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as to why there were such similarities with the plaintiffs trade dress in their products trade dress. This shows the dishonest adoption and the defendant’s were accordingly injuncted.
4. Trade Dress and Deceptive Similarity In order to evaluate deceptive similarity of trade dress, the trade dress has to be compared as a whole a what is to be seen is how a normal consumer with imperfect discerning ability will respond to the trade dress of a rival trader who is a second entrant. It is possible that trade dress is deceptively similar and the trademark is totally different and vice versa i.e. trademark is identical and trade dress is totally different. The courts will have to evaluate as to whether average consumers will be deceived or confused. (a) Deceptive Similarity and Injunctions In case trade dress of defendant is held to be deceptively similar to that of the plaintiff injunction will be granted in favour of the plaintiff. The below mentioned cases throw light as to how the deceptive similarity of trade dress is perceived in India and in what cases injunction is granted and in what cases injunction is refused. (i) Injunction Granted where Trade Dress of Defendant Held to be Deceptively Similar Where the trade dress of the defendant is held to be deceptively similar to that of the plaintiff in a suit of passing off, the defendant is restrained from passing off his goods and services as those of the plaintiff. The Delhi High Court in the Colgate Palmolive Co. Case 198 extended the passing off action to violation of trade dress. The court after examining the two packages, concluded that even though the trademarks used by the two parties was different, the trade dress used by the defendant was deceptively similar to that of the plaintiff and restrained the defendant from copying the trade dress. The court observed: “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 get-up, it amounts to passing off’. In the Ruston & Hornby Ltd Case 199 the Supreme Court observed: it very often happens that although the defendant is not using the trademark of the plaintiff, the get-up of the defendant’s goods may be so much like the plaintiffs that a clear case of passing off would be proved... ” In the Frito-Lav India & Ors Case 2 00 a decree of permanent
198 Colgate Palmolive Co. v. Anchor Health & Beauty Care Pvt. Ltd 2003 (27) PTC 478 (Del). 199 Ruston & Hornby Ltd v. Zamindara Engineering Co. Ltd AIR 1979 SC 1649. 200 Frito-Lav India & Ors v. Guru Prasad Enterprises 2004 (29) PTC 537 (Del).
injunction was passed against the defendant’s from using the packing labels under the trademark “Mannka Aloo Bhujia”, “Mannka Navrattan Mix” and “Mannka Moong Dal” packaging which is deceptively similar to the plaintiffs’ “Lehar Aloo Bhujia”, “Lehar Navrattan Mix” and “Lahar Moong Dal” packaging and from so doing any other act as may constitute confusion and deception, resulting in passing off. In the Panacea Biotec Ltd Case 2 01 the High Court of Delhi concluded on the basis of
evidence that “the layout, design, get-up, colour combination and artistic work of the defendants’ cartons/packaging/blister strips is so deceptively similar that it is difficult to locate dissimilarities at a glance.” Injunction was therefore granted to the plaintiff. In the Raiendra Sahoo Case 202 in a suit seeking injunction for passing off, based upon unregistered trademark the plaintiff was able to prove that the wrappers and labels used on the packets of beedis were deceptively similar to those used by the plaintiff and a decree for injunction was passed. In the Richardson Vicks Case 203 the plaintiff was registered proprietor of the label mark containing the words “Vicks Action 500 ”. The plaintiff was marketing the product in a foil strip packing having a distinctive design, layout and colour scheme. The defendant was a later entrant who started using on their product the trademark “Power 500” and also imitated the lay out, colour scheme and get up. The Delhi High Court granted temporary injunction against the defendant. In the United Distillers Case 204 the court held that the trade dress used by the defendants has similarity with the trade dress of the plaintiff. (ii) Injunction Refused where Trade Dress of Defendant Held not to be Deceptively Similar If there is no deceptive similarity between the trade dress of the plaintiff and the defendant, injunction is not granted. In the United Breweries Ltd Case 205 the trademark “Black Label” was registered by the plaintiff for beer which was sold in West Bengal only. The defendant registered the word “Hercules ” for the same product and used the label “Hercules Black Label Super strong Beer ” for several years. Injunction was refused since the label was held to be not deceptively similar to that of the plaintiff.
201 Panacea Biotec Ltd v. El prags Pharma 2002 (24) PTC 385 (Del). 202 Raiendra Sahoo v. Ganeswar Swain AIR 1987 Orissa 156. 203 Richardson Vicks v. Medico Laboratories (1985) 28 Delhi LT 166. 204 Supra n. 197. 205 United Breweries Ltd v. Khodavs Brewing & Distilling Industries 2003 (25) PTC 130 (Kant).
the Colgate Palmolive Company & Another Case 2 1 1 it was held that the words “Colgate” and “Anchor ” are distinct and have not an iota of similarities in look and sound. This is why the ingredients of trade dress, get-up, colour combination, lay out of the container or packing acquire significance and relevance for determining the offence of passing off. Similarly in the Three-N-Products Pvt. Ltd. Case 212 the plaintiffs were proprietors of the trademark “Ayur” in respect of cosmetics whereas the defendant’s legally purchased the trademark “Ayush” for ayurvedic products. The shape of bottles, colour schemes of labels, lettering style and get-up were different. Injunction was therefore refused. (c) Trade Dress not Deceptively Similar but Trademark Identical In the Rawel Industries (P) Ltd Case 213 the court held that no doubt there is a difference in the shade of the colours used and the size of the cartons of the defendant but the word “Duke” adopted by the defendant is the same as used by the plaintiffs. There is therefore reasonable probability of the defendant’s passing off their goods as that of the plaintiff. (d) Deceptively Similar Trade Dress and Deceptively Similar Trademark In the Maharashtra Raiva Sahakari Doodh Mahasangh Ltd Case 214 it was held that the bare look at the two pouches clearly shows that the milk pouch of the defendant’s is deceptively similar to that of the plaintiffs and there is every likelihood of public being confused or mislead into the belief that it is the product of the plaintiff. The trademark used by the plaintiffs on the pouches of its milk product viz., “Mahanand Cow Milk (Homogenised and Pasteurised)” has been deceptively copied by the defendant’s on their milk pouches bearing the mark “Maa-Anand Cow Milk (Homogenised and Pasteurised)”. The defendant’s have copied the goodwill and reputation of the plaintiff and tried to pass off their goods as that of the plaintiff and were restrained. In the Amar Nath Chakrobortv Case^ n 1 rthe defendant was held to be using a deceptively similar trademark “Maj” and deceptively similar label to sell buckets the plaintiff was proprietor of trademark “Taj”. The defendant was restrained from passing off his goods as that of the plaintiff. In the United Decoratives Pvt. Ltd Case 216 the court held that a comparison of two labels shows that the defendant having adopted the writing “FEX ” in the same size of letters as the plaintiffs “FIX”. The labels are also deceptively similar as the defendants have copied the device of globe in similar size and style. The defendants were held guilty of 211 Supra n. 198. 212 Three-N-Products Pvt. Ltd, v. Amrutha Trading Corporation 2003 (27) PTC (Ker) (DB). 213 Rawel Industries (PI Ltd v. Duke Enterprises & Others PTC (Suppl) (2) 212 (Del). 214 The Maharashtra Raiva Sahakari Doodh Mahasangh Ltd v. Ideal Vitamin Food Products Ltd 1999 PTC
215 Amar(19)402. Nath Chakrobortv v. Dutta Bucket Industries and Ors 2005 (31) PTC 415 Cal (DB). 216 United Decoratives Pvt. Ltd v. Prem Traders 1995 PTC 107.
infringement of copyright and passing off. In the Raiamani Fabrics & Anr Case 2 17 the court restrained the defendant from passing off their towels as and for the plaintiffs towels by use of the trademark “Moti Label” or any other label similar to the plaintiffs “Mothi Label” in the colour scheme, get-up and layout or in any manner so as to confuse and deceive the purchaser. In the Horlicks Limited & Ors Case 218 it was held that the use of the trademark “Horlik” and label by the defendant in respect of coffee is likely to cause confusion and deception. The marks are semantically similar except the letter “c”. The plaintiff has been able to establish passing off. In the Sai Sai Agencies Pvt. Ltd Case 219 the plaintiff sought restraint order against the defendant from using the trademark “Mathurag Ghee” which was deceptively similar to the plaintiffs mark “Mathura Ghee” along with deceptively similar pictoral device. The court held that confusion and deception is inevitable. (e) Deceptively Similar Trade Press and Descriptive Trademark Where the plaintiffs mark consists of a purely descriptive word it will be difficult to make out a case of passing off by use of such word alone. But if the defendant in addition to using the descriptive word used by the plaintiff also used the plaintiffs colour scheme, get-up etc., it may be easier to establish passing off. 220
5. Combination of Features of Trade Dress In the Reliance Industries Ltd. Case 221 the trademark “Sonal” inside an oval device was represented by the defendants in the same manner and script as the trademark “Vimal” inside an oval by the plaintiff. Interim injunction was granted. In the Jolen International Case 222 injunction was granted in favour of the plaintiff who was the owner of the trademark “Cosmo” which was written in a particular style and distinct script in respect of toothpaste. The defendant was manufacturing toothpaste under the trademark “Cosco” in similar type of packaging, get-up and colour combination. In the Habibur Rahman Case 2 23 the defendant’s sold their products Zarda in pouches which were deceptively similar to that of the plaintiffs. It was held that there is a visual similarity in the packing and get-up. The defendant was injuncted. In the Murari Lai Harish Chander Jaiswal Case 224 the defendant’s were using similar get-up as that of the
217 Raiamani Fabrics & Anr v. Mothi Textiles 2006 (33) PTC 694 (Mad) (DB). 218 Horlicks Limited & Ors v. Kartick Sadhukan 2002 (25) PTC 126 (Del). 219 Sai Sai Agencies Pvt. Ltd v. Chintala Rama Rao 1997 PTC (17) 610. 220 Sunra n. 16 p.774. 221 Supra n. 207. 222 Jolen International v. Divan Industrial Chemicals 2002 (25) PTC 24. 223 Habibur Rahman v. Kannaui Zarda Products 1996 PTC (16) 133. 224 Murari Lai Harish Chander Jaiswal v. Rai Zarda Works 1996 PTC (16) 157.
action of the defendant is clearly dishonest and malafide and is bound to cause confusion and deception in the minds of the consumers/purchasers. By using the methodology the defendants’ intention is to pass off their goods as the goods of the plaintiffs’. Decree was therefore ordered accordingly. In the G.M. Modular Pvt Ltd Case 2 29 it was held that the test for determining whether one trademark is deceptively similar to another is based on the likelihood of confusion or deception arising in the minds of the consumer. Virtually comparing the label “GM” of the plaintiff with the label “TM” of the defendant, one finds that they are prone to be confused for the other. The background colour red is the same. Therefore passing off is made out. It was however held that the plaintiffs at that stage are not entitled to any injunction with regard to the trade dress of box/carton. The crucial test to be applied for judging an infringement action or a passing off action is as to whether the customers of average intelligence and imperfect recollection are likely to be confused on the first
- impression. • 230 (b) Confusion and Deception and Class of Consumers In the Colgate Palmolive Co. Case 2 31 the court observed that the plaintiff has succeeded prima facie in showing from the look of trade dress of the two articles, one manufactured by the plaintiff and another by the defendant from the point of view of not only unwary, illiterate customer/servants of the household but semi-literate also of confusion and deception as the trademarks “Colgate” and “Anchor” are written in English language which cannot be distinguished by ordinary customer of a country where bare literacy level is abysmally low. 7. Trade Dress to be Compared as a Whole The test is not that the two names/logos/scripts should be jurally examined in juxtaposition but it is enough if the two are viewed and the question is posed, on the mental recollection, whether there is a likelihood of deception or confusion. In the Kishore Zarda Factory (PI Ltd. & Ors Case 233 it was held that the two marks have to be compared as a whole and greater regard has to be paid to the features that are common. In the present case the not only the colour scheme, even the writing style and the selection and setting of numericals are similar. This has been done by the defendants to pass of their goods as that of the plaintiff and hence they have to be injuncted.
229 G.M. Modular Pvt Ltd v. TM Marketing flndial & Others 2007 (35) PTC 406 (Del). 230 Raikamal Metal Industries v. Mahadev Steel Products 2001 PTC 510 (Del). 231 Supra n. 198. 232 Rainforest CafS. Inc v. Rainforest Caf6 & Ors 2001 PTC 353 (Del). 233 Supra n. 191
In the Keilog Company Case 234 the court held that in a passing off matter in determining deceptive similarity of get-up, the whole thing must be seen in entirety and not in parts. In the circumstances, it was held that similarity of get-up or trade dress is not tenable. In the Richardson Vicks Inc & Another Case 233 it was held that keeping in view the fact that the plaintiffs are the registered proprietors of the trademark “Vicks Action 500” and having advertised “ Double Power Vicks Action 500 ” and the defendants having started using the trademark “Power 555” in identical strips, design, get-up, layout and colour scheme, it is a clear case of passing off as the two marks have to be compared as a whole.
8. Passing off where Minor Changes in the Trade Dress In the Sidhnur Sat-Isabgol Factory Case the defendant had copied each and every essential feature of the plaintiffs distinctive carton and had done a minor change in as much as they had replaced the device of “Ganesh” with the device of “Telephone ”. They could not escape the mischief of passing off. In the Amar Suitings Case 237 the plaintiff was the proprietor of the trademark “Amartex” with the logo of galloping horse for suiting and the defendant adopted deceptively similar trademark “Amtex” with similar logo for same goods. The court injuncted the defendant as the overall impression remained the same. In the Wockhardt Ltd Case 238 the defendant’s were restrained as the cartons were similar. In the Sir Shadi Lai Enterprises Ltd Case 2 39 the court held that the defendant was selling identical products i.e. alcoholic drinks under identical mark “Chetak” and deceptively similar label and had attempted to pass off their goods as that of the plaintiff. The so called additional material in the form of dimly shaped human figure mounted on a horse and sprinkling star besides the letter “Chetak ” makes no difference for the unwary purchaser of average intelligence, who is not expected to keep the goods manufactured by the plaintiff and the defendant side by side to decide which product he intends to buy. 9. Trade Dress Common to Trade In the Samsonite Corporation Case 2 40 the court held that the colour, shape and other features referred to by the plaintiffs constituting their trade dress are quite common to trade. The plaintiffs have not established any proprietary interest in the trade dress or the colour which is capable of being acquired so as to make it a ground of passing off. In the 234 Supra n. 210. 235 Supra n. 203. 236 Sidhpur Sat-Isabgol Factory v. Delhi Sat-Isabgol Industries 2001 PTC 648 (Del). 237 Amar Suitings v Amar Syntax 2000 PTC 77 (P & H). 238 Wockhardt Ltd v. Dua Pharmaceuticals 1998 (18) PTC 135. 239 Sir Shadi Lai Enterprises Ltd v. Kesar Enterprises Limited 1998 PTC (18) 309. 240 Samsonite Corporation v. Viiav Sales 1998 PTC (18) 372.
to the trademark “Indrol ” with similar combination and accordingly the defendant was restrained. In the National Garments. Kaloor, Cochin Case 246 the defendant was restrained from passing off its goods as that of the plaintiff and using the words “National Garments” and the yellow colour get-up in the box used in connection with the sale of goods manufactured by the defendants. In the Anglo-Dutch Paint. Colour and Varnish Works Pvt. Ltd Case 247 it was held the combination of violet background and a large circle with white background and grey lettering is distinct combination of colours and there is no legal bar to a person acquiring a trademark in such combination of colours for his containers. In the Virumal Parveen Kumar Case the plaintiff was the proprietor of the trademark “ 555 ” along with the device of swan with distinctive colour combination for buttons, safety pins, hooks, eye lets, fastners etc. The defendant started selling goods under deceptively similar mark “Asian 555 ” with identical colour combination, get-up and arrangement of the carton. It was held that confusion and deception is inevitable and restrained the defendant. In the Colgate Palmolive Co. Case 2 49 the court made the following observations: “May be, no party can have monopoly over a particular colour, but if there is substantial reproduction of the colour combination in similar order either on the container or packing which over a period has been imprinted upon the minds of customers it certainly is liable to cause not only confusion but also dilution of distinctiveness of colour combination. ” (ii) Injunction Refused In the Kuber Khaini Pvt Ltd Case 250 it was held that after considering all the facts and the get-up for “Kuber Khaini” of the plaintiff and “Chakor Khaini” of the defendant except for the colour combination, the name and get-up are altogether different. Therefore this is not a fit case for granting injunction. (b) Trade Dress and Colour Scheme Where colour scheme is exclusively identified and associated with the plaintiffs the courts in India do not hesitate to grant injunction. The below mentioned cases throw light as to how colour scheme is granted protection in India,
246 National Garments. Kaloor. Cochin v. National Apparels. Emakulam. Cochin 1990 PTC 98. 247 Angl-Dutch Paint. Colour and Varnish Works Pvt. Ltd v. Indian Trading House PTC (Suppl) (2) 585
248 Virumal(Del). Parveen Kumar v. Gokal Chand Hari Chand 2002 (25) PTC 672 (Del). 249 Supra n. 198. 250 Kuber Khaini Pvt Ltd v. Prabhoolal Ramratan Das Pvt. Ltd and Another 2002 (24) PTC 135 (Cal).
(i) Injunction Granted In the Vraiilal Manilal & Co Case 2 51 the plaintiffs registered trademark consisted of the numeral “22” on a label with a distinctive colour scheme and get-up. Defendants mark consisted of the numeral “ 12 ” on a label closely similar to the plaintiffs label in colour scheme and get-up. Interim injunction was granted. In the Sri Balamurugan Modem Rice Mill Case 2 52 the defendant was using similar colour scheme as that of the plaintiff. It was held that the plaintiff is prior user and had made a prima facie case. Interim injunction was granted. In the S.V.S. Oil Mills Case 253 the defendant ’s in earlier litigation between the parties had been restrained from using the trademark “SVS”. The defendant had changed their mark to “SVN” but adopted the very colour scheme of the plaintiff without giving any explanation as to why they changed the colour scheme and get up of their earlier label similar to that of the plaintiff. The defendants were accordingly injuncted. In the Vicco Laboratories Case 2 54 the defendants had copied the colour scheme and get-up
of the plaintiffs’ carton and tube for vanishing cream although the trademarks “Vicco” and “Cosmo” were different, injunction was granted. In the Camlin Private Ltd Case 2 55 although the trademarks were different, but the defendant had copied the get-up and colour scheme of the plaintiffs pencil and interim injunction had been granted. In the M/s Richardson Vicks Inc. & Anr Case 2 56 the plaintiffs label consisted of the trademark “Vicks Vaporub” in a particular colour scheme and get-up. Defendants label consisted of the trademark “Vikas’s Pacorub” in a similar colour scheme and get-up. Interim injunction was granted. In the Dharam Chand Ghambier Case 2 57 the plaintiffs trademark
in respect of sweetmeats consisted of a logo of “GP” in a distinctive get-up, colour combination and style of writing. The defendants used the logo “CP” along with similar get-up for similar goods. Injunction was granted. In the J & P Coats Ltd and another Case 2 58 it was held that the two devices, get-up and colour scheme are deceptively similar deception and confusion will arise and accordingly the defendants were restrained. In the Pernod Ricard S.A. France & Anr Case CQthe plaintiff was proprietor of trademarks “Imperial Blue” and “Royal Stag”. The defendants adopted the trademark “Imperial
251 Supra n. 331. 252 Sri Balamurugan Modem Rice Mill v. Subbulakshmi Modem Rice Mill & Anr 2005 (31) PTC 546 (Mad) (DB). 253 S.V.S. Oil Mills v. S.V.N. Agro-refineries & Anr 2004 (29) PTC 548 (Mad) (DB). 254 Supra n. 206. 255 Infra n. 339. 256 M/s Richardson Vicks Inc. & Anr v. M/s Vikas Pharmaceuticals 1990 PTC 16. 257 Dharam Chand Ghambier v. Milan Confectionery 2000 PTC 511 (Del). 258 J &P Coats Ltd and another v. Gian and Co and another 1983 PTC 127. 259 Pernod Ricard S.A. Prance & Anr v. Rhizome Distilleries Pvt. Ltd. & Ors 2009 (39) PTC 367 (Del).
and design under the Design Act, 2000. The below mentioned judgements will assist jurists, lawyers and students in understanding protection given to design and shape of goods in India. (a) Design, Pattern and External Configuration of Goods Where there is proof that the plaintiffs goods have acquired reputation in connection with goods of a distinctive shape, injunction will be granted. In the Camlin Private Ltd Case 265 the defendants adopted pencils in similar appearance, colour scheme and get-up. Interim injunction was granted. In the MRF Ltd. Case 2 66 the defendant copied the thread pattern of the plaintiffs tyres. It was held that the similarity of the thread patterns may raise a presumption of common origin or close business association between the plaintiff and the defendant. The defendant’s contention that thread pattern is not a trademark cannot be accepted for the purpose of injunction application. Similarly the non registration of the thread pattern either under the Design Act or under the Patent Act has to be considered at preliminary stage. The defendant was restrained from passing off its goods as that of the plaintiffs. In the Hafizulla Case 267 it was held that mere imitation of the goods is no offence unless there is infringement of patent or copyright or an attempt to pass off goods of another trader by using false trademark or description likely to deceive purchasers. (b) Design/Shape and Passing off Passing off action is available in case of a design provided the ingredients of passing off are established. The below mentioned cases will assist jurists, lawyers and students in understanding how the law of passing off is applied in granting or refusing protection in cases pertaining to design and shape of goods. (i) Injunction Granted for Imitating Design/Shape In the Smt. Monika Chawla Case 2 68 the plaintiff was the proprietor of the design of baby bouncer and filed a suit for permanent injunction for passing off and pirating the design of baby bouncer against the defendant. The defendant was injuncted. In the Smithkline Beecham Case 269 it was held that a passing off action is maintainable in case Of a design if the necessary ingredients are established. In the Saltzer Electronics Ltd Case the Madras High Court granted injunction restraining the defendant from infringing the
265 Infra n. 339. 266 MRF Ltd, v. Metro Tyres 1990 PTC 101. 267 Hafizulla v. Papa AIR 1933 Nag 344. 268 Supra n. 192. 269 Smithkline Beecham v. G.D. Rathore 2002 (25) PTC 243 (Del). 270 Saltzer Electronics Ltd v. Zenith Mould and Tools Pvt. Ltd 1998 PTC 18 (DB) 25.
registered design of the plaintiff pertaining to rotary switches containing contact stage and covered plate as well as passing off their goods as that of the plaintiffs. In the Vikas Jain Case 2 71 the plaintiff filed suit for infringement of registered design in respect of toy scooter as well as passing off. It was held that the defendant’s design appeared to be an obvious imitation of the plaintiffs design even in respect of measurements and colour. Interim injunction was granted. (ii) Injunction Refused for Imitating Design/Shape Copying the design or shape of article by itself does not amount to passing off. The plaintiff will have to show misrepresentation by defendant suggesting that the goods he is selling are those of the plaintiff. In the Kemp and Company & Ors Case 2 72 interim injunction was refused. In the Smithkline Beecham Pic & Ors Case 273 the plaintiff filed a consolidated suit for infringement of its design for the tooth brush sold under the trademark “Acqua Flex” and for passing off action restraining the defendant from passing off their business and goods as that of the plaintiff. It was held that the plaintiffs have not placed on record any evidence of use, reputation or goodwill in the “S” bend feature of their tooth brush. Accordingly the court dismissed the injunction application. In the Dart Industries Inc & Anr Case 274 A.K. Sikri, J while refusing an injunction raised an important question. He observed that there would be another interesting question for determination if the design is no more protected under the Design Act and is now in public domain, whether passing off action will be maintainable. He did not give any finding on this question. (c) Design/Shape and Functionality In the Smithkline Beecham Pic Case 275 the patents taken and the advertisements of the plaintiff showed that the design of the toothbrush which was “S” shaped with zig-zag folds was purely functional. The plaintiff had not established any goodwill and reputation. Interim injunction was refused. (d) Overlap between Shape Marks under the Trade Marks Act, 1999 and Design under the Design Act, 2000 The area of law that is likely to provide an interesting debate is whether shape of a product is protectable as a design under the Design Act, 2000 or trademark under the Trade Marks Act, 1999. The definition of “Design” under the Design Act, 2000 excludes
271 Vikas Jain v. Aftab Ahmad and Others 2008 (37) PTC 288 (Del). 272 Kemp and Company & Ors v. Prima Plastics Ltd 2000 PTC 96 (Bom). 273 Smithkline Beecham Pic & Ors v. Hindustan Lever Limited & Ors 2000 PTC 83 (Del). 274 Dart Industries Inc & Anr v. Techno Plast & Others 2007 (35) PTC 129 (Del). 275 Supra n. 273.
12. Trade Dress and Copyright There is an overlap between protection granted to trade dress under the Copyright Act, 1957 and passing off under Trade Marks Act, 1999. It is a usual practice for plaintiff to bring consolidated action for infringement of copyright and passing off to protect his trade dress. The below mentioned judgements will assist jurists, lawyers and students in understanding protection given to trade dress under the Copyright Act, 1957 and the Trade Marks Act, 1999. (a) Overlap between Infringement of Copyright and Passing Off of Trade Dress In many cases the plaintiffs bring a consolidated suit for infringement of copyright in artistic work and passing off of trade dress and get-up where the defendants use deceptively similar get-up or trade dress in their labels or cartons as in the Pidilite Industries Ltd Case 279 and the Glaxo Smith Kline Pharmaceuticals Ltd Case 280 where the defendants were held to be infringing the copyright of the plaintiff in its artistic work and passing off their goods as that of the plaintiffs.. In the Brooke Bond India Limited. Calcutta Case it was held that the averments made by the plaintiff about the defendant introducing similar or near identical plastic pouches like that of the plaintiffs in somewhat similar get-up, design and colour scheme having not been controverted by the defendant and there being close resemblance of the packets, the plaintiff has been able to establish infringement of copyright and passing off. In the Nova Ball Bearing Industries Case the court observed that a comparison of two cartons “Nova” and “Jani” would reveal that two cartons are exactly similar in size, colour scheme and get-up, the only difference is that the trademark of the defendant is written at 5 places and that of the plaintiff is written in 3 places. The two cartons bear such a close resemblance that they can easily confuse and deceive a customer. The plaintiffs are actually using the artistic carton entitled “Nova” since 1971 and the defendants were second comers. It was held that prima facie the defendants seem to be guilty both of infringement of copyright and passing off. In the Kalvani Covering. Chennai Case 283 the plaintiff was the registered proprietor of the trademark “Kalyani Covering ” in respect of gold covering ornaments and its artistic style and logo was also registered under Copyright Act. Defendant started selling gold covering ornaments and jewellery bearing
279 Pidilite Industries Ltd v. S.M. Associates & Ors 2004 (28) PTC 193 (Bom). 280 Glaxo Smith Kline Pharmaceuticals Ltd v. Biovet Formulations 2004 (28) PTC 538 (Del). 281 Brooke Bond India Limited. Calcutta v. Sona Spices Private Limited. Chandigarh 1991 PTC 13. 282 Nova Ball Bearing Industries v. Mico Ball Bearing PTC (Suppl) (1) 497 (Del). 283 Kalvani Covering. Chennai v. Kalvana Covering. Ramanathapuram PTC (Suppl) (2) 164 (Mad).
trademark “Kalyana Covering” and also imitated artistic, style and logo. The court held that there is deceptive similarity amounting to infringement of copyright and passing off. (b) Difference between the Trade Mark Act, 1999 and Copyright Act, 1957 In the Prince Rubber Industries Case 284 which was a case under the old Trade & Merchandise Marks Act, 1958 the court held that Copyright Act and the Trade & Merchandise Marks Act, 1957 are two distinct statutes envisaging distinct rights and liabilities. While copyright can be claimed in original literary, dramatic, artistic work etc under the Trade and Merchandise Marks Act, the registered proprietor of a trademark is entitled to exclusive user of the distinctive mark. As the trademark complained of i.e. device on the lower half portrait of a dancing girl, wearing a payal in each of the two ankles, the plaintiff has a right prima facie to ask for a restraint order against the defendant even if the defendant has a copyright of its artistic work. This decision although passed under the erstwhile Trade and Merchandise Marks Act, 1957 applies to the new Trade Marks Act, 1999.
- Trade Dress of Foreign Manufacturer The courts in India have been very proactive in protecting the trademarks and trade dress of foreign manufacturers. In the Centron Industrial Alliance Ltd Case 285 trans-boarder reputation of a foreign company in its get-up was protected. The defendant in this case attempted to pass off his goods as that of the plaintiff and was injuncted. The court held that there is a blatant and flagrant attempt to imitate the plaintiffs goods and the adoption of the red numeral “ 7 ” and the clock at 7 in the “7-Up” blades with the identical colour and get-up cannot be allowed merely because the word “Up” has been put instead of “O”. The other product “7 Baje” is still a more blatant imitation and a clearer attempt to pass off the blade presumably as a Hindi version of the famous product “ 7 O’ Clock” trademark of the plaintiff. In the M/s P.C. Mallapa & Co Case 2 86 it was held that the respondent’s logo “M” is a well known and famous logo and the courts have recognised the existence of trans-boarder reputation. It is the case of the respondent that they have entered India in 1983 and are dealing in fast foods. The logo of the defendant is identical to that of the plaintiff. The defendant was injuncted even though they were in the business of manufacturing sanitary wares. In the Carlton and United Breweries Ltd Case 2 87 it was held that the plaintiff is a
284 Prince Rubber Industries v. K.S. Rubber Industries 1983 PTC 34. 285 Centron Industrial Alliance Ltd v. Gillette U.K. Ltd 1998 PTC (18)) (DB) 288. 286 M/s P.C. Mallapa & Co v. McDonald’s Corporation 1999 PTC 9 (Kam). 287 Carlton and United Breweries Ltd v. Harmohan Singh Chandhok & Ors 2005 (31) PTC 363 (Del).
16. Trade Dress and Pharmaceutical Products Trade dress of pharmaceutical products need to be protected assiduously as medicines are not sweets but poises and any confusion or deception can not only be disastrous but also life threatening. The below mentioned judgements will assist jurists, lawyers and students in understanding protection given to trade dress of pharmaceutical products. (a) Injunction Granted Pharmaceutical products need extra protection as any confusion and deception between the products can be disastrous and life threatening and more so in a country like India, where majority of population is illiterate or semi-literate. In the Cadila Healthcare Case 294 the Supreme Court of India held that pharmaceutical products will be purchased by both villagers and townsfolk. The purchaser in India cannot be equated with a purchaser of goods in England. Any confusion and/or deception can not only be disastrous but also life threatening. In the Chetrapal Sharma Case the plaintiff had been selling certain medicine under the trademark “Sudh Sindhu” in a particular get-up. The defendant commenced selling a similar medicine under the trademark “Piyush Sindhu” in a deceptively similar get-up. Injunction was granted. In the Upendranath Bramachari Case 296 the plaintiff had used the trademark “Urea Stibamine” in a particular get-up for medicines for a number of years. Defendants commenced using the same name and get- up for identical goods. Injunction was granted. In the Ranbaxv Laboratories Limited Case 297 it was held that the defendant’s label is a slavish copy of the plaintiffs label in respect of its colour scheme, arrangement of features, get-up and layout. Hence, an injunction was granted. In the Panacea Biotec Ltd Case 298 it was held that the defendant ’s have been using the offending trademark “Nimesulide” and packing cartons/packing strips which are identical/deceptively similar to that of the plaintiffs copyright and are thus passing off their medicines as that of the plaintiffs. In the Haw Par Bros. International Ltd Case 2 99
the defendant was restrained from using in relation to pain balm or any other medicinal preparation the trademark “Tiger Balm”, the word “Tiger” in English or Chinese characters and the trade dress being the device of leaping tiger and the cartons, labels, containers, and sachets which are deceptively similar to the plaintiffs products.
294 Cadila Healthcare v. Cadila Pharmaceuticals 2001 PTC 300 (SC). 295 Chetrapal Sharma v. Jaeannath Das AIR 1922 All 178 (DB). 296 Upendranath Bramachari v. Union Drug AIR 1926 Cal 537. 297 Ranbaxv Laboratories Limited v. AKME Drug & Pharmaceuticals & Anr 2007 (34) PTC 573 (Del). 298 Supra n. 201. 299 Haw Par Bros. International Ltd v. Tiger Balm Co. (Pt Ltd & Ors 1996 PTC (16) (DB) 311.
In the Win Medicare Pvt. Ltd Case 300 it was held that comparison of two bottles clearly shows that the defendant has substantially copied the bottle of the plaintiff and has adopted and identical and/or substantially similar get-up, layout and colour combination on its Povidone Iodine Solution Bottle labels which would amount to infringement of copyright and the conduct of the defendant would amount to passing off. (b) Injunction Refused In the Cadila Healthcare Ltd Case 301 the court was of the view that neither the mark “Superdac” of the respondent is deceptively similar to the mark “Spardac” of the plaintiff and even the appearance, shape and size of the two medicines is quite different and the medicine of the respondent cannot be passed off as that of the appellant.
17. Trade Dress and Trade Name If the trade name of the plaintiff is written on a distinctive trade dress or get-up in a unique manner by the plaintiff the defendant will not be allowed to usurp the same. The below mentioned judgements will assist jurists, lawyers and students in understanding protection given to trade dress and trade name in passing off matters. (a) Injunction Granted In the Helpage India Case 302 the plaintiff, a voluntary Non Government Organisation (NGO) filed a suit for permanent injunction, passing off and infringement of copyright against the defendant restraining the defendant form using the mark “Helpage and Childcare” and deceptively similar logo. It was held that the plaintiff received considerable donations and the defendant is trying to encash the reputation and goodwill of the plaintiff by use of deceptively similar trade name and logo. Decree was passed in favour of the plaintiff. (b) Injunction Refused In M/s Johnson & Johnson and Another Case 303 it was held that the packing of the Appellants shows the trade origin as that of “Johnsons” whereas that of the Respondents shows of “Christine Holden”. The colour scheme is different, lettering style is also different. In these circumstances temporary injunction was rightly refused by the single judge.
300 Win Medicare Pvt. Ltd v. K. Pharmaceuticals Works 2005 (31) PTC 660 (Del). 301 Cadila Healthcare Ltd v. Swiss Pharma Pvt Ltd 2002 (24) PTC 708 (Guj). 302 Hetease India v. Helpage & Childcare 2005 (31) PTC 673 (Del). 303 M/s Johnson & Johnson and Another v. Christine Holden India (P~) Ltd and Another 1988 PTC 39.
