JUDGMENT - BOBDE S.A., J.:---This is a plaintiffs motion for an injunction restraining the defendants from infringing the plaintiffs registered design of a marker pen or a highlighter sold by the plaintiffs under the trade mark "TEXTLINER". The plaintiffs also claim an injunction restraining the defendants from passing-off their highlighter or marker pen under the trade mark "TEXTLINER" by use of the impugned trade mark "TEXTLINER" and by adopting an almost identical configuration, shape, design colour scheme and get up for their product.

2. The plaintiffs are proprietors of registered Design No. 1744290 dated 1-8-1997. This registration is under the Designs Act, 1911. It was issued on 12-1-1998. The certificate of registration contains a pictorial representation of the plaintiffs highlighter and states as follows :

"The novelty resides in the shape and configuration of the line marker in particular in the cap portion C and the ornamental surface pattern P. as illustrated."

There is an ornamental surface pattern on the plug at the bottom of the highlighter. The plug is that part of the highlighter used for filling the fluorescent ink. The registered design is dated 31-7-1997 and certified on 12-1-1998.

3. The unique features of the plaintiffs products are:

(i) A dark green body;

(ii) A unique cap of the same colour as the colour of the ink;

(iii) Gold lettering on the green body;

(iv) Trade mark "TEXTLINER".

The defendants have adopted body of an identical green colour, identical colour cap with gold lettering on the green body, the trade mark "TEXTLINER" as also identical text which is even arranged in the same manner as on the plaintiffs highlighter.

4. The plaintiffs have commenced marketing their products. They claim that the trade mark and design have become distinctive of their goods and the marks have come to be exclusively associated with the plaintiffs because of the unique shape and configuration, colour scheme and get up. In India, the plaintiffs claim annual sales, upwards of one crore per year. The sale figure for 1998 to 2002 are at Exhibit F. The defendants appear to have started marketing their highlighter bearing an identical trade mark "TEXTLINER" in October 2002. The defendants highlighter bears "KOLORPIK". It also contains the word mark "TEXTLINER" and other words which are identical to the plaintiffs highlighter. These similarities have given rise to this dispute.

5. The first question that arises is whether the defendant is infringing registered design No. 174429 of the plaintiffs in respect of the highlighter. The design is registered for a term of ten years from 1-8-1997 under section 11(1) read with section 2(c) of the Design Act, 1911. "Design" has been defined by section 2(5) of the Designs Act, 1911 to mean the features of shape, configuration, pattern or ornament applied to any article and which in the finished article appeal to and are judged solely by the eye. The exact definition reads as follows :---

"(5) "design" mans only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in Clause (v) of sub-section (1) of section 12 of the Trade and Merchandise Marks Act, 1958, or property mark as defined in section 479 of the Indian Penal Code."

The defendants highlighted is similar in style and configuration with that of the plaintiffs. Both are flat in shape, not round. The cap is similar and also the bottom portion of the highlighter consisting of plug is also similar. Equally important, the body of the defendants highlighter is similar to that of the plaintiffs and identical in every respect. According to the plaintiffs, the defendants have obviously im

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