The Crayon Wars: Faber Castell v. Cello

October 5, 2015

The High Court of Bombay on September 3, 2015, in a dispute between Faber Castell (the Plaintiff) and Cello Pens Pvt. Ltd. (the Defendant) over crayons, granted injunction against the Defendant.
In the present case, the Plaintiff filed a suit for infringement of design, copyright and passing off, etc., against the Defendant.

The Plaintiff alleged that the Defendant had infringed the three-sided crayon design and also attempted to pass- off them as being that of the Plaintiff.
The Plaintiff based its contentions with regard to the distinctiveness of its crayons, on the ground that, it had a novel and unique shape, i.e. trigonal, the packed product including 24 crayons and moreover the twin series of paralleled line of dots on each stem of the three sides on the crayons. The Plaintiff further stated that their crayons were unique with regard to its presentation, wherein two sunken plates are facing each other inside a bigger outer ampule.

According to the Plaintiff there existed five key and distinctive elements to the Plaintiff’s crayons i.e.

a.Triangular shape,



d.Non-slip grip, and

e.Arrangement in the tray.

The Plaintiff clearly mentioned of having no interest in claiming monopoly over any one of the aforementioned specialty, but instead contended that it was the combination of all these aspects in a specific manner along with the presentation, which went beyond being merely functional and was in fact entirely aesthetic, novel and certainly unique to that of the Plaintiff’s and thereby, definitely exceptional to that of the Defendants and nobody else.

The Defendant on the other hand attributed the Plaintiff with suppression and submitted that such suppression was material particularly as the key elements mentioned by the Plaintiff were purely functional and not capricious additions. The Defendant further submitted that if there had been prior publication of the Plaintiff’s designs, then the burden on the Plaintiff would be significantly higher as the Plaintiff would not only be unable to argue design infringement at the interim stage but they in addition would also have to prove that the features of the product are neither purely descriptive nor purely functional and thus, there is exclusivity attached to those features and that the confusion is inevitable or has actually occurred.

The High Court of Bombay, considered the issue of capriciousness in respect to the key feature of the Plaintiff’s crayons and observed that the twin series of parallel lines of dots as well as the name and logo of the Plaintiff embossed on the crayons were artistic and not functional elements. The Court further observed that there was nothing to suggest that the twin parallel lines of dots provide the functionality of a better grip or that such parallel lines of a specific length aid any such functionality and stated that if at all the twin parallel lines were functional, there was no reason why the Defendant had chosen not to extend them across the entire length of the shanks and had instead chosen to stop at the exact length the Plaintiff had stopped.

The Court placed reliance on various authorities to determine the issue of passing off claimed by the Plaintiff against the Defendant;

The Court while placing reliance on Jones v. Hallworth [14 RPC 225] where the issue of whether permissible copying of various features might lead to impermissible passing off of the whole was dealt with, stated that this position was exactly similar to the case at hand and further held that on comparing the products of both parties, the only distinction which can be carved out between the two was that the Plaintiff’s name and logo were missing on one of the shanks of Defendant’s crayons. All the other features of Defendant’s crayons were exactly same as that of the Plaintiff’s. Therefore, taken together in aggregate, the Bombay High Court held that such a combination of features including the exact length of the parallel lines of dots and the same manner of presentation as Plaintiffs crayons indicate passing off.

The Court further, examined the case of Whirlpool of India Ltd. v. Videocon [2014 (60) PTC 155] which considered the issue of where a particular element has both form and function. The Bombay High Court in that case held that the mere existence of function combined with form did not disentitle such an element from protection altogether. However, in that case, the external shape of the washing machines was held to have no functional purpose. In such a situation, it cannot be argued that the functionality of the elements were such that it was not possible to have any alternate design other than the Plaintiff’s design. Moreover, when the external shape of the washing machine has no functional purpose, it is redundant for the Defendant to employ a defense attributing features of the Plaintiff’s design to functional requirements. Applying the same principles to the instant case, the Court held that as the Defendant has been unsuccessful in showing the functional uses for the key elements of Plaintiff’s crayons, it could not argue that this was the only possible design it could have employed.


After considering the principles of the above cited authorities, the Court held that from the view point of the target audience of a child or a harried parent, there was no distinction between the two products. The Court further stated, “that every single feature that has been used in a unique fashion by the Plaintiff in creating their products was replicated, down to the last millimeter, in Defendant’s product.”

Thus, the Court held that due to the Defendant’s inability to prove functional uses for Plaintiff’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 Plaintiff with the injunction against Defendant, noting that if the Defendant’s pastel crayons were to persist in the market, it would result to monetary loss faced by the Plaintiff.

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