India - The War Of Pastels: Faber Castell vs Cello.

Legal News & Analysis – Asia Pacific - India - Intellectual Property

25 September, 2015


In India, when it comes to design registration/passing off/design infringement, following requisites are essential: features [shape, configuration, pattern, ornament or composition of lines or colours] applied to any article; whether in 2D/3D/both, whether manual/mechanical/chemical, separate/combined and which in the finished article appeal to and are judged solely by the eye.

Extra emphasis helps in understanding the recent decision given by the Bombay High Court, in the case of Faber Castell Aktiengesellschaft and Ors. vs. Cello Pens Pvt. Ltd. and Ors.[i] who was lauded by the eminent legal fraternity for being able to clearly decipher and analyse this case at hand wherein Faber Castell (the Plaintiff) alleged that Cello (the Defendant) had infringed the three-sided crayon design as well as was attempting to pass off them as being that of the Plaintiff’s. The Plaintiff based its contentions with regard to the distinctiveness of its crayons, on the grounds that, it had a novel and unique shape, i.e. trigonal, the packed product including 24 crayons. Moreover the twin series of paralleled line of dots on each stem of the three sides can be seen on the crayons. Secondly they stated that their crayons were unique with regard to its presentation, wherein two sunken plates are facing each other inside a bigger outer ampule.[ii] The five major rudiments of the Plaintiff’s pastel crayons accordingly were;


  • Triangularly shaped
  • Sharpen-able
  • Erasable
  • No slip-up grasp
  • Preparation/Presentation in the tray


The Plaintiff’s clearly mentioned of having no interest in claiming monopoly over the aforementioned specialty, but stated that the amalgamation of these aspects in a specific manner as well as presentation, went past being just functional and was in fact wholly and aesthetically artistic and novel, and definitely exceptional to them and nobody else. They further stated that the summative of the above results in complete arbitrariness and additionally contended that Cello’s crayon pastels conveyed a profane semblance to Faber Castell’s crayon pastels, thereby mentioning that the resultant wholesale amounted to passing off of Cello’s crayon pastels as being that of Faber Castell’s.


Cello in its turn attributed Faber Castell with dominance and subjugation, which according to the former was quantifiable; owing to the fact that the key aspects of Faber Castell’s crayon pastels were functional elements virtuously and not of arbitrary nature. They claimed that prior publication of the designs of Faber Castell’s crayon pastels would have resulted on a much higher burden on the latter, due to their inability to prove their design infringement at a provisional stage. Additionally, they would have to prove that the features of their product are neither purely of a descriptive nor of functional nature, tantamount to exclusivity latched to those features, therefore the resulting confusion being unavoidable or occurring in actuality.


Once both parties had put forth their respective stances, the Bombay High Court came up with a few observations;


  • With regard to the issue of ‘arbitrariness’,[iii] they analysed that the twin series of paralleled line of dots on each stem of the three sides seen on the crayons along with the name and logo of Faber Castell engraved on the crayons, were aesthetic and non-functional.
  • Nothing advocated that the twin series of paralleled line of dots on each stem of the three sides seen on the crayons, or their length, supported functionality with respect to a no slip grip.
  • Finally that if said paralleled lines were functional there was no reason as to why Cello had chosen to halt at the exact length where Faber Castell had stopped.


The Court referred various authorities to determine the issue of passing off claimed by Faber Castell against Cello; the case of Jones vs Hallworth[iv] which dealt with the issue of whether permitted copying of various features might lead in unpermitted passing off of the whole.[v] The Court contended that this position was exactly similar to the case at hand and on comparing products of both parties and observed that the only exception noted was the name and logo of Faber Castell on one of the shafts of Cello’s pastel crayons, and the rest of the aspects and characteristic features were exactly the same as that of Faber Castell’s. Hence in the consideration of the same, it was held that in lieu of same length of paralleled line of dots and manner of presentation; they were the onus of proof to the indication of passing off of Faber Castell’s pastel crayons by Cello. The next case of Whirlpool of India Ltd. vs. Videocon,[vi] dealing with the proposition of, whether a particular element or feature exuded both form as well as function, and lacked all compensatory artistic or non-functional features.[vii]


Applying the principles of the above cited authorities, the Court held that due to Cello’s inability to prove functional uses for Faber Castell’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 Faber Castell with the injunction against Cello, noting that if the Cello pastel crayons were to persist in the market, it would result monetary loss faced by Faber Castell. This judgment boosts a ray of hope to intellectual property connoisseurs and serves as an exemplary precedent to future legal impediments in the field of intellectual property.


[i] Notice of Motion (L) No. 1824 of 2015 in Suit (L) No. 696 of 2015; Decided on: 03.09.2015.

[ii] Ibid, ¶ 4.

[iii] Ibid, ¶ 12.

[iv] Ch. Div., 14 RPC 225 (1897).

[v] Ibid, ¶ 25 - 35 at pg. 234.

[vi] Whirlpool of India Ltd. vs. Videocon (2013) 1 Mh.L.J. 197.

[vii] Ibid, ¶ 39, pg. 23.




For further information, please contact: 


Divya Srinivasan, LexOrbis

[email protected]