The Crayon Wars: Faber
Castell v. Cello
The
High Court of Bombay on September 3, 2015, in a dispute between Faber Castell
(the Plaintiff) and Cello Pens Pvt. Ltd. (the Defendant) over crayons, granted
injunction against the Defendant.
In
the present case, the Plaintiff filed a suit for infringement of design,
copyright and passing off, etc., against the Defendant. The Plaintiff alleged that the Defendant had
infringed the three-sided crayon design and also attempted to pass- off them as
being that of the Plaintiff.
The Plaintiff based its contentions with regard
to the distinctiveness of its crayons, on the ground that, it had a novel and
unique shape, i.e. trigonal, the packed product including 24 crayons and moreover
the twin series of paralleled line of dots on each stem of the three sides on
the crayons. The Plaintiff further stated that their crayons were unique with
regard to its presentation, wherein two sunken plates are facing each other
inside a bigger outer ampule.
According to the Plaintiff there existed five key and distinctive elements
to the Plaintiff’s crayons i.e.
- Triangular
shape,
- Sharpen-able,
- Erasable,
- Non-slip
grip, and
- Arrangement
in the tray.
The Plaintiff clearly mentioned of having no
interest in claiming monopoly over any one of the aforementioned specialty, but
instead contended that it was the combination of all these aspects in a
specific manner along with the presentation, which went beyond being merely
functional and was in fact entirely aesthetic, novel and certainly unique to
that of the Plaintiff’s and thereby, definitely exceptional to that of the
Defendants and nobody else.
The Defendant on the other hand attributed the
Plaintiff with suppression and submitted that such suppression was material
particularly as the key elements mentioned by the Plaintiff were purely
functional and not capricious additions. The Defendant further submitted that if
there had been prior publication of the Plaintiff’s designs, then the burden on
the Plaintiff would be significantly higher as the Plaintiff would not only be
unable to argue design infringement at the interim stage but they in addition
would also have to prove that the features of the product are neither purely
descriptive nor purely functional and thus, there is exclusivity attached to
those features and that the confusion is inevitable or has actually occurred.
The High Court of Bombay, considered the issue of capriciousness
in respect to the key feature of the Plaintiff’s crayons and observed that the
twin series of parallel lines of dots as well as the name and logo of the
Plaintiff embossed on the crayons were artistic and not functional elements. The
Court further observed that there was nothing to suggest that the twin parallel
lines of dots provide the functionality of a better grip or that such parallel
lines of a specific length aid any such functionality and stated that if at all
the twin parallel lines were functional, there was no reason why the Defendant
had chosen not to extend them across the entire length of the shanks and had
instead chosen to stop at the exact length the Plaintiff had stopped.
The Court placed reliance on various
authorities to determine the issue of passing off claimed by the Plaintiff
against the Defendant;
The Court while placing reliance on Jones v.
Hallworth [14 RPC 225] where the issue of whether permissible copying of
various features might lead to impermissible passing off of the whole was dealt
with, stated that this position was exactly similar to the case at hand and
further held that on comparing
the products of both parties, the only distinction which can be carved out between
the two was that the Plaintiff’s name and logo were missing on one of the
shanks of Defendant’s crayons. All the other features of Defendant’s crayons
were exactly same as that of the Plaintiff’s. Therefore, taken together in
aggregate, the Bombay High Court held that such a combination of features
including the exact length of the parallel lines of dots and the same manner of
presentation as Plaintiffs crayons indicate passing off.
The Court further, examined the case of Whirlpool
of India Ltd. v. Videocon [2014
(60) PTC 155] which considered the
issue of where a particular element has both form and function. The Bombay High
Court in that case held that the mere existence of function combined with form
did not disentitle such an element from protection altogether. However, in that
case, the external shape of the washing machines was held to have no functional
purpose. In such a situation, it cannot be argued that the functionality of the
elements were such that it was not possible to have any alternate design other
than the Plaintiff’s design. Moreover, when the external shape of the washing
machine has no functional purpose, it is redundant for the Defendant to employ
a defense attributing features of the Plaintiff’s design to functional
requirements. Applying the same principles to the instant case, the Court held
that as the Defendant has been unsuccessful in showing the functional uses for
the key elements of Plaintiff’s crayons, it could not argue that this was the
only possible design it could have employed.
Conclusion:
After
considering the principles of the above cited authorities, the Court held that
from the view point of the target audience of a child or a harried parent,
there was no distinction between the two products. The Court further stated, “that every single feature that has been used in a unique fashion
by the Plaintiff in creating their products was replicated, down to the last
millimeter, in Defendant’s product.”
Thus, the
Court held that due to the
Defendant’s inability to prove functional uses for Plaintiff’s pastel crayons,
their design of crayons was the only conceivable design and that the products
of the parties were confusingly similar, the Bombay High Court granted Plaintiff
with the injunction against Defendant, noting that if the Defendant’s pastel
crayons were to persist in the market, it would result to monetary loss faced
by the Plaintiff.
