Cello restrained from passing off its crayons as those of Faber


In Faber-Castell Aktiengesellschaft v Cello Pens Pvt Ltd (Notice of Motion (L) No 1824 of 2015 in Suit (L) No 696 of 2015), the High Court of Bombay has, in an interim order, restrained Cello Pens Pvt Ltd from manufacturing and marketing crayons using the trade dress, packaging and design depicted below (bottom picture) so as to pass them off as those of Faber-Castell Aktiengesellschaft (depicted below, top picture).

The issue arose when Cello started selling crayons using a design, trade dress and packaging similar to the design, trade dress and packaging of Faber’s crayons. Faber instituted a suit for design and copyright infringement, combined with a passing-off action. However, at the interim stage, Faber sought restricted relief on the ground of passing off. Among other things, Faber contended as follows:

  1. Faber’s product has a unique and novel shape which is presented/packaged in a distinctive trade dress (in a tray). Further, the crayons are sharpenable and erasable, which further adds to their distinctiveness. All of these factors, taken together, are aesthetic, novel and unique to Faber.

  2. The mere fact that a certain feature also serves a functional purpose does not eclipse its aesthetic or novel qualities.

  3. Faber’s product has acquired a significant reputation and secondary significance.

  4. Cello’s product is not merely a copy: it constitutes wholesale passing off of Faber’s product and complete piracy, the most slavish form of imitation imaginable.

In response, Cello contended as follows:

  1. Each of the features of Faber’s product are in the public domain.
  2. Faber suppressed the fact of prior publication of its designs in respect of writing instruments and crayons.
  3. If there was prior publication, then the case of design infringement was not sustainable; it was then not permissible for Faber to allege only passing off.
  4. The features of Faber’s product are descriptive and purely functional.

After hearing the parties, the court, giving credence to Faber’s arguments, granted an interim injunction on the following grounds:

  1. The aggregation or concatenation of the features of Faber’s product, brought together in unity, are identifiable as those of Faber, and have been copied by Cello; and

  2. The features of Faber’s product cannot be considered as functional elements.

Indian courts have increasingly been granting relief in relation to passing off in design cases. Involving aspects of design infringement usually complicates the matter, with the typical defences of prior publication or functionality. However, Faber appears to have been smart in not pressing for relief in respect of design infringement at the interim stage, which nullified those typical defences in a passing-off action. Had the court considered the issue of prior publication (if design infringement had been claimed), a prejudice could have been created in the mind of the judge against Faber. This goes to show that litigation strategies are crucial in IP matters.

Adheesh Nargolkar, Shailendra Bhandare and Janaksinh Jhala, Khaitan & Co, Mumbai

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