Case Note & Summary
The plaintiffs, Faber-Castell Aktiengesellschaft and its Indian subsidiary, filed a suit against Cello Pens Pvt Ltd alleging design infringement, copyright infringement, and passing off in respect of their triangular crayons and packaging. The plaintiffs had marketed a set of 24 crayons in India since 2010, characterized by a unique triangular shape with two parallel lines of raised dots on each face, and presented in a distinctive dual-tray packaging within an outer container. The defendant launched a similar product, which the plaintiffs claimed was a slavish imitation. At the hearing of the notice of motion, the plaintiffs confined their arguments to the cause of action in passing off. The court examined whether the shape and packaging were functional or capricious, and whether the defendant's product was likely to deceive consumers. The court found that the plaintiffs had established a prima facie case of passing off, as the overall get-up and trade dress were strikingly similar, and the balance of convenience favored granting an interim injunction to prevent irreparable harm. The court restrained the defendant from manufacturing, selling, or offering for sale crayons in the impugned get-up pending the disposal of the suit.
Headnote
A) Passing Off - Get-up and Trade Dress - Distinctive Shape and Packaging - Interim Injunction - The plaintiff claimed that its triangular crayons with raised dots and dual-tray packaging had acquired distinctiveness and that the defendant's imitation was likely to cause confusion. The court held that the plaintiff had made out a strong prima facie case of passing off, as the overall get-up was strikingly similar, and the balance of convenience favored granting an injunction to prevent irreparable harm pending trial (Paras 1-27).
Issue of Consideration
Whether the plaintiff has made out a prima facie case for grant of interim injunction in a passing off action based on the distinctive get-up and trade dress of its triangular crayons and packaging, and whether the balance of convenience lies in favor of granting such injunction.
Final Decision
The court granted an interim injunction restraining the defendant from manufacturing, selling, or offering for sale crayons in the impugned get-up pending the disposal of the suit.
Law Points
- Passing off
- get-up
- trade dress
- distinctive shape
- functional vs capricious features
- interim injunction
- balance of convenience
- prima facie case
Case Details
2015 LawText (BOM) (09) 92
Notice of Motion (L) No. 1824 of 2015 in Suit (L) No. 696 of 2015
Mr. Venkatesh Dhond, Senior Advocate, with Mr. Rashmin Khandekar, Mr. Hemant Thadhani, Mr. Rahul Dhote & Mr. Minesh Andharia, i/b Krishna & Saurastri Associates, for the Plaintiffs. Mr. Himanshu Kane, with Mr. N. Pendsey, Mr. Bhavin Shah & Ms. Bhavya Mohan, i/b AZB & Partners, for the Defendant.
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Nature of Litigation
Civil suit for design infringement, copyright infringement, and passing off.
Remedy Sought
Interim injunction restraining the defendant from manufacturing, selling, or offering for sale crayons in the impugned get-up.
Filing Reason
Alleged slavish imitation of the plaintiffs' distinctive triangular crayons and packaging by the defendant.
Previous Decisions
The 2nd defendant, eBay India Pvt Ltd, was directed to be deleted by a separate order.
Issues
Whether the plaintiffs have made out a prima facie case for grant of interim injunction in a passing off action based on the distinctive get-up and trade dress of its triangular crayons and packaging.
Whether the balance of convenience lies in favor of granting such injunction.
Submissions/Arguments
Plaintiffs argued that their product has a unique triangular shape with raised dots and distinctive packaging, which has acquired distinctiveness, and the defendant's product is a slavish imitation likely to cause confusion.
Defendant argued that the shape and dots are functional, providing better grip, and not distinctive, and that there is no likelihood of confusion.
Ratio Decidendi
In a passing off action, the overall get-up and trade dress of a product, including distinctive shape and packaging, can be protected if they have acquired distinctiveness and the defendant's imitation is likely to cause confusion among consumers. The court must consider whether the features are functional or capricious, and the balance of convenience favors granting an interim injunction to prevent irreparable harm.
Judgment Excerpts
The Plaintiffs and the Defendant are fighting over crayons.
According to the Plaintiffs, Faber-Castell AKG and A. W. Faber-Castell (I) Pvt Ltd (together, 'Faber-Castell'; separately 'Faber-Castell AKG' and 'Faber-Castell India', respectively), they have since 2010 marketed in India through the 2nd Plaintiff a set of 24 crayons in quite luscious colours, of a distinctive type and in unique packaging.
Mr. Dhond places his case thus: First, the Plaintiffs’ product has a unique and novel shape.
Procedural History
The Notice of Motion was first moved on 9th July 2015. Multiple affidavits were filed, and the paper-book exceeded 647 pages. The plaintiffs limited their application to the cause of action in passing off at the final hearing.
