TMI Blog2003 (5) TMI 354X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 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 exclus ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 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 th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y 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 article which are not capable 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... registration, certificate, notice decision, 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 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... actment. 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." (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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f 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 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 regist ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 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 : 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 a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ntiffs 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. 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 chara ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hich is in ordinary use in our language and which is descriptive only and, indeed, were it not for the decision in Reddaways should say this should be made altogether impossible. But where the plaintiffs proof shows that the 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 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 "Text ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ighlighters 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 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X
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