August 13, 2018
Trade Dress – What does the Law Say
The term “Trade Dress” has not been rendered an exclusive definition under the Indian Trademark Act. The concept of trade dress has been recognized in the Trademark Act, 1999 under Section 2 which provides that a mark includes shape, packaging, combination of colours and any combination thereof. The definition clause further enunciates that a package consists of any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork;
The Indian Judiciary’s pronouncements and obiter dicta in some cases has also established trade dress as an essential aspect of Intellectual Property protection. The judiciary has recognized features like shape of product, combination of colours and packaging of product as trade dress of right holders and has restrained their mala fide imitation by others.
Herein we also enumerate some judicial opinions which would aid in understanding the concept of trade dress and the legal protection accorded to it.
Important Judgments on Trade Dress infringement
Colgate Palmolive Company and Anr. v. Anchor Health and Beauty Care Pvt. Ltd.– In this case, the High Court of Delhi while recognizing the concept of Trade Dress noted that it is the overall impression that customer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging etc. If illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, colour combination and getup, it amounts to passing off.
Gorbatschow Wodka K.G. V. John Distilleries Limited – In this case, the Plaintiff is the manufacturer of Vodka and bottles it in a shape which it claims to be distinctive and form an intrinsic part of its goodwill and reputation. The Plaintiff alleged that Defendant had invade its Intellectual Property Right by adopting deceptive variation of the shape of its bottle.
The High Court while allowing the Plaintiff’s plea observed that the Defendant is engaged in the same trade and was impossible that the Defendant would not have been conscious of the shape which was used by the Plaintiff for its bottles of Vodka both internationally and in India. The High Court further opined that the true test is not as to whether the Defendant took a search from the Design Register. If the Defendant knew that the bottles of the Plaintiff with a distinctive shape were in the market – as a prudent person in the trade would know upon a diligent enquiry no amount of search in the Register would bring it within the purview of an honest adoption.
Zippo Manufacturing Company V. Anil Moolchandani & Ors.– In the case, the Plaintiff claimed to be a reputed manufacturer of lighters worldwide, which it trades under the trademark ZIPPO. The Plaintiff alleged that the Defendant was selling fake ZIPPO lighters in the market.
The Court held that the Defendant’s attempt to manufacture and sell a lighter which bore the name as well as shape of Plaintiff’s product demonstrated the malafide intention of the Defendant. The Court awarded punitive damages in favour of the Plaintiff (to the tune of Rs 5 lakh) with pendent lite and future interest (at rate of 6% per annum) on the amount of damages.
William Grant & Sons Ltd. V. Mcdowell & Compay Ltd. – The Plaintiff, a Scottish company which distils Scotch whisky and other selected categories of spirits. The Plaintiff company is one of the largest producer of Scotch Whisky in the world.
The Defendant is an Indian brand of spirits manufactured by United Spirits Limited.
The Plaintiff instituted the suit, seeking injunction against Defendant McDowell & Co. Ltd. and to restrain infringement of copyright in “GLENFIDDICH” label.
The Court granted relief to the Plaintiff in the present case, however noticed that side by side comparison of both the impugned products does not reveal any striking similarity. For example, the prominent word in respective products that is “GLENFIDDICH” and “SINGLE MALT” were very different, thus reducing the possibility of confusion or deception by an average consumer.
The Court also noted that the Plaintiff’s product is an expensive one, thus the consumers who purchase Plaintiff’s product would go by the name of the Plaintiff and not by the appearance of the tube in which the bottle is stored. However, the Court in the instant case has appreciated the artistic work employed by the Plaintiff on its packaging and has accordingly granted it protection.
Another principle of law that has emanated in the instant case is trans- border reputation of a good for establishing significance of trade dress. Thus, on the basis of trans-border reputation enjoyed by the Plaintiff, the Court has ignored the distinguishing features and established the proposition that even if the Plaintiff’s product is not substantially copied and only few features are similar, the same would be protected on account of its goodwill and reputation.
Kellogg Company Vs Pravin Kumar Bhadabhai – In this case, the High Court while comparing the two impugned trade dress noted that the whole thing must be seen in its entirety and not parts in isolation. It is not permissible, therefore to say that the square on the left side top had a small red and green border or there was a red band horizontally and Defendant’s carton if examined from close quarters, showed these feature. Viewed as a whole, one can see that the words Kellogg’s, and AIMS are prominently displayed on each. Therefore there can be no confusion, prima facie.
In the case, the Court also deliberated upon the principle of failing memory of a customer, the Court made reference to the Halsbury’s Laws of England (4th Ed.) (Vol. 48, para 139) which says that- the Tribunal must bear in mind that the marks will not normally be seen side by side and guard against the danger that a person seeing the new mark may think that it is the same as one he has seen before, or even that it is a new or associated mark of the proprietor of the formal mark. However, the doctrine of imperfect recollection must not been pressed too far.