Trade Dress is the characteristics of the visual appearance of a product or its packaging which helps in identifying the source of the products to consumers. It may include its packaging, shape, combination of colours which may be registered and protected from being used by competitors in relation to their business and services.
The Indian law does not have any special provision for protection of trade dress under its existing trade mark legislation unlike the US law.
The new Trade Marks Act, 1999, which came into force on September 2003, recognised the concept of trade dress on the line of the Lanham Act. The amended act of 1999 recognises trade dress through the new definition of trade mark which now also consists of shape of goods, packaging, or combination of colours or any combination thereof.
Broadly speaking Section 2 of the 1999 Act states:[i]
(m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof;
(q) “package” includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper an cork;
Hence the new definition of trade mark under Indian law comprises all the elements of the trade dress as under US law. While extending protection to the right holders to protect their respective trade dresses, the Courts have taken into account various factors rather than just the conventional method of deciding a dispute.
- Colgate Palmolive Company and Ors. Vs. Respondent: Anchor Health and Beauty Care Ltd.
The plaintiff seeks ad interim injunction against the use of trade dress and colour combination of one third red and two third white, in that order, on the container of its product viz. Tooth Powder as by adopting the similar trade-dress particularly the colour combination of “red and white” the defendant has committed offence of “passing off” goods of plaintiff as its own. There is no dispute as to the trade names as these are distinct and have no kind of similarity whatsoever. Plaintiff’s trade name is “Colgate and that of defendant is “Anchor”.
- Plaintiff No. 1 is a company incorporated under the laws of United States of America having its principal office at New York. Plaintiff No. 2 is a public limited company having its registered office at Mumbai. Plaintiff No. 1 is the proprietor of the trademark “Colgate” whereas plaintiff No. 2 is the registered or licensed user and has been manufacturing and marketing dental products in India under the trademark.
- The defendant, Anchor Health, is a company incorporated under the Indian Companies Act, 1956 and carries on the business as manufacturers and marketers of dental products under the trademark “Anchor”. The defendant is in the said business since 1996.
- The product which is subject matter of the proceedings is a “Tooth Powder” under the trademark “Colgate” sold in Cans bearing the distinctive get up and colour scheme or combination of colour comprising pre-dominantly of red and white background. They have been selling this product in India since 1951. Distinct feature of this combination is that around 1/3rd of the background of the upper part of the Can Along with cap is in red colour and 2/3rd is in white colour and in that order. The trademark ‘Colgate’ appears in white against red.
- The plaintiffs seek ad interim protection to the limited extent of restraining the defendants from using the red and white colour scheme as well as the shape of the container of the tooth powder as according to the plaintiffs they have originated, developed, promoted, protected and also nurtured the distinctive red and white trade dress for all these products which has acquired the meaning as a trademark.
- That the shape of the container cannot be monopolized unless and until it is registered under the Designs Act.
- That the shape of packaging or any combination thereof, do not fall within the ambit of mark or trademark as envisaged in the TMM Act, 1958.
- That the use of red and white colour combination is neither distinctive nor capable of identifying the goods with the plaintiff nor business of the plaintiff nor capable of secondary significance.
- That the plaintiffs have abandoned the colour combination of red and white and have used various other colour combinations in respect of different ranges of products and, therefore, the claim of the distinctiveness or uniqueness of the colour combination is unfounded.
- That the essential features of the label marks is the word mark and not the colour combination or overall get up and since the two trade marks are entirely different the plaintiffs cannot seek protection under the garb of colour combination of the label.
- That the colour combination red and white in respect of dental care products is descriptive in nature and has a direct reference to the character or quality of the goods, gum and teeth. This combination is common to the trade and is being used by large number of manufactures.
- Significance of trade dress and colour combination is so immense that in some cases even single colour has been taken to be a trade mark to be protected from passing off action. Colour combination is a trade mark within the definition of the TMM Act as there is no exclusion in the definition. Even a single colour has been held to be a trade mark. There may be exception also. Exception is that where the colour cannot be protected as the blue colour is for the Ink and red colour is for the lipstick. Red and white has nothing to do with the pink. Teeth as white line and Gum as Pink colour alone at least sometimes can meet the basic requirements as a trade mark. Colour depletion theory is unpersuasive only in cases where a blanket prohibition is being sought.
- For unwary, illiterate and gullible customer, who is as good as non-English knowing purchaser, trade dress in the form of colour combination of Red and White in that order and proportion is all pertinent and relevant and nothing else. Distinctive differences in name is of no significance. Reason is simple. If an illiterate servant or village folk goes to the shop with the instruction to bring Colgate Tooth Power having a container of particular shop with trade dress of colour combination of Red and White in 1/3 and 2/3 proportion he will not be in position to distinguish if he is handed over “Anchor” Tooth Powder contained in a container having the identical trade dress and colour combination of “Red and White” in that order and proportion. Confusion is writ large as to source and origin as the difference in name will not make any difference to such a customer and the goods of the defendant can easily be passed off as goods of the plaintiff.
- In the case of passing off and for that purpose infringement of trade mark which are already in existence, the second or for that purpose the subsequent comer has certain obligation to avoid unfair competition and become unjustly rich by encashing on the goodwill or reputation of the prior comer. They have to establish and bank upon on their own trade dress or distinctive features so as to establish their own merit and reputation and attract the attention of the purchasing public and if there are no substantial dissimilarities of marks, colour combination, get up or lay out on the container or packing or covering of the goods of the prior comer these are likely to create confusion in the minds of customers between his goods and the goods of the prior comer in the market as underlying and hidden intention of the second comer is to encash upon the successful rival.
- The plaintiffs have successfully established a prima facie case for injuncting the defendant from using the colour combination of red and white in that order as trade dress on the container and packaging. As a consequence the application is allowed and defendants are, by way of ad interim injunction, restrained from using the colour combination of red and white in that order on the container/packaging of its goods viz. the “Tooth Powder”.
M/s Castrol Limited & Anr. Vs Iqbal Singh Chawla & Anr.
The plaintiffs filed the suit seeking a decree thereby restraining the defendants from selling, marketing, offering for sale any packaging/label/empty container used/re-cycled and re-conditioned in respect of the Industrial Oil, engine oil, lubricants, grease under the trade mark ‘LUMAX ACTIVE’ or any other trade mark, which is deceptively similar with the plaintiffs’ trade mark ‘ACTIV’.
- The plaintiffs claim to be the registered proprietor of the trademark ‘CASTROL’ and are stated to have adopted the trademark ‘ACTIV’ in respect of lubricant oils in the year 1999. Plaintiffs also claim to be the owner of the trade dress and the copyright in the packaging, which includes the container that acts as the trade dress of the plaintiffs.
- In the month of December, 2010, the plaintiffs learnt that defendant No.1 – proprietor of Mahendra Oil Company was selling 4T oil under the trade mark ‘LUMAX ACTIVE’, which is a blatant infringement of the plaintiffs’ registered trade mark and was also imitating the get up, layout and features of the packaging of the plaintiffs by adopting red, white and green colours on the label in an identical manner and also shape and configuration of the bottle leading to infringement of plaintiffs’ trade dress rights including infringement of copyright and passing off. Defendant No.1 is the manufacturer and defendant No.2 M/s Ajit Plastic is the seller of the lubricant oils container.
- It is contended that the defendants were using the trademark ‘LUMAX ACTIV 4T’, which amounted to passing off and infringement of the registered trademark ‘ACTIV’ of the plaintiffs. It is further contended that the trade dress, shape of bottle, label, lay-out and colour scheme adopted by the defendants is identical to that of the plaintiffs and thus amounted to an infringement of the trade mark as well as the copyright of the plaintiffs in their container and the action of the defendants amounted to passing off their goods as goods of the plaintiffs.
- Whether the defendants have infringed the registered trade mark ‘ACTIV’ of the plaintiffs using the mark ‘T4 ACTIV’?
- Whether the plaintiffs are entitled to the injunction claimed by them?
- Whether the defendants have infringed the copyright of the plaintiffs by using the impugned label?
- Whether the defendants are passing off their goods as those of the plaintiffs?
- Whether the suit is bad for misjoinder of Mr Iqbal Singh Chawla, as alleged in the written statement?
- Whether the plaintiffs are entitled to damages and, if any, to what amount and from whom?
- Whether the plaintiffs are entitled to delivery up of the infringing material?
- The defendants are restrained by way of a permanent injunction from using the mark ACTIV and/or ACTIVE in the identical trade dress, colour scheme, packaging, design, layout, shape and configuration as that of the Plaintiffs. However, the injunction would not affect the right of the defendants to use the word ACTIVE in a completely different trade dress, colour scheme, packaging, design, layout, shape and configuration.
- A decree in the sum of Rs. 2,00,000/- is passed in favour of the Plaintiff and against the Defendant No. 1.
- Direction is issued to the Defendants to deliver up to the Plaintiff the infringing material comprising of the infringing label and the packaging etc.
- Plaintiff shall also be entitled to costs of the Suit.
Trade Dress can thus be secured for the shape of a bottle, colour combinations, design, etc. The competition worldwide is increasing daily and presentation of a commodity plays a very important role in its sale. This presentation has to be secured as no other person should be allowed to use a similar design. Thus trade dress laws play a very decisive role in this competing market.
[i] Trade Marks Act, 1999.