FABER-CASTELL AKTIENGESELLSCHAFT Vs. PIKPEN P LTD

JUDGEMENT

(1.) THIS motion is taken out by the plaintiffs seeking relief under Order 39 Rule 2a of the Code of Civil Procedure against the defendant and its director who are alleged to have committed breach of the order of injunction passed by this Court on April 30 and May 2, 2003 in Notice of Motion No. 2/03 as modified by an order dated 4th July, 2003. The facts giving rise to present motion are stated below :

(2.) THE plaintiff No. 2 is a subsidiary of plaintiff No. 1 and is a part of Faber-Castell Group and is inter alia is engaged in the business of manufacturing and marketing art material products, stationery products, drawing and painting instruments and textmarkers which are used for highlighting typewritten or fax text in fluorescent colours. The plaintiff No. 2 manufactures and sells textmarkers under the brand name "faber-Castell" world wide and in India for the last many years. The defendant introduced a product having similar characteristics of highlighting typewritten text and fax text under a brand name "kolorpik". The plaintiffs thereafter filed a suit No. 285/03 in this Court stating that the plaintiffs product has a distinctive design and which is registered under registration No. 1 /4429 on 4th August, 1997 with the Controller of Patents and Designs under the Designs Act, 1911 and alleging that the Defendant had copied the design of the plaintiffs. The plaintiff also alleged that the defendant used copies and using the plaintiff's mark "textliner" on its product and was passing off its textmarkers as that of the plaintiff's by producing them with an overall get up deceptively similar to that of the plaintiff's textmarkers. By the order dated April 30 and May 2, 2003, this Court granted an interim injunction in terms of prayer Clause (c) in the motion. According to the plaintiffs, after the order of injunction, the Defendant made some cosmetic alterations in its product which were immaterial in nature. The altered product is also deceptively similar to the plaintiffs textmarkers. The defendant has continued to sell its textmarkers with such small alterations that the defendants continue to be deceptively similar to the plaintiffs' textmarkers. According to the plaintiffs, the defendant by continuing to sell the textmarkers in such fashion is committing and has continued to commit a breach the order of injunction and therefore the present motion for action under Order 39 of Rule 2a of the Code of Civil Procedure.

(3.) LEARNED Counsel for the defendant submitted that no action under Order 39 of Rule 2a of Civil Procedure Code can be taken in the present case for the following reasons :