. 3500 or above as monthly rent. If the tenants were sought to be evicted prior to the amendment of the Act, they could have taken advantage of the provisions of the Act to resist such eviction by the landlord. But this was nothing more than a right to take advantage of the enactment. The tenant enjoyed statutory protection as long as the statute remained in force and was applicable to him. If the statute ceases to be operative, the tenant cannot claim to continue to have the old statutory protection. It 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."
This view was reiterated by their Lordships in
11. The leaned counsel for the plaintiffs relied on the decision of the Supreme Court in
"64. Revocation of patents--(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, on the petition of any person interested or of the Central Government or on a counter-claim in a suit for infringement of the patent, be revoked by the High Court on any of the following grounds, that is to say:-
.....
(e) that the invention so far as claimed in any claim of the complete specification is not nw, having regard to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in Section 13;
Provided that in relation to patents granted under the Indian Patents and Designs Act, 1911 (2 of 1911), this clause shall have effect as if the words "or elsewhere" has been omitted;"
In contrast, that is not done in this case. It is, therefore, clear that the question of registration and cancellation of registration must be decided under the new Act. Therefore also the question whether and to the extent to which it can be used as a ground of defence in a suit for injunction will also have to be decided with reference to the new Act.
12. Having come to the conclusion that 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 registration 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 2.11.1993 being United States patent Nos. Des.325,931 and Des. 340,947. These very designs were published in the U.S. Gazettes which Gazettes were received by the Patent Office at Calcutta on 14.8.1992 and 25.3.1994 and these were available to the public in the Patent Officer library prior to 1.8.1997. There is no effective denial that the U.S. patents were received by the Patent Office at Calcutta. The Dy. Controller of Patents & Designs, Calcutta, has written a letter dated 2.4.2003 which is at exh. ''Z'' to the defendants affidavit dated 5.4.2003 in which the Controller has clearly stated that the U.S. Gazettes were received by that office on 14.8.1992 and 25.3.1994 and that the said Gazettes were a part of the records of the Patent Office Library and were available for public inspection. The learned counsel for the plaintiffs, however, contended that the publication is not of a design which can be said to be substantially similar. Going purely by the design aspect, I find that there is substantial similarity between U.S. patent Nos. Des.340,947 patented on 2.11.1993 and the registered design of the plaintiffs. The only difference seems to be that the length of the clip on the U.S. design is not as long as in the plaintiffs design and further the clip in the U.S. design has three lines or striation which the plaintiffs clip does not have. The rest of the design seems to be similar. There appears to be one difference between the two and that is the fact that the highlighter in the U.S. design seems to be a transparent body. I do not see the importance of the colour or transparency of the body or its similarity while considering the substantial similarity of the design. Prima facie, the plaintiffs design is liable for cancellation on account of the fact that it was published in India and also in the United States prior to the date of its registration. The plaintiffs are, therefore, not entitled to an injunction on the ground of infringement of the design in view of the provisions of Section 19 read with Section 21 of the Designs Act, 2000. The learned counsel for the plaintiffs at one stage disputed the fact of publication of the design in India and abroad on the ground that the publication cannot mean a mere pictorial publication of the design but can be said to take place only where and when goods are produced. This argument must be rejected in view of what has been held to constitute publication. In The Wimco Ltd., Bombay v. Meena Match Industries, Sivakasi and Ors., reported in 1983 P.T.C. 373, the Delhi High Court accepted the meaning of publication as stated in Russel-Clarke in Copyright in Industrial Design, 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 must be publication if it is shown that it was known to the public, without ever having been actually put into use Thus, publication may be of two types:
(a) Publication in prior documents,
(b) Publication by prior user."
It was observed that publication even to a single person is sufficient.
12. in Gunston v. Winox Ltd., reported in 38 R.P.C. 40, it was held that showing of a design to a prospective customer to obtain an order constitutes publication thereof. In A. Pressler & Company Ld. v. Gartside & Company (of Manchester) Ld. and Widd and Owen Ld., reported in 50 R.P.C. 240, the availability of the design in a private library was held to constitute its publication. In W. Steel & Coy. Ld. 1958 R.P.C. 411, the publication of the design in a magazine was sufficient to constitute its publication. There is, therefore, no substance in the contention that merely because substantially similar designs are shown to have been published and goods produced or manufactured, they must be taken as not published at all.
13. Now take up the question of passing-off. The plaintiffs contention is that their goods have been passed-off by the defendants and there is every likelihood of damage of reputation and goodwill in the trade According to the plaintiffs, the plaintiffs have an international reputation. The plaintiffs claim an international reputation and goodwill of the Faber-Castell brand name which is a world reputed manufacturer of writing instrument since 1761. The plaintiffs claim that the mark TEXTLINER has been adopted by them since the year 1976 by the predecessor in interest i.e. A.W. Faber-Castel Unternehmensverwaltung GmbH & Co. According to the plaintiffs, the trade mark "TEXTLINER" is adopted by them in respect of stationery product being writing and fluorescent colouring instrument/pen and highlighter/marker in July 1982. "TEXTLINER" is registered as a trade mark in U.K. From November 1989 they have got the design registered in India. The plaintiffs claim to have commenced marketing the goods in India and thee is substantial sales figures which are referred to above. The plaintiffs claim to have sold more than 35 million pieces of the highlighter. Since 1998 the plaintiffs claim to have spent an amount of Rs. 6 lakhs for printing and making available to the public the brochures, etc. There is no effective denial of these facts. Prima facie, I am inclined to accept the fact that the plaintiffs have acquired a reputation for the highlighters under the trade mark "TEXTLINER". It is necessary now to see whether the defendants are making any misrepresentation which is likely to lead confusion or deception and whether there is a likelihood of any damage to the plaintiffs reputation.
14. 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'' product. In fact, from a distance, they are virtually indistinguishable. Mr. Tulzapurkar, learned counsel for the defendant, 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 affidavit-in-rejoinder filed by the plaintiffs wherein the plaintiffs have denied that the mark is "wholly descriptive". There appears to be substance in this contention. There is no doubt that "TEXTLINER" is a result of combination of TEXT and LINER. These two words taken independently are purety descriptive. I find that the result of the combination is also descriptive. It is descriptive of the function which the article is intended to perform. For instance, if the mark "running shoe" was used for shoes, it would clearly the descriptive of the goods even if the words "running shoes" were joint. I think the case is similar to the case of "SAFEMIX" reporter in 1978 R.P.C. 397, wherein an application for registration was refused on the ground that the mark consisted of the words "SAFE" and "MIX" conjoined. Reliance has rightly been placed on the decision in
"But I confess I have always thought, and I still think that it should be made almost impossible for any one to obtain the exclusive right to the use of a word of term which is in ordinary use in our language and which is descriptive only and, indeed, were it not for the decision in Roadways case 1896 AC 199 I should say this should be made altogether impossible. But where the plaintiffs: proof shows that he only representation by the defendants consists in the use of a term or terms which aptly and correctly describe the goods offered for sale, as in the present case, it must be a condition of the plaintiffs 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 manufacturer from those of another.
15. 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 and Colman Products Ltd. v. Borden Inc. (1990) 1 All ER 873:-
"The essence of the action for passing-off is a decrepit practised on the public and it can be no answer, in a case where it is demonstrable that the public has been or will be deceived, that they would not have been if they had been more careful, more literate or more perspicacious. Customers have to be taken as they are found. As Lord Black burn observed in R. Johnson and Co. v. Archibald Orr Ewing and Co. (1882) 7 AC 219:
"If the plaintiffs had proved that purchasers had actually been deceived by the use of the mark B and that the defendants after being told of this had persisted in using this mark B. the plaintiffs would surely have been entitled to an injunction to prevent the continued use of B: and it could be no answer that the purchaser, so deceived, were incautious: the loss to the plaintiffs of the customs of an incautious purchaser is as great a damage as the loss of that of a cautious one."
Therefore, it is clear that the passing-off does not take place merely on a deceptive similarity between the goods only with reference to the trade mark. It takes place if there was, on the whole, such a deceptive similarity as would confuse the customers as to the identity of the product and that too at the time of purchase.
16. Now in the present case, it must be borne in mind that the goods in question would be sold in the same place to customers who would tend to be in a hurry. It is necessary to look at the two types of goods from the view and first impression of a person of average intelligence and imperfect recollection. it is necessary to see the general impression which the defendants goods may create, rather than look at some detail, or a photographic recollection of the whole. The purchaser must not be put in a state of confusion without microscopic examination. looked at from this point of view, it is obvious that the defendants highlighters are substantially similar to the plaintiffs. It is true that many things are common to the trade such as a dark body and a cap and bottom plug of the same colour as the fluorescent ink. A clip, per se, may also be considered as common to the trade because it makes the carrying of such instrument extremely convenient: though the shape and size of the clip may be distinctive. What may not be considered as common to the trade, however, is the shape of the body of the highlighter. These instruments may come in many shapes, 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 front. 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 t 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 the compared simultaneously. Such simultaneous comparison does not necessarily take place while purchasing. Therefore, if the highlighter of the plaintiffs is seen and put down and thereafter the defendants is picked up and read. I am of view it would create a confusion. The lettering is indistinguishable. Apart from the lettering, the clip is also similar. There is a minor variation, viz., a slight curve at the end of the clip, but it is something which would hardly be distinguishable at the time of purchase and even otherwise. Similarly, the size and colour of the plug at the bottom is very similar. The only difference seems to be the absence of serrations on the defendants highlighter which is hardly noticeable, particularly when each individual item is wrapped in a small polythene bag. Similarly, there is slight difference at the two ends, in that the defendants highlighter is flat at the ends and whereas the ends of the plaintiffs highlighter are slightly curved. But this is hardly noticeable. Thus there is a confusing similarity in the text which includes the word "TEXTLINER", the colour of the text, the colour scheme and the get-up of the two highlighters in general.
17. Further, the colour of the body of the defendants TEXTLINER is identical with that of the plaintiffs i.e. deep green. On the whole, thee is a deceptive similarity. Thus, in the present case, there is not only an adoption by the defendants of the trade mark "TEXTLINER" but the other material added to that is also added in such a way as to show an almost identical resemblance with that of the plaintiffs. In the circumstances, it is not possible to apply the observations of the Supreme Court in
"Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial: whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff."
18. In the result, I find that this is a case of deceptive similarity and definite misrepresentation. The consequent damages by way of loss of sale, goodwill, reputation, etc. are, therefore, bound to follow. The plaintiff, therefore, have a prima facie case for the grant of an injunction. Having come to this conclusion, the question of balance of convenience loses significance. Thus, I consider it appropriate in the interest of justice to allow the Notice of Motion. Accordingly, the Notice of Motion is allowed in terms of prayer Clause (c).
19. Certified copy expedited.
20. P.S. to give ordinary copy of this judgment to the parties concerned.
