Super Smelters Limited & Ors vs SRMB Srijan Private Limited

Soumen Sen, J

This appeal is directed against an order dated September 30, 2019 passed in a passing off action initiated by filing an application, being G.A. No. 1 (earlier 2422) of 2019 in C.S. No. 192 of 2019.

The said order is an ad-interim order passed after hearing both sides.

Summary of facts

The facts of this appeal so far as relevant are as follows:

I. The respondent, SRMB Srijan Pvt. Ltd., is a company carrying on the business of manufacturing, selling and distributing TMT bars, wires, grills etc. since 2001. The respondent manufactures certain concrete-reinforcing TMT bars, which have a distinct surface-pattern with the letter 'X' embossed at regular intervals over the entire surface and length of the TMT bars. Each bar has two series of 'X' rib patterns embossed diametrically opposite to each other. On one side of the series, the brand name 'SRMB' is embossed in a regular style at the 'X' intervals, and tensile strength and grade of iron, i.e. Fe 415, Fe 500 etc. is also embossed. The TMT bars of the respondent are of 8mm to 50mm in diameter.

II. The respondent had applied for design registration in respect of the 'X' ribbed marks on its TMT bars, and had secured the same on April 4, 2003, with the said mark bearing Design No. 191774. However, the said Design No. 191774 was later sought to be cancelled at the behest of Tribeni Industries Pvt. Ltd. before the Designs Office, and by an order dated February 3, 2010 the said design was cancelled due to prior publication. Post such an order, the respondent filed an application before the Trade Marks Registry on February 8, 2016 bearing no. 3406258 for registration of the same 'X' ribbed pattern on its TMT bars. This application is still pending. An objection has been raised by the Registrar of Trade Marks by a letter a dated December 27, 2016 doubting the registrability of the said mark under Section 3(a) of the Trade Marks Act, 1999 due it consisting exclusively of the shape of the goods which results from the nature of the goods themselves.

III. The appellants are also in the business of manufacturing, selling and distributing TMT bars. The appellants manufacture and trade in what is called the 'Super Shakti' TMT bar which has a 'double Y' ribbed pattern. The appellants claim to have been manufacturing and selling TMT bars with the said pattern since 2016, before that they had been using an elliptical helix pattern on their TMT bars. The appellants had applied for registration of a line drawing of the 'double Y' ribbed pattern in respect of TMT rods, bars and angles on December 31, 2016 under application no. 3447330 in Class 6 and obtained registration of the same, with Registration Certificate for the appellants' trade mark being issued on June 22, 2017. The respondent has filed an application, being ORA/41/2018/TM/KOL, for rectification of the said trade mark registration of the appellants before the Intellectual Property Appellate Board

Proceedings before the Learned Single Judge

The respondent instituted a suit, being C.S. No. 192 of 2019, before the learned Single Judge of this High Court claiming infringement of its unregistered mark, i.e. the 'X' ribbed pattern on its TMT bars, on the basis of prior user. The respondent, in the suit, filed an interlocutory application, being G.A. No. of 2019, before the learned Single Judge of the Court, inter alia, praying for the following reliefs:

'(a)A decree for permanent injunction restraining the Defendants, its assigns, directors, partners, employees, agents and others acting on its behalf from manufacturing, marketing, selling products including TMT bars and rods by applying pattern of X ribs mark/pattern/get up/trade dress upon or in relation to the TMT bars and rods as depicted in Annexure "A" or any other colourable imitation of the same including the one which is depicted in Annexure " H" to the plaint or any other TMT bar containing similar pattern depicted on the TMT bars ;

(b) Decree of permanent injunction restraining the Defendants from advertising in any manner any product including TMT Bars and rods by applying pattern of X ribs upon or in relation to TMT Bars and rods as depicted in Annexure "H" in print form or online which may create misrepresentation and lead to passing off the Defendants goods as that of the Plaintiff.

(c)A decree for obliteration and destruction of all the offending goods, dies, packaging, hoardings, placards, promotional material, advertisement, stationery, signs, signage of the Defendants' goods bearing the mark contained in Annexure "H";

(d) Enquiry into the loss and damage suffered by the Plaintiff and upon loss being ascertained a decree be passed therein. (sic)'

Before the learned Single Judge, the respondent alleged that the appellants were in the same trade and had been using a mark deceptively similar to the mark of the respondent. The mark of the respondent was yet to be registered. In the meantime, in view of recent use of the deceptively similar mark by the appellant, the respondent initiated an action in passing off for infringement of its unregistered mark. The advertisement expenses and the annual turnover of the respondent were disclosed in paragraphs 7, 8 and 9 of the application, being G.A. No. 1 of 2019, filed by the respondent before the learned Single Judge.

The appellants contended that in view of cancellation of the registered design of the respondent, a suit for infringement of the alleged mark of the respondent, which is solely based on its claim on the surface pattern of the product, cannot succeed and is liable to be dismissed. The appellants contended that there was no distinctiveness in the mark of the respondent which could distinguish its product from other known products of the same class.

The learned Single Judge, upon consideration of the materials on record and the arguments presented to him, passed an ad-interim order dated September 30, 2019 upon notice to the appellants. The learned Single Judge noted that passing off is an actionable wrong in which a person passes off his goods as the goods of another. The common law remedy of passing off to protect the unregistered trade mark is invoked to safeguard the business interest, goodwill and reputation associated with such distinctive mark that is used by a particular trader or manufacturer. The learned Single Judge identified the issue to be whether the respondent is entitled to use the 'X' ribbed mark on its TMT bars as a trade mark or as a source identifier when the respondent previously used the same mark as a design after obtaining its now-cancelled registration under the Designs Act. The learned Single Judge held that the respondent's suit for injunction in an action for passing off was maintainable since the registration of the respondent's 'X' ribbed mark under the Designs Act was cancelled in 2010. So, before registration and after cancellation of such registration, the respondent had been using the said mark as its unregistered trade mark, this made the suit for injunction in an action for passing off maintainable. In so holding, the learned Single Judge distinguished the point of law laid down by the Full Bench of the Delhi High Court in Mohan Lal v. Sona Paint & Hardwares, A.I.R. 2013 Del. 143 : 2013 (55) P.T.C. 61 at paragraph 134.

Thereafter, placing reliance on the judgment of the Division Bench of the Delhi High Court in M/s. Crocs, Inc. U.S.A. v. M/s. Bata & Ors., RFA (OS) (COMM) 22/2019 & CM APP No. 22655/2019 & other connected matters, which considered the rulings of the same High Court in the Mohan Lal case (supra) and in Carlsberg Breweries v. Som Distelleries, A.I.R. 2019 Del. 23: (2019) 256 D.L.T. 1, the learned Single Judge held that a passing off action is not limited or restricted to the trade mark use alone but includes the overall get up or trade dress. The learned Single Judge also stated that the Carlsberg case (supra) did not explicitly or impliedly overrule the Full Bench in Mohan Lal (supra) with regard to the issue of whether a passing of action was maintainable in respect of a design. Therefore, the learned Single Judge concluded that, as a matter of law, previous registration of the said mark as a design under the Designs Act, which was cancelled in 2010, did not disentitle the respondent to bring an action for infringement of the mark on the ground of passing off. The learned Single Judge persuaded himself that the respondent was able to make out a strong prima facie case for going to trial and passed an ad-interim order of injunction. In view of the fact that the 'double Y' ribbed mark/pattern/get up of the TMT bar of the appellants was ex facie identical and/or deceptively similar to the respondent's 'X' rib mark/trade dress/pattern, the learned Single Judge restrained the appellants from manufacturing, distributing, marketing and/or selling TMT bars with the said pattern embossed thereon for the period of two weeks after the vacation of this Court or until further order, whichever is earlier. This interim order has been extended by us till the disposal of this appeal.

Submissions of the Parties in Appeal

Mr. S. N. Mookherjee, the learned Senior Counsel appearing on behalf of the appellant, submits that, in addition to the grounds that are before the learned Single Judge opposing the prayer for injunction, the appellant is entitled to take the plea of Section 9(3)(b) of the Trade Marks Act, 1999 as it involves a pure question of law. Mr. Mookherjee argues that Section 9(3)(b) of the Trade Marks Act, 1999 has clearly stated that if the mark proposed to be registered is of purely technical function then the Registrar shall refuse to register the said mark as a trade mark. In support of his submission, Mr. Mookherjee has placed reliance on the judgment of the Grand Chamber of the Court of Justice of the European Union (C.J.E.U.) in the case of Lego Juris A/S v OHIM & Anr. (Case C-48/09 P) at paragraphs 3, 20, 21, 38-62 and the judgment of the General Court of the C.J.E.U. in the case of Rubik's Brand Ltd. v EUIPO (Case T-601/17) at paragraphs 42-51 and 90-95. According to Mr. Mookherjee, the respondent's mark is of a purely technical function. Mr. Mookherjee draws our attention to a news report in yourstory.com dated November 28, 2010, where it is stated that:

"SRMB 500+ SR has high ductile properties that prevent the collapse of reinforced structures. They are extremely resilient in nature, as a result of which they can sustain greater amount of stress without failure. In addition, these bars also have very high and uniform elongation and to a large extent can sustain deformation without necking and thus resist ultimate failure of the structure.

Features of SRMB 500+ SR TMT Bars at a glance:

Superior ductility - minimum 15% higher than Yield Stress.

Superior corrosion resistance - helps to preserve and enhance life of the structures.

Superior tensile strength -helps to save 17% steel compared to normal Fe 415 TMT bars

Superior bounding - innovative 'X' pattern ribs provide superior bounding between concrete and steel bar due to its high Ar. Value.

Superior resistance to sustain stress without failure - prevents buildings from collapsing."

Mr. Mookherjee also draws our attention to an advertisement in the Guardian newspaper, where the respondent claims that its TMT bars, i.e.:

"SRMB 500+ Rebars have X shaped Ribs which binds the steel with concrete better ensuring greater safety of your construction."

Mr. Mookherjee has strenuously argued that this advertisement has been recognised as evidencing the functional nature of the respondent's pattern by a learned Single Judge of this Hon'ble Court in SRMB Srijan Pvt. Ltd. v. Tribeni Industries Pvt. Ltd., G.A. No. 2275 of 2015 in A.I.D. No. 4 of 2010, and that this was the additional reason for which the learned Single Judge affirmed the order of the Assistant Controller of Design cancelling the respondent's design registration on its 'X' ribbed mark and dismissed the appeal by the judgement and order dated July 8, 2011.

Mr. Mookherjee submits that comparison of the novelty statement in the design application filed by the respondent and the application for grant of registration of its mark before the Trade Marks Registrar would clearly show that the basis of both the applications is the same, namely, the distinctiveness in the surface pattern of the product in question. Significantly, the respondent did not file any application contemporaneously for registration of its mark under the Trade Marks Act as the respondent was unsure about the registrability of the said mark, and had deliberately and consciously applied for registration of its product under the Designs Act, in the process, the respondent has abandoned its right to register its mark under the Trade Marks Act. The respondent knew that the registration under the Designs Act could at best remain alive and valid for a period of 15 years from the date of application of the registration of the designs and, now, the respondent has lost its right by virtue of an order passed by the Assistant Controller of Designs on February 3, 2010 revoking the design on the ground of prior publication, the same effect cannot be achieved, now, under the Trade Marks Act by claiming distinctiveness of the product.

Mr. Mookherjee submits that it would be extremely inequitable at this stage if the respondent is allowed to have the benefit of the action in passing off having regard to the aforesaid facts. He argues that had there been no revocation under the Design Act, the respondent at the best could have continued to enjoy a monopoly over the design for a period of 15 years and not thereafter. No action for passing off on the basis of the registered design after expiry of its statutory validity period could be maintainable under the Trade Marks Act by treating the said design as a mark under the Trade Marks Act. Mr. Mookherjee submits that, although the Designs Act and Trade Marks Act are independent statutes, there are certain nexuses between the two statutes: a prohibition contained in one statute has to be given effect to while interpreting the other statute. The order of injunction at this stage in the passing off action would defeat the legislative intent of the Designs Act since the legislative intent is that a trade mark cannot be a design. The features of a shape, configuration, pattern, ornament, or composition of lines or colours ceases to be a trade mark on registration being granted to the same as a design. Mr. Mookherjee contends that the respondent having elected to apply for registration of the surface pattern of its product under the Designs Act, 2000, has abandoned, surrendered and waived all its rights under the Trade Marks Act, 1999. In support of the aforesaid contentions, Mr. Mookherjee has placed reliance on the Statement of Objects and Reasons of the Designs Act, Section 2(d) and 5 of the said Act, the minority judgment of Manmohan Singh, J. in the Full Bench decision of the Delhi High Court in Mohan Lal v. Sona Paint & Hardwares, (2013) 199 D.L.T. 740 (F.B.) at paragraphs 1, 2, 30-32, 34-35, 38, 43-44, 46, 49, 53, 59-60, 63-64, 73, 113-116,131-134 and the judgment of Rajiv Sahai Endlaw, J. of the Delhi High Court in Dart Industries Inc. & Ors. v. Vijay Kumar Bansal & Ors., CS (COMM) 837/2016, MANU/DE/3231/2019 at paragraphs 13 and 26.

Per contra, Mr. Ratnanko Banerjee, learned Senior Counsel for the respondent, submits that though the argument of Mr. Mookherjee is potentially pristine in theory, the argument fails in the present scenario. Mr. Banerjee argues that the appellants have advertised their TMT bar pattern, which they have registered as a trade mark in 2016, as having functional qualities like that of the respondent's TMT bars. So, the appellants cannot allege that the respondent's mark cannot be registered on the ground of functionality. Besides, this argument, learned Senior Counsel submits, was not made in the court below, and, therefore, Mr. Mookherjee is estopped from making it here, in this regard, Mr. Banerjee has placed reliance on the judgement of the Division Bench of the Delhi High Court in India Hotels v. Jiva Institute, 2008 (37) P.T.C. 468 (Del.).

Furthermore, according to Mr. Banerjee, Section 9(3)(b) of the Trade Marks Act, 1999, makes clear that only if the sole and exclusive purpose of the shape of a good is to achieve a technical purpose, only then is that shape barred from registration as a trade mark under the Trade Marks Act. And while the cylindrical shape of the TMT bar here certainly achieves an exclusively technical purpose, the pattern on it, for which the respondent has applied for trade mark, does not exclusively do so and it does fulfil the function of a unique identifier. Mr. Banerjee distinguishes the Lego Juris judgment (supra) cited by Mr. Mookherjee and places reliance on: (1) the judgment of the Delhi High Court in Apollo Tyres Ltd. v. Pioneer Trading Corporation & Anr., 2017 (72) P.T.C. 253 (Del.) at paragraphs 100-102, (2) the English High Court (Chancery Division) judgment in Cow (P.B.) & Coy. Ld. v Cannon Rubber Manufacturers Ld. [1959] 9 R.P.C. 240, and the judgments of the U.S. Court of Appeals (Federal Circuit) in (3) Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F. 2d (Fed. Cir. 1988) : 7 U.S.P.Q. 2d 1548 and (4) Rosco, Inc. v. Mirror Lite Co., 304 F. 3d 1373 (Fed. Cir. 2002).

Mr. Banerjee also submits that on the question of designs, the fact that the design registration has been cancelled means that one has to put that aside and assess whether there is a trade mark here and if there is an infringement of the trade mark or passing off here. Besides, he argues that a passing off action is not limited or restricted to the trade mark use alone and includes the overall get up or trade dress. The learned Senior Counsel in this connection has placed reliance on (1) the majority judgment of the Full Bench of Delhi High Court in Mohan Lal v. Sona Paint & Hardwares, 2013 (55) P.T.C. 61 (Del.) (F.B.) at paragraphs 20.2, 21-22, (2) the judgment of the Full Bench of the Delhi High Court in Carlsberg v. Som Distilleries, A.I.R. 2019 Del. 23 (F.B.) : (2019) 256 D.L.T. 1 (F.B.) at paragraphs 41, 43-44, 45 and 48, and (3) the judgment of the Division Bench of the Delhi High Court in M/s. Crocs, Inc. U.S.A. v. M/s. Bata & Ors., RFA (OS) (COMM) 22/2019 & CM APP No. 22655/2019 & other connected matters at paragraphs 20, 21, 22-24. Mr. Banerjee also distinguishes the learned Single Judge's judgment in Dart Industries (supra) cited by Mr. Mookherjee and contends that, in the said case, the judgment merely reiterates the ratio in Crocs (supra). Mr. Banerjee submits that as the prior user of the mark the respondent is entitled to protection under trade marks law and is entitled to injunction once it is established that the marks of the prior and later user are the same, which they are in this case. In this regard, Mr. Banerjee has placed reliance on the judgment of the Hon'ble Supreme Court in Satyam Infoway Ltd. v. Siffynet Solutions (P.) Ltd., (2004) 6 S.C.C. 145 at paragraph 13 and the judgment of the Division Bench of this Hon'ble Court in Amar Nath Chakroborty v. Dutta Bucket Industries & Ors., 2005 (2) C.H.N. 278 at paragraph 13.

Mr. Banerjee submits that the learned Single Judge exercised his discretion after arriving at a finding that the respondent was able to make out a strong prima facie case and that the balance of convenience was in its favour. This view of the learned Single Judge is a possible view on the facts pleaded and is based on an exercise of discretion after reasonable consideration of both facts and law and, so, it should not be interfered with, since it is not suffering from perversity, arbitrariness, or the like. The learned Senior Counsel submits that in an intra-court appeal a court in its appellate jurisdiction must not substitute the exercise of discretion by a court exercising its powers in the first instance on the sole ground that the appellate court would have arrived at a different conclusion if it were in the position of the first court. In support of these submissions, the learned Senior Counsel has placed reliance, first, on the judgement of the Division Bench of this Hon'ble Court in Cello Plast v. L.A. Opala R.G. Ltd. & Ors, 2018 SCC OnLine Cal 2475 affirming the ad-interim order passed by a learned Single Judge in La Opala R.G. Ltd. v. Cello Plast and Ors., (2018) 4 Cal. L.T. 553 and, second, the judgment of the Hon'ble Supreme Court in Wander Ltd. & Anr. v. Antox India (P.) Ltd., 1990 (Supp.) S.C.C. 727.

Finally, the learned Senior Counsel also states that the balance of convenience lies in favour of the respondent and the mere fact of the interlocutory order disrupting the appellant's business could not be a ground that would deter the court from granting the ad-interim relief to the respondent. In support of such contention, the learned Senior Counsel has placed reliance on Satyam Infoway (supra) at paragraph 33.

Mr. S. N. Mookherjee, learned Senior Counsel for the appellants, in his reply to the arguments of Mr. Ratnanko Banerjee, has put forth four propositions: First, that by making an application for design registration the respondent had submitted itself to the designs regime to the exclusion of the trade marks regime. Second, that the test of whether the article sought to be registered was barred by Section 9(3)(b) turned on whether it was primarily dictated by considerations of functionality and not that the article had a mere functional aspect to it. Otherwise all trade marks/designs would be functional simply because they had a functional element to them. This test, Mr. Mookherjee submits, is satisfied by the respondent's product. Third, Mr. Mookherjee states that he places reliance on the minority judgment in Mohan Lal (supra) as persuasive authority for the first proposition. Fourth, that Section 9(3)(b) places an absolute bar on the registration of a trade mark in the public interest, and as it is in statute, so it is in the common law. For this point, Mr. Mookherjee places reliance on a judgment of the Canadian Supreme Court in Kirkbi A.G. & Lego Canada Inc. v Ritvik Holdings [2005] 3 S.C.R. 302. This judgment, Mr. Mookherjee argues, states that functionality bars the recognition of both registered and unregistered trade marks to prevent the subsistence of a monopoly over an article with a purely technical function from being monopolised outside the statutory regime.

Mr. Mookherjee distinguishes Apollo Tyres (supra) by stating that considerations of functionality did not dictate the tread pattern of the tyres that were the subject-matter of the action therein, instead the said tread patterns only incidentally fulfilled a function. He uses the rounded oval shape of a single-malt glass as an example to submit that while this oval shape gives the said glass a function of intensifying the flavours and smells of the whiskey poured into it, the primary point of the oval shape is to appeal to the eye. And it is analogous reasoning which dictates the outcome in Apollo Tyres (supra). Mr. Mookherjee then goes on to state that, admittedly, in Cow (supra) the product in question had a ribbed surface to prevent scalding. But he goes on to ask whether the purpose of the ribbing was to appeal to the eye or to have a primarily functional purpose. He says that it was not the latter and that the functional aspect of the design in question was only incidental. Finally, Mr. Mookherjee draws our attention to the fact that registration of the respondent's whole product has been sought. He submits that the interlocking of the appellant's lines is wider than the interlocking of the 'X' ribs in the respondent's product. He also states that the interlocking of these lines has been recognised by the Bureau of Indian Standards as giving greater interlocking with concrete.

Discussion of the Law and the Issues

From an examination of the facts and the arguments on the law, it would appear that the following issues arise in this appeal:

First, whether the respondent's 'X' ribbed mark is capable of being recognised as a trade mark in a common law action of passing off due to it allegedly having a technical function.

Second, whether the respondent's application for design registration of the 'X' ribbed mark on its goods, which has since been cancelled in 2010 due to prior publication, precludes it from claiming that the said mark is a trade mark.

Third, if the first two issues are resolved in the affirmative, whether the learned Single Judge was right in the exercise of his discretion whilst passing the impugned ad-interim order against the appellants.

The First Issue

Before we dive head first into the first issue, a brief discussion of what really makes something a trade mark or a design would be apposite. Section 2(m) of the Trade Marks Act, 1999 gives us an inclusive definition of 'mark'. A 'mark' includes, inter alia, the shape of a good. Section 2(zb) of the Trade Marks Act defines a 'trade mark' as a mark capable of being represented graphically and capable of distinguishing the goods and services of a trader from those of others. Section 2(zb) includes the shape of a good within the definition of a trade mark along with the packaging of the goods and a combination of colours. So, it is beyond controversy that a trade mark includes the shape of goods. In fact, the Act, in Section 2(zb), has incorporated the phrase 'shape of goods' from the definition of mark in Section 2(m) of the same Act. A trade mark, simply put, establishes the connection of a trader with his trade. The function of a trade mark is to give an indication to the purchaser or to the prospective purchaser as to the identity of the manufacturer or quality of the goods. A trade mark includes both a registered and unregistered mark. The Act gives separate kinds of relief to the proprietor of a registered and an unregistered mark. The owner of the unregistered mark enjoys the common law rights that the owner of the mark was enjoying under the Trade and Merchandise Marks Act, 1958. Even before the 1958 Act, the common law right in respect of an unregistered trade mark was recognised and accepted. However, the right to claim a trade mark on the shape of good is not unqualified. Section 9(3)(b) of the Trade Marks Act, 1999 creates an absolute ground for refusal of registration of a mark as a trade mark if it consists exclusively of the shape of goods which is necessary to obtain a technical result. This means that the shape of the good should have something extra or have distinctiveness in and of itself to qualify for registration as a trade mark under the 1999 Act whilst not being purely functional in nature. The shape of goods may also be considered for registration under Section 2(d) of the Designs Act provided the finished article appeals to the eye and is judged solely by the eye and is not merely a mechanical device or a functional device. A design in order to be registrable under the Designs Act, 2000 must be some conception or suggestion as to shape, configuration, pattern and must be capable of being applied to an article in such a way that the article to which it has been applied shall show to the eye the particular shape, configuration, pattern, or ornament the conception or suggestion of which constitutes the design: Pugh v Riley Cycle Co. [1912] 1 Ch. 613.

The most significant recent authority on the functionality principle in Section 9(3)(b) of the Trade Marks Act and Section 2(d) of the Designs Act is Apollo Tyres Ltd. v. Pioneer Trading Corporation, (2017) D.L.T. 488 : 2017 (72) P.T.C. 253 (Del.). In this case, the plaintiff had, in essence, sought to restrain the defendant from using the tread pattern of the plaintiff's tyres, which the plaintiff claimed to be its property. The defendant, placing reliance on the plaintiff's averment's in its plaint before the court, argued that the tread pattern of the plaintiff's tyres were functional/utilitarian in nature since they provided better grip on the road and stability to the vehicle during movement and, therefore, they could not be considered to be a trade mark. The learned Single Judge of the Delhi High Court (at paragraphs 86-87) rejected this argument after he satisfied himself that on a reading of the averments of the plaint as a whole there was a distinction between a 'tread' and a 'tread pattern'. He stated that while the plaintiff claimed, in its plaint, that a 'tread pattern' was one of the most important factors used to identify the tyre manufacturer, it also stated that a 'tread' served a purely functional purpose. Therefore, the learned Single Judge held that the tread pattern was capable of recognition as a trade mark even though the tread itself was not. The learned Single Judge arrived at this conclusion in the following words (at paragraph 87):-

'87........No party can claim propriety over the technique/practice of providing treads in a tyre, since treads are functional, i.e. they afford the necessary grip between the tyre and the ground during movement of the vehicle to keep it substantially stable. No party can claim proprietary over the technique/practice of a plurality of ribs, separated by grooves, which create the tread on the tyre. However that does not mean that the unique pattern of the tread adopted by a particular manufacturer, which constitutes its unique design and shape, would not be entitled to protection as a design - if it is registered, and also as a trademark - if the tread pattern has been exploited as a trademark, i.e. a source identifier. What is functional in a tyre are the "treads" and the "tread pattern".' (emphasis added)

In coming to this conclusion, the learned Single Judge in Apollo Tyres (supra) placed reliance on the judgment of the English High Court (Chancery Division) in Cow (P.B.) & Coy Ld. v Cannon Rubber Manufacturers Ld. [1959] 9 R.P.C. 240. In this case, which was an action for the infringement of a registered design, the defendants, inter alia, argued that the diagonal ribbing on surface of the hot water bottles sold by the plaintiff could nullify the registration of the shape of the plaintiff's hot water bottle as a design on the ground that it fulfilled the technical function of radiating heat to prevent discomfort or scalding, as had been advertised by the plaintiffs themselves. Lloyd-Jones J. dismissed this argument stating (at p. 245):

" One answer to this argument is that it fails to note the difference between the provision of ribbing of some kind, and the choice of a diagonal direction for its employment, for the evidence amply established that heat radiation without discomfort or risk owes nothing to the direction in which the ribbing is disposed.

But even if any limitation introduced by the direction of the ribbing in the registered design be disregarded, the argument is no less fallacious, for it was not established in evidence that the provision of spacing members formed in the bottle faces during manufacture of such dimensions and so located as to secure the required effect must necessarily be in the form of ribs. This cannot be predicated a priori, for I can see no reason why a construction such as is commonly employed for conserving soap tablets, wherein a plurality of closely positioned distance pieces project from a rubber or like platform, could not be adapted for the purpose."

From both these cases it would be readily apparent that the bar of functionality, when considered under Section 9(3)(b), operates not to prohibit the recognition of the shape of good or product as a trade mark merely because the shape of the good or product in question is capable of producing a technical result or merely because the shape of the good or product in question has a functional or utilitarian value/utilitarian application. This understanding of the law may be reinforced and expanded upon by quoting the seminal statement of the law by Aldous L.J. in the English Court of Appeal case of Philips Electronics N.V. v Remington Consumers Product Ltd. [1999] R.P.C. 809 at p. 830:

The subsection [in our case subsection 3(b) of Section 9 of the Trade Marks Act, 1999] must be construed so that its ambit coincides with its purpose. That purpose is to exclude from registration shapes which are merely functional in the sense that they are motivated by and are the result of technical considerations. Those are the types of shapes which come from manufacture of patentable inventions. It is those types of shapes which should not be monopolised for an unlimited period by reason of trade mark registration, thereby stifling competition. Registrable trade marks are those which have some characteristic which is capable of and does denote origin.

In my judgment the restriction upon registration imposed by the words "which is necessary to obtain a technical result" is not overcome by establishing that there are other shapes which can obtain the same technical result. All that has to be shown is that the essential features of the shape are attributable only to the technical result. It is in that sense that the shape is necessary to obtain the technical result.' (emphasis added)

The judgment of Aldous L.J., which was also referred to in Apollo Tyres (supra), explains the corollary of what is stated above, i.e. that if and only if it is established that the shape of a good is one that achieves no other result than a technical result, then it cannot be registered as a trade mark. In other words, if, beyond simply having a functional application or achieving a technical result, the shape of a good is such that it solely and exclusively achieves a technical/utilitarian/functional result, then it shall not be registered as a trade mark pursuant to Section 9(3)(b) Trade Marks Act, 1999. Now, it must be noted that the judgment of Aldous L.J. quoted here differs from the statement of the law by Lloyd-Jones J. in Cow (supra) quoted above in one crucial aspect. Lloyd-Jones J. rejected the functionality argument due to the fact that "it was not established in evidence that the provision of spacing members formed in the bottle faces during manufacture of such dimensions and so located as to secure the required effect must necessarily be in the form of ribs" (emphasis added). In other words, he emphasised that the test of whether the shape of a good sought to be recognised as a trade mark/design achieves an exclusively technical result or not requires us to ask if there are other shapes which can achieve the same result or not. But Aldous L.J.'s statement of the law emphasises that this need not be gone into. Aldous L.J. phrases the functionality test much more straightforwardly by saying that all that needs to be established is that "the essential features of the shape are attributable only to the technical result." (emphasis added)

It must be stated here that the position of the Delhi High Court in Apollo Tyres (supra) even if it cites Philips (supra) is at variance with the interpretation of the law laid down by Aldous L.J. The learned Single Judge in Apollo Tyres (supra) states (at paragraph 93) that:

"93......if the same function can be achieved through numerous different forms of tread patterns, then the defence of functionality must fail. It was essential to the defendant to, at least prima facie, establish that the tread pattern of the plaintiff was the only mode/option, or one of the only few options, which was possible to achieve the functional requirements of the tyre." (emphasis added)

An analysis of the words used here would clearly reveal that the position of the learned Single Judge of the Delhi High Court here requires that for the bar of functionality to operate against the recognition of a shape either as a trade mark or as a design, we need to establish that the shape as such is the only one (or one of the few) capable of achieving the alleged technical result.

It is respectfully stated that this statement of the law is incorrect. To return to first principles: Section 9(3)(b) of the Trade Marks Act, 1999 states quite clearly that

"(3) A mark shall not be registered if it consists exclusively of-

......

(b) the shape of goods which is necessary to obtain a technical result;" (emphasis added)

The word "exclusively" clearly indicates that the bars contemplated by this subsection of the Trade Marks Act to the registration of the trade mark will operate if and only if it is established that those bars have been fulfilled. The second bar when read with the introductory line is clear in stating that the shape of a good shall not be registered as a mark if and only if it is established that the shape of the good is necessary to obtain a technical result. What is clearly missing in this reading of subsection 3(b) is a stipulation that the shape of a good that exclusively fulfils a technical function must be such that that technical function can be achieved by any other shape as well. And there is a logical reason for why this extra requirement that has been read into the statute by the learned Single judge in Apollo Tyres (supra) is not found here. To establish that 'A' necessarily achieves result 'B', we need only establish that without 'A', result 'B' would not be possible. To use that operation of logic in interpreting Section 9(3)(b), to establish that the shape of a good necessarily achieves a given technical result, we need only establish that without the shape in question the given technical result would not be achieved. What we need not do is investigate whether other shapes could achieve the given technical result to establish that the shape in question necessarily achieves the given technical result.

The meaning of this narrower phrasing of the test by Aldous L.J. may be expounded upon by examining the American case law on this issue. A most recent American case on this issue is Sport Dimension, Inc. v. Coleman Co., 820 F. 3d 1316 (Fed. Cir. 2016). In this case, Sport Dimension filed a declaratory judgment action in the Central District of California requesting judgment that it did not infringe the design patent claimed by Coleman on the design of the latter's personal floatation devices and that the said design patent was invalid. The District Court ruled in favour of the Sport Dimension. Coleman appealed to the Circuit Court of Appeals of the Federal Circuit on the ground, inter alia, that the District Court was in error in holding that Coleman's design patent was functional and not ornamental because certain parts of it were functional in nature. The Circuit Court of Appeals vacated the judgment of the District Court. In doing so, it adumbrated upon the law, (at pp. 1320-1321) as it had developed in the U.S. through the ages, which is reproduced hereinbelow:-

'Of course, a design patent cannot claim a purely functional design-a design patent is invalid if its overall appearance is "dictated by" its function. Id. at 668. But as long as the design is not primarily functional, "the design claim is not invalid, even if certain elements have functional purposes." Ethicon Endo-Surgery, 796 F.3d 1333 (citing Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293-94 (Fed.Cir.2010)). That is because a design patent's claim protects an article of manufacture, which "necessarily serves a utilitarian purpose." L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed.Cir.1993). So a design may contain both functional and ornamental elements, even though the scope of a design patent claim "must be limited to the ornamental aspects of the design." Ethicon Endo-Surgery, 796 F.3d 1333. "Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent." OddzOn Prods., 122 F.3d 1405 .

In OddzOn, for example, we considered a design patent on a rocket-shaped football and endorsed the district court's construction that distinguished between functional and ornamental aspects of the design. The design patent disclosed a football with a large tail fin that added stability for the ball in flight. Id. at 1406. The fins also produced an "overall 'rocket-like' appearance of the design." Id. at 1405. We agreed with the district court's finding that the fins were functional. Nevertheless, we approved of the court's construction that took the fins into account. We praised the court for "carefully not[ing] the ornamental features that produced the overall 'rocket-like' appearance ... [and] properly limit[ing] the scope of the patent to its overall ornamental visual impression, rather than to the broader general design concept of a rocket-like tossing bah." Id.

We followed a similar line of analysis in Richardson, 597 F.3d 1293 -94. The case concerned a multi-function tool described in the patent as "compris[ing] several elements that are driven purely by utility," including a hammer, crowbar, and stud climbing tool. Id. at 1294. Those elements-i.e., the hammer's flat head, the crowbar's elongated shape, and the stud climbing tool's jawlike shape-were well known in the art, and their basic design was dictated by their respective functional purposes. Id. But there were nevertheless ornamental aspects of the design of those elements. The district court had explained that the claim "protect[ed] the ornamental aspects of Richardson's design, which include, among other things, the standard shape of the hammer-head, the diamond-shaped flare of the crow-bar and the top of the jaw, the rounded neck, the orientation of the crowbar relative to the head of the tool, and the plain, undecorated handle." Richardson v. Stanley Works, Inc., 610 F.Supp.2d 1046, 1050 (D.Ariz.2009), aff'd, 597 F.3d 1288. Our court agreed with the district court's approach that limited the claim to these ornamental aspects of the otherwise functional elements. Richardson, 597 F.3d 1293 -94. Under this construction, the claim in Richardson did not protect the functional aspects of the design. Rather, the court's construction properly ensured that the claim provided protection, albeit narrow, over those aspects of the tool that were ornamental.

In Ethicon Endo-Surgery, we construed a design patent on a surgical instrument. We explained that the open trigger, torque knob, and activation button of the instrument were functional. Ethicon Endo-Surgery, Inc., 796 F.3d 1334. And we construed the claim to eliminate the functional aspects of the design but to permit coverage of the ornamental aspects of the design. In rejecting the district court's claim construction, we disagreed with its conclusion that the claim had no scope. Id. While we agreed that certain elements of the device were functional, their functionality did not preclude those elements from having protectable ornamentation. We explained that, "although the Design Patents do not protect the general design concept of an open trigger, torque knob, and activation button in a particular configuration, they nevertheless have some scope-the particular ornamental designs of those underlying elements." Id.

In OddzOn, Richardson, and Ethicon, we construed design patent claims so as to assist a finder of fact in distinguishing between functional and ornamental features. But in no case did we entirely eliminate a structural element from the claimed ornamental design, even though that element also served a functional purpose." (emphasis added)

This distinction drawn by the American authorities, as discussed in the judgment quoted above, between the functional and ornamental aspects of a design illuminate the implications of the statement of Aldous L.J. in Philips (supra). The authorities here indicate that in evaluating whether the given shape of a good can be protected as a design/trade mark we must distinguish the functional and the ornamental aspects of the shape in question. The fact that a shape has certain functional aspects to it does not automatically mean that the shape in question cannot be protected under trade mark/design law because it may very well have certain ornamental aspects to it or such aspects to it that are capable of distinguishing the shape as a trade mark, and to ignore them would be contrary the very point of trade mark/design law. Phrasing this point differently and synthesising this point with the statement of Aldous L.J., we can say that for the shape of a good to be purely or only functional and therefore incapable of protection as a trade mark, it is not sufficient that the shape have certain aspects which achieve a technical result, rather what is required is that the shape, as a whole, performs a function only. If a shape has both functional and non-functional features then the non-functional features are capable of protection under trade mark/designs law. This has acknowledged by this Hon'ble Court in the context of designs law in International Cycle v. The Controller of Patents and Designs, 2019 (3) C.H.N. 256 at paragraphs 22-23:

'22.......a design which has functional attributes cannot be registered under the Designs Act. This is the essence of Section 2(d) of the Designs Act. The protection under the Designs Act is granted only to those designs which may have an aesthetic value or otherwise appeal to the eye. There may be, however, cases where the design while fulfilling the test of being appealing to the eye, is also functional. (Mohan Lal vs. Sona Paint & Hardwares, AIR 2013 Del 143: 2013 (55) PTC 61 (Del) and Microlube Indian Limted vs. Rakesh Kumar, 2013 (55) PTC 61 (Del) (FB) at p. 75)

In Kestos Ltd. vs. Kempat Ltd., (1936) 53 RPC 139, the Court observed that "a mere mechanical device is a shape in which all the features are dictated solely by the function or functions which the article has to perform". In AMP Incorporated vs Utilux Propietary P. Ltd., (1972) RPC 103, the House of Lords approved the above statement of the law in Kestos (supra). The House of Lords held that "dictated solely by function" meant "attributable to or caused or prompted by function". The House of Lords further held that where a design would perform a particular function, but the designer had also added some features of shape that appealed to the eye and was additional to or supplementary to the function the design could be registered. In other words, where a designer sets out to produce an article that would perform a particular function, but where in producing it he has added or applied some features of shape that are additional to or supplementary to what is functionally needed, with the result that in the finished article there are some features that appeal to the eye, there may be a design which is registrable within the statutory definition. (Amp vs. Utilux, (1972) RPC 103 at p. 113)' (emphasis added)

A brilliant example of a case where a shape was not recognised as a trade mark because it only had a functional aspect to it which was not separable from the non-functional aspects of the shape is Lego Juris A/S v OHIM & Anr. (Case C-48/09 P) (See also: Kemtron Properties Pty. Ltd. & Anr. v Jimmy's Co. Ltd. [1979] F.S.R. 86 (High Court of Hong Kong)). In this case, the issue was whether the shape of the famous bricks made by the toymaker Lego, with the characteristic studs that helped the bricks to join together, was capable of being recognised as a trade mark. The Grand Chamber of the Court of Justice of the European Union held that they were not capable of being recognised so under Article 7(1)(e)(ii) of Regulation No 40/94, which is pari materia with Section 9(3)(b) of the Trade Marks Act. In arriving at this conclusion, the Court reasoned as follows (at paragraphs 48, 52, 58 and 72):-

"48. ......by restricting the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 to signs which consist 'exclusively' of the shape of goods which is 'necessary' to obtain a technical result, the legislature duly took into account that any shape of goods is, to a certain extent, functional and that it would therefore be inappropriate to refuse to register a shape of goods as a trade mark solely on the ground that it has functional characteristics. By the terms 'exclusively' and 'necessary', that provision I - 8459 LEGO JURIS v OHIM ensures that solely shapes of goods which only incorporate a technical solution, and whose registration as a trade mark would therefore actually impede the use of that technical solution by other undertakings, are not to be registered...........

52.......In addition, since that interpretation implies that the ground for refusal under Article 7(1)(e)(ii) of Regulation No 40/94 is applicable only where all the essential characteristics of the sign are functional, it ensures that such a sign cannot be refused registration as a trade mark under that provision if the shape of the goods at issue incorporates a major non-functional element, such as a decorative or imaginative element which plays an important role in the shape...........

58......Those considerations are moreover reflected in paragraphs 81 and 83 of Philips, which state that the existence of other shapes which could achieve the same technical result does not in itself preclude application of the ground for refusal set out in the second indent of Article 3(1)(e) of Directive 89/104, whose wording corresponds to that of Article 7(1)(e)(ii) of Regulation No 40/94...........

In the present case, the Grand Board of Appeal found, at paragraph 62 of the contested decision, that the most important element of the sign composed of the Lego brick consists in the two rows of studs on the upper surface of that brick. In its examination of the analysis carried out by the Cancellation Division, the Board placed particular emphasis on the inclusion of that element in Kirkbi's prior patents. As a result of that examination, it was found that that element is necessary to obtain the intended technical result of the product in question, that is to say, the assembly of toy bricks. In addition, as is apparent from paragraphs 54 and 55 of the contested decision, the Grand Board of Appeal found that, with the sole exception of its colour, all the other elements of the sign constituted by that brick are also functional." (emphasis added)

Apart from reinforcing and re-emphasising the statements of law made by the American and English courts, this case gives us a positive example of when the law will bar the recognition of a trade mark on the ground of functionality. It tells us very clearly that only when the main purpose of a shape is to achieve a technical result will it be barred from being recognised as a trade mark even if it has distinctive features. We can contrast this judgment with Apollo Tyres (supra), which also made reference to this case. In Apollo Tyres (supra), the tread patterns did have a functional aspect to them, but those functional aspects were not the dominant feature of the tread patterns, rather the dominant functional aspect resided in the treads themselves and not in the manner or pattern in which those treads were arranged. In this case, however, the pattern of the studs on the bricks had one singular point, i.e. to join the bricks together. There was simply no difference between the pattern of the studs and the studs themselves.

An excellent exposition of the policy underpinnings of the prohibition on trade mark recognition on the ground of functionality is found in the judgment of Smit J. in the High Court of South Africa - (Transvaal Provincial Division) in Triomed (Proprietary) Ltd. v Beecham Group Plc, [2001] F.S.R. 34 at paragraphs 69-71:

"69. The exclusion provided for in section 10(5) has its genesis in the principle which pervades trade mark law that a balance should be preserved between the protection of the right of a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others and the recognition of the general right of free competition, including the right to copy. [See: Cointreau et cie SA v. Pagan International 1991 (4) SA 706 (A) at 712E-F ; and see Premier Hangers CC v. Polyoak (Pty) Ltd 1997 (1) SA 416 (A) at 423D-424I .)

This principle also finds expression in the common law principal that as a matter of public policy features of an article dictated solely by function are not protected by an action of passing off. [See: Agriplas (Pty) Ltd and Others v. Andrag & Sons (Pty) Ltd 1981 (4) SA 873 (C) at 882A-884H.]

If these principles were not applied it would be open to a single competitor or a few competitors to monopolise all the best or most appropriate functional features for an article and so inhibit or prevent competition. Artificial barriers to free competition are precluded by laws relating to competition in most free market economies including South Africa and a particular monopoly must as a matter of principle be justified in the public interest." (sic) (emphasis added)

This exposition of the policy reasons behind the bar on functionality is undoubtedly applicable to Indian law as well and accords well with the discussion of the law above. It is verily because we must balance the right of a manufacturer or trader to distinguish his goods and the right of a manufacturer to imitate more technically-sound shapes that we must, firstly, bar recognition of a shape as a trade mark when the shape solely achieves a technical result, secondly, not bar recognition of a shape as a trade mark simply because the shape has a functional aspect and, thirdly, bar recognition of a shape as a trade mark if it has a functional aspect only to the extent of that it has that functional aspect. One may argue that the second and third postulations have the possibility of inhibiting competition, but as stated by Saidman:

"Omitting consideration of utilitarian features during claim construction...will not result in monopolization of such features, it will only result in the inability of competitors to use substantially the same appearance as the combination of claimed utilitarian features in their products." (Perry J. Saidman, "The Demise of The Functionality Doctrine in Design Patent Law", 92(4) Notre Dame Law Review 1471 at p. 1479)

As already stated in the South African judgment quoted above, the bar of functionality operates both with regard to a statutory trade mark and in relation to an unregistered trade mark, as is the case here. In a judgement given by the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 S.C.C. 683, the Court has stated that the statute only recognises the common law rights of the owner of a trade mark in these words:

"33.....it is also a well-settled principle of law in the field of trade marks that the registration merely recognises the rights which are already pre-existing in common law and does not create any rights" (emphasis added)

A logical application of this statement of the law to the present question clearly entails that the unregistered trade mark must face the same bar of functionality as is found in statute. If the statute merely codifies and recognises what is already existent in the common law then it follows that the bars to the recognition of a trade mark that is spelt out in the statute will apply to the common law as well. This point has been explicitly stated by the Supreme Court of Canada in Kirkbi A.G. & Lego Canada Inc. v Ritvik Holdings [2005] 3 S.C.R. 302 at paragraphs 56 and 58:

Kirkbi does not challenge the application of the functionality doctrine to registered marks in this Court. It raises a different argument. It submits that the doctrine does not apply to unregistered marks. In its view, a mark does not grant the holder monopoly rights, but solely the right to be protected against confusion as to the source of the product.....

As Sexton J.A. found for the majority of the Court of Appeal, this argument has no basis in law. Registration does not change the nature of the mark; it grants more effective rights against third parties. Nevertheless, registered or not, marks share common legal attributes......Sexton J.A. rightly pointed out that the argument of Kirkbi appears to rest on a misreading of a 19th century judgment of the House of Lords, Singer Manufacturing Co. v. Loog. (1882), 8 app. Cas. 15, aff'g (1880), 18 Ch. D. 395 (C.A.). This judgment stands only for the proposition that an unregistered trade-mark could be mentioned by competitors in comparative advertising, not that it failed to create exclusive rights to the name for the purpose of distinguishing the products. The functionality doctrine remains relevant, as the legal nature of the rights remains the same." (emphasis added)

Applying the law discussed above, we need to essentially decide whether the 'X' ribs here are more akin to a Lego brick or to a tread pattern in a tyre. It would seem that they are more like the latter. The shape of the good here that is sought to be recognised as a trade mark is the particular pattern of ribbing on the TMT bars of the respondent. There is a difference between the 'ribbing' on a TMT bar and the 'pattern of ribbing' on the TMT bar. Nobody can perhaps claim a trade mark on the former for it arguably fulfils the exclusively technical function of attaching the TMT bar to the concrete, but the latter can be claimed as a trade mark. Nowhere is this more apparent than in the fact that the pattern of ribbing of the respondent was registered as a design and was not cancelled due to the principle of functionality. In fact, the Assistant Controller of Patents and Designs explicitly recorded in his order dated February 3, 2010 cancelling the respondent's design registration (at p. 9) that '[t]he rod reinforcing concrete can have many designs over the surface...and moreover the rod has an eye appeal. The mechanical functions have been disclaimed in the disclaimer statement. Therefore, the impugned "Rod for reinforcing Concrete" is not fundamental form.' If the pattern of ribbing of the respondent was truly functional then it is highly unlikely that the Designs Office would have allowed its registration. At the very least, it would have sought to cancel the design registration of the respondent especially when the functionality argument had been specifically put to the Assistant Controller of Patents and Designs. Indeed, this fact is not in itself conclusive. Registration, whether as a trade mark or as a design, only creates a presumption that the pattern of ribbing does not fulfil a technical function (Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F. 2d (Fed. Cir. 1988) : 7 U.S.P.Q. 2d 1548) and here even the registration is not subsisting. But a further analysis of the facts reinforces the conclusions of the Assistant Controller of Patents and Designs quoted above. As already stated, the ribbing itself may be exclusively functional, but the way in which it is wound around the TMT bar is separable from the ribbing itself, just the way in which the treads on a tyre are networked together is separable from the treads themselves, as held in Apollo Tyres (supra) (See also: Sport Dimension (supra), International Cycle (supra)). Even if the pattern of ribbing also performs some technical function, over and above the ribbing itself, it would only be an incidental technical function. The very source of the pattern's functionality would be due to the way in which it wounds the ribbing around the TMT bar, so, the functional aspect of the pattern would not be due to itself or solely because of itself but because of the ribbing which it merely knits into a pattern. In other words, the appellants have not been able to establish that without the particular pattern of ribbing on the respondent's TMT bars as distinguished from the ribbing itself, the TMT bars would not perform the alleged technical function of attaching the TMT bars of the respondent with the concrete.

Now, It is true that the opposite conclusion was reached in a decision given by a learned Single Judge of this Court dated July 8, 2011 in SRMB Srijan Pvt. Ltd. v. Tribeni Industries Pvt. Ltd., G.A. No. 2275 of 2015 in A.I.D. No. 4 of 2010. The issue therein was whether the order of the Designs Office dated February 3, 2010 cancelling the respondent's design registration for its 'X' ribbed mark on the ground of prior publication was valid or not. The learned Single Judge held that there was no novelty and originality in the registered design of the respondent in view of prior publication. It was only in an ancillary finding that the learned Single Judge stated that the advertisements and the design application of the respondent evidenced the functional aspect of the respondent's 'X' ribbed mark, making it another reason to not interfere with the order of the Designs Office without having much discussion on the functionality aspect.

All of that apart, indisputably, the respondent has been using the 'X' rib mark in its TMT bars since 2001 continuously, widely and extensively as compared to the 'double Y' rib mark of the appellant that was adopted in the year 2016 and looks deceptively similar to the 'X' rib mark of the respondent, as held by the learned Single Judge. This adoption of the 'double Y' mark, which closely resembles the 'X' rib mark of the respondent, needs explanation. The appellant had been using the elliptical helix mark and, suddenly, in 2016 they realised that the 'X' rib pattern would bring more stability and applied for registration of the 'double Y' rib mark under the Trade Marks Act, which almost looks like the 'X' rib mark of the respondent. The appellants now claim that the 'X' rib pattern is essentially functional and not registrable as a trade mark. If that be the position then the registration of the 'double Y' rib mark as a trade mark in favour of the appellants must be revoked, considering that the appellant has in its own advertisements claimed that this mark achieves superior bonding with concrete, as pointed out by Mr. Ratnanko Banerjee, learned Senior Counsel for the respondents. All these arguments are self-defeating and are now being raised, having realised that the 'X' rib TMT bars of the appellant has a large market share. The goodwill and reputation of the respondent has been built over a long period of time, which has remained unshaken till date. The origin of the product would point towards the respondent and not the appellants and it would be entitled to protection, as explained below.

The mark of the proprietor in a passing off action is entitled to ad-interim protection once the Trinity Test is established, that is, once it is established that: (1) the marks of the prior and later user are prima facie and ex facie the same, (2) the balance of convenience lies in the prior user's favour, (3) there would be irreparable damage to the prior user. In Laxmikant V. Patel v. Chetanbhai Shah, A.I.R. 2002 S.C. 275 at paragraphs 12 and 13, the law on this issue has been summarised. The said paragraphs read:

"12. In Oertli v. Bowman [1957 RPC 388 (CA)] (at p. 397) the gist of passing-off action was defined by stating that it was essential to the success of any claim to passing-off based on the use of given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by user in the country distinctive of the plaintiff's goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get-up will be understood by the trade and the public in that country as meaning that the goods are the plaintiff's goods. It is in the nature of acquisition of a quasi-proprietary right to the exclusive use of the mark or get-up in relation to goods of that kind because of the plaintiff having used or made it known that the mark or get-up has relation to his goods. Such right is invaded by anyone using the same or some deceptively similar mark, get-up or name in relation to goods not of plaintiff. The three elements of passing-off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. In our opinion, the same principle, which applies to trade mark, is applicable to trade name.

In an action for passing-off it is usual, rather essential, to seek an injunction, temporary or ad interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing-off cases are often cases of deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence, though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing-Off (1995 Edn., at p. 3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing-off. Likelihood of damage is sufficient. The same learned author states that the defendant's state of mind is wholly irrelevant to the existence of the cause of action for passing-off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiff's distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name (Kerly, ibid, para 16.97)." (emphasis added)

In another decision of the Supreme Court in the case of Ramdev Food Products (P.) Ltd. v. Arvindhbhai Rambhai Patel & Ors., (2006) 8 S.C.C. 726, the Supreme Court has observed that the test for determining deceptive similarity in an infringement action would be the same as in the case of a passing off action, as is the case here. The Court observed that although the defendants might not be using the actual trademark of the plaintiff, the get up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off could be proved. The Supreme Court (at paragraph 51) has quoted with approval paragraph 10 of the judgment in Lakshmikant V. Patel (supra), where it has been stated, inter alia that:-

"The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury." (emphasis added)

The function of a trade mark is to distinguish the goods of one person from others. As was stated by Upjohn J. in Cluett Peabody & Co., Inc. v McIntyre Hogg Marsh & Co. Ld. [1958] R.P.C. 335 at p. 351,

"[A] man infringes the mark of another if he seizes upon some essential feature of the plaintiffs' mark. That essential feature may be ascertained by the eye or by the ear in this sense, that goods bearing that mark may be likely to become known by a certain name: See de Cordova & Others. v Vick Chemical Co. (1951), 68 R.P.C. 103 at p. 105. Furthermore evidence is admissible to establish what is or has become an essential feature, but evidence is not essential if the Court feels satisfied on inspection in coming to the conclusion that some particular feature is a distinguishing feature of the Mark allegedly infringed".

It is also apposite to refer to the words of Lord Cranworth L.C., in Seixo v Provezende (1865-66) L.R. 1 Ch. App. 192 at p. 197, where he states:

"If the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, I think that the adoption by a rival trader of any mark which will cause his goods to bear the same name in the market, may be as much a violation of the rights of that rival as the actual copy of his device." (emphasis added)

On the question of the extent of proof required to conclude that there is passing off, Lord Cranworth observes at p. 196 that:

"It is obvious that, in these cases, questions of considerable nicety may arise as to whether the mark adopted by one trader is or is not the same as that previously used by another trader complaining of its illegal use, and it is hardly necessary to say that, in order to entitle a party to relief, it is by no means necessary that there should be absolute identity.

What degree of resemblance is necessary from the nature of things, is a matter incapable of definition a priori. All that courts of justice can do is to say that no trader can adopt a trade mark so resembling that of a rival, as that ordinary purchasers, purchasing with ordinary caution, are likely to be misled.

It would be a mistake, however, to suppose that the resemblance must be such as would deceive persons who should see the two marks placed side by side. The rule so restricted would be of no practical use." (emphasis added)

From these authorities we can surmise that the function of the trade mark is to identify the source of the manufacturer of goods. It is the indicia of origin. In the market, the chief value of the trade mark is its power to stimulate sales. In law, the fundamental theory upon which the interest in the trade mark is protected is that a trade mark identifies the goods coming from a particular source, and that an infringing designation tends to divert customers from that source by falsely representing that other goods come from it. (See Ellora Industries v. Banarasi Dass Gupta, A.I.R. 1980 Del. 254) Determining whether there is false representation is not subject to some perfectly codified standards but is subject to the broad test of whether ordinary purchasers would be misled by the representation in question. And if the Trinity Test is established, then a false representation may be protected by an ad-interim order to ensure that till the full adjudication of the case, the alleged false representor is not unjustly enriched.

A trade mark need not be registered to be protected, in fact, passing off rights are superior to the rights conferred by registration. In this regard reference may be made to S. Syed Mohideen (supra) where it is stated (at paragraphs 31-32):

'31.1 Traditionally, passing off in common law is considered to be a right for protection of goodwill in the business against misrepresentation caused in the course of trade and for prevention of resultant damage on account of the said misrepresentation. The three ingredients of passing off are goodwill, misrepresentation and damage. These ingredients are considered to be classical trinity under the law of passing off as per the speech of Lord Oliver laid down in Reckitt & Colman Products Ltd. v. Borden Inc. [Reckitt & Colman Products Ltd. v. Borden Inc., (1990) 1 WLR 491 : (1990) 1 All ER 873 (HL)] which is more popularly known as "Jif Lemon" case wherein Lord Oliver reduced the five guidelines laid out by Lord Diplock in Erven Warnink Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd. [Erven Warnink Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd., 1979 AC 731 at p. 742 : (1979) 3 WLR 68 : (1979) 2 All ER 927 (HL)] ("the Advocaat case") to three elements: (1) goodwill owned by a trader, (2) misrepresentation, and (3) damage to goodwill. Thus, the passing off action is essentially an action in deceit where the common law rule is that no person is entitled to carry on his or her business on pretext that the said business is of that of another. This Court has given its imprimatur to the above principle in Laxmikant V. Patel v. Chetanbhai Shah [Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65]

31.2. The applicability of the said principle can be seen as to which proprietor has generated the goodwill by way of use of the mark/name in the business. The use of the mark/carrying on business under the name confers the rights in favour of the person and generates goodwill in the market. Accordingly, the latter user of the mark/name or in the business cannot misrepresent his business as that of business of the prior right holder. That is the reason why essentially the prior user is considered to be superior than that of any other rights. Consequently, the examination of rights in common law which are based on goodwill, misrepresentation and damage are independent to that of registered rights. The mere fact that both prior user and subsequent user are registered proprietors are irrelevant for the purposes of examining who generated the goodwill first in the market and whether the latter user is causing misrepresentation in the course of trade and damaging the goodwill and reputation of the prior right holder/former user. That is the additional reasoning that the statutory rights must pave the way for common law rights of passing off.

32....it is also recognised principle in common law jurisdiction that passing off right is broader remedy than that of infringement. This is due to the reason that the passing off doctrine operates on the general principle that no person is entitled to represent his or her business as business of other person. The said action in deceit is maintainable for diverse reasons other than that of registered rights which are allocated rights under the Act. The authorities of other common law jurisdictions like England more specifically Kerly's Law of Trade Marks and Trade Names, 14th Edn., Thomson, Sweet & Maxwell South Asian Edition recognises the principle that where trade mark action fails, passing off action may still succeed on the same evidence. This has been explained by the learned author by observing the following:

"15 -033. A claimant may fail to make out a case of infringement of a trade mark for various reasons and may yet show that by imitating the mark claimed as a trade mark, or otherwise, the defendant has done what is calculated to pass off his goods as those of the claimant. A claim in 'passing off' has generally been added as a second string to actions for infringement, and has on occasion succeeded where the claim for infringement has failed."'

Applying the law to the facts, we can clearly see that the Trinity Test required to be satisfied for the ad-interim protection of the respondent's mark has been clearly satisfied, as found by the learned Single Judge, and the absence of registration of the mark is no bar to it being so protected. The learned Single Judge has satisfied himself that there is prima facie and ex facie similarity between then mark of the prior use and the later user.

The Second Issue

Before we seek to discuss the second issue, it must be clarified that since the design registration of the mark in question here has been cancelled we need not or rather must not concern ourselves with the question of whether the registration of a mark as a design precludes its recognition as a trade mark as well in an action of passing off. We are only required to discuss the question of whether post cancellation of the design registration of a trade mark on the ground of prior publication, the said mark can be considered a trade mark or not in respect of a passing off action. Mr. Mookherjee, learned Senior Counsel for the appellants, has placed reliance on the dissenting judgment of Manmohan Singh, J. in Mohan Lal v. Sona Paint & Hardwares, (2013) 199 D.L.T. 740 (F.B.).

The essence of Manmohan Singh, J.'s position is found in paragraph 63, where he states:

"Once the objects of the Design Act, 2000 provides that the monopoly rights are for limited period and the same should not be extended so that the public can freely use the shape of the articles, the further extension of the rights under the guise of the passing off by calling it a dual monopoly would be against the shape of the articles in the public domain for free use after expiration. It cannot be the case that on one hand the shape of the article is passed to public domain for free use by operation of law of Design Act and on the other hand, the same very shape is again taken away from the public and put into the bracket of the protection by granting monopoly rights in perpetuity by operation of another law which is a prior law and thereby in effect the public is debarred from using the said shape of the articles."

This issue is not covered by the majority in Mohan Lal v. Sona Paint & Hardwares, 2013 (55) P.T.C. (Del.) (F.B.), which was, inter alia, seized of the question of whether during the subsistence of a design registration of a mark the said mark could be considered a trade mark (see paragraphs 19-22.8, esp. paragraph 22). The cases that discuss this majority judgment of Mohan Lal (supra) thereafter, i.e. Carlsberg Breweries v. Som Distelleries, A.I.R 2019 Del. 23: (2019) 256 D.L.T. 1 at paragraph 45, M/s. Crocs, Inc. U.S.A. v. M/s. Bata & Ors., RFA (OS) (COMM) 22/2019 & CM APP No. 22655/2019 & other connected matters at paragraph 23 and Dart Industries Inc. & Ors. v. Vijay Kumar Bansal & Ors., CS (COMM) 837/2016, MANU/DE/3231/2019 at paragraph 24-26 are, inter alia, all concerned with the same issue. So, they are inapplicable to the resolution of the present issue in this case. However, it must be noted that in Dart Industries (supra), Rajiv Sahai Endlaw, J. does state (at paragraph 26) that:

"no action for passing off would lie with respect to what was registered as a design, inasmuch as the plaintiffs, by seeking registration thereof as a design, are deemed to have surrendered, abandoned, acquiesced and waived all rights to use such features as a trade mark, whether during the pendency of the registration as a design or even thereafter." (emphasis added)

It is stated that this position of Manmohan Singh, J. in Mohan Lal (supra) and Rajiv Sahai Endlaw, J. in Dart Industries (supra) is respectfully differed with since it is not supported by the fundamental principles of the law of passing off. The position of Manmohan Singh, J. presupposes that an article by ipso facto becoming a design cannot become a trade mark after it stops being a design because the aim of a design registration is to grant a monopoly for a limited period and not after that. But the fatal flaw with this presupposition is that rather than granting monopolies to the shape of an article, the law of passing off merely recognises the existence of a monopoly over that shape that is held by the proprietor. So, the monopoly of a design, after it comes to an end, is not, ceteris paribus, converted into the monopoly of a trade mark but only recognised as one. What Manmohan Singh, J.'s opinion does not account for is the fact that a registered design, after its expiry, may not lose its distinctiveness and end up fulfilling all the requirements of a trade mark. In that scenario, not recognising that mark as a trade mark because that would extend the design monopoly would be to conflate two things that exist completely independent of each other. If a person is able to demonstrate that his mark has attained all the requirements of trade mark in a passing off action, then to deny him the protection that the law entitles him simply because priorly the said mark was a design would defeat the purpose of trade mark law and extend not the purpose of designs law. The fear enunciated by Manmohan Singh, J. that designs will not go to the public domain as they ought to post expiry of design registration if they are recognised as trade marks may be addressed by simply pointing out that such monopolisation is restricted by the standards required to be satisfied for the recognition of a trade mark itself. These points find strong support from the case of In re Mogen David Wine Corpn., 328 F. 2d 925, where the U.S. Court of Customs and Patent Appeals states very tritely that:

'we can find no supportable reasons in the purposes or philosophies of patent and trademark law to support the conclusion the board bases on that distinction. In our opinion, trademark rights, or rights under the law of unfair competition, which happen to continue beyond the expiration of a design patent, do not "extend" the patent monopoly. They exist independently of it, under different law and for different reasons. The termination of either has no legal effect on the continuance of the other. When the patent monopoly ends, it ends. The trademark rights do not extend it. We know of no provision of patent law, statutory or otherwise, that guarantees to anyone an absolute right to copy the subject matter of any expired patent. Patent expiration is nothing more than the cessation of the patentee's right to exclude held under the patent law. Conversely, trademarks conceivably could end through non use during the life of a patent. We doubt it would be argued that the patent rights should also expire so as not to "extend" them.' (emphasis added)

While the above discussion has centred mainly on the issue of whether a shape previously registered as a design can also be a trade mark post expiry of the design registration, the discussion can mutatis mutandis apply to the context where a design has been cancelled on the ground of prior publication or the lack of novelty. The reason for this is simple and hardly differs from what has been explained above. A design previously published is incapable of registration or is liable to be cancelled under Sections 4(a)-(b) and 19(b)-(c) of the Designs Act respectively, simply because it is either already in the public domain, and/or, as on the date of application for registration, the design is not new or original. So, the cancellation of a mark as a registered design on the ground of prior publication does not imply that the mark, due to the very fact of being unoriginal and/or being in the public domain in the context of designs, is incapable of "distinguishing the goods or services of one person from those of others" under Section 2(zb) of the Trade Marks Act, 1999. Indeed, the fact of the mark being one that is already a design in the public domain and/or is unoriginal could possibly prevent it from developing distinctiveness for the purposes of its recognition and/or registration as a trade mark. But that cannot be necessarily so. For, to imply as such would be to conflate two things that are legally distinct, alluded to by a learned Single Judge in this Hon'ble Court by an order dated January 30, 2019 in SRMB Srijan Pvt. Ltd. v. Shreegopal Concrete Pvt. Ltd., G.A. No. 261 of 2019 in C.S. No. 15 of 2015. The cancellation of a design monopoly on the ground of prior publication really means that the proprietor of the design had no monopoly over its design in the first place. However, the recognition that there is no design monopoly on a mark does not mean that there can be no trade mark monopoly on the said mark. A mark can, without being original or outside the public domain in the context of designs, ceteris paribus, develop distinctiveness as the signifier of the proprietor's product. To refuse to recognise that the said mark has become monopolised by the proprietor as a trade mark merely because the mark is also a design that has been cancelled due to prior publication would offend the very purpose of trade marks law and do nothing to extend the purpose of designs law. Thus, the cancelation of a design on the ground that it has been previously published or it lacks novelty under the Designs Act would not be a ground for refusal of registration under the Trade Marks Act, 1999 or the recognition of a mark as a trade mark in a passing off action. Now, it must be noted that, as has been explained above in relation to the first issue, a design which is purely functional is not registrable under the Designs Act. So, a design which has been cancelled on that ground under Section 19(e) of the Designs Act may not be registered or recognised as a trade mark due to the principle of functionality under Section 9(3)(b) of the Trade Marks Act, 1999. This is the only nexus that the Trade Marks Act may have with the Designs Act

Applying the law to the facts here is very straightforward. The design registration of the mark here has been cancelled in 2010 on the ground of prior publication and not on the ground of functionality, so there is nothing precluding the 'X' ribs of the respondent from being recognised as a trade mark.

The Third Issue

It is well-settled that an appellate court would be extremely slow and cautious to interfere with the discretionary jurisdiction of the trial court with regard to the granting of an ad-interim order. The appeal court will not substitute its discretion unless the trial court has exercised jurisdiction arbitrarily, capriciously, perversely or in ignorance of settled principles of law regulating the grant or refusal of an ad-interim order of injunction. As observed in Cello Plast (supra) at paragraph 4:

"It is only when an ad interim order is passed completely without reasons or appears to be bad to the meanest mind in the sense that it is outlandish, that an Appellate Court should interfere in an intra-Court appeal"

In the instant case, the impugned order was not an ex parte ad-interim order, for the parties were heard at length. The respondent was able to make out a strong prima facie case and the balance of convenience was in favour of the respondent, since refusal to pass any such ad-interim order would result in unjust enrichment to the appellant. The appellant cannot thrive and prosper at the cost of the respondent. Hence, there is no reason for us to interfere with the impugned order.

Conclusion

Therefore, for the reasons given above, the present appeal and the application are dismissed. There shall be no order of costs. We, however, make it clear that the observations and findings in this judgment shall not influence the learned Single Judge in deciding the interlocutory application on merits after exchange of affidavits.

Urgent Photostat copies of this judgment shall be given to the parties on the usual undertakings.\

I agree.