A trade mark may be recognized in passing off actions even if previously registered as a design, provided it demonstrates distinctiveness and does not solely serve a functional purpose.

1. 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.

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

3. 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 S.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

4. 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