Delhi HC vacates an interim injunction leading to Plaintiff losing their registration on the design of ball point pens

March 4, 2018 / Blog, Case Comment

A single judge of the Delhi High Court, namely Justice Valmiki Mehta, vacated an interim injunction in a design infringement case on 8th January 2018. The case arose when Plaintiff [Pentel Kabushiki Kaisha] filed a suit against Defendants [M/s Arora Stationers & Ors.] pleading piracy in their registered design relating to ball point pens. (Case No. CS(COMM) 361/2017)

Facts of the case:

The plaintiff filed a suit for injunction under Order XXXIX Rules 1 & 2 of Code of Civil Procedure, 1908 (CPC) pleading piracy by the defendants of the plaintiff’s registered Design no. 263172 for ball point pens. Plaintiff claimed for permanent injunction with an order for delivery up and rendition of accounts of profits. A sum of INR 1,00,00,000/- was claimed as a decree for damages. The court agreed with the plaintiff’s contention and granted an interim injunction against the defendants on 26.05.2017 restraining them from manufacturing or marketing any pen which infringed the plaintiff’s registered design. The cause of action as pleaded in the plaint is under Section 22 of the Design Act,2000 which states during the existence of the copyright in any design, no other person shall use the registered design for commercial purposes, sale of the article etc being a design which is identical or an imitation of the registered design of the plaintiff. Sub-Section (3) of Section 22 of the Act provides that in spite of the fact that a design is a registered design, whenever any suit is filed for the relief alleging piracy of the registered design by the defendant in the suit, then in such a suit every ground on which registration of a design may be cancelled under Section 19 of the Act shall be available to the defendant as a ground of defence. It is also stated that before a design is entitled to protection under the Design Act, 2000, the design has to be new or original design. Therefore, before deciding on the issue of entitlement of the Plaintiff, the court has to decide whether the registered design is new or original design or not. Plaintiffs are selling their ball point pens under the trademark PENTEL ENERGEL whereas Defendants are selling their ball point pens under the trademark MONTEX and with sub-brands of MONTEX including the MONTEX MASTANI. It is MONTEX MASTANI which is pleaded by the plaintiffs to be an infringement of the registered design of the plaintiffs.

Decision of the Court:

The court applied the principles as laid down by this court in M/s. B. Chawla & Sons Vs. M/s. Bright Auto Industries AIR 1981 Delhi 95 and also by the Supreme Court in Bharat Glass Tube Limited Vs. Gopal Glass Works Limited (2008) 10 SCC 657 to reach the decision that the registered design of the Plaintiff had no newness or originality as claimed and therefore could not distinguish itself from known shapes which is already present in ball point pens. The judge was of the opinion that every ball point pen has common features of a lower casing/barrel in which lower casing/barrel there is a refill, the refill exists with a ball point pen nib, the cap covers the ball point pen nib portion with additional portion of the lower casing/barrel, and finally that the cap ordinarily contains a clip. The cap of the ball point pen containing wedges at the point of holding the pen which is claimed to be unique and new by the plaintiff are not as they are only trade variants and such features does not have newness or originality to distinguish themselves from known shapes or feature which already exist in a ball point pen. Hence it cannot be registered as a design under Section 2(d) of the Design Act, 2000. The court also opined that non-existence of a design in public domain is not enough to succeed on the aspect of registration of the design under the Act because even a known concept or known design or known idea becomes a design only when it is applied with respect to an article, whereby the new article would become a design as such, and one then which would have protection as a design under the Act. Hence the court vacated the interim order passed on May 26, 2017 as the plaintiffs failed to show substantial newness or originality as required by the definition under Section 2(d) of the Design Act, 2000.


Thus, to show newness or originality in design it should be distinguishable from existing design and it should not be a trade variant. Else there would not be monopoly on the design claimed.

Darts reference: BID 4081165

Cover photo credits: r. nial bradshaw Licence: Attribution 2.0 Generic (CC BY 2.0)

Reach out to us about becoming a featured author on our blog:


2bbbb 3bbbb 4bbbb bbbb

Passionate about IP?

Reach out to us about becoming a featured author on our blog: