What's in a shape of a bottle! It may be a common rhetoric but certainly worth a lot when the shape of bottles is considered distinctive and forms an intrinsic part of the goodwill and reputation. Lately, the shape of a bottle of Vodka, in a quia timet action raised a controversy with Gorbatschow Wodka KG (plaintiff)contending that the shape of its bottles of Vodka is distinctive and forms an intrinsic part of its goodwill and reputation and that John Distillers Limited (defendant) has invaded its intellectual property rights by adopting a deceptive variation of the shape of the bottles thereby leading to a substantial portion of the purchasing public to assume that the product of the defendant has emanated from or has some connection with the plaintiff. (Gorbatschow Wodka KG Vs. John Distilleries Limited Notice of Motion No 3463 of 2010 in Suit No 3046 of 2010; Bombay High Court). The plaintiff's prayer under the Notice of Motion was to restrain the defendant, pending the hearing and final disposal of the suit, from using the objectionable bottle and/or any other shape identical/deceptively similar to the plaintiff's shape of the bottle upon and in relation to its product/business whatsoever so as to pass off its goods as that of the plaintiff.
Under the Trade Marks Act 1999, the shape of goods is now statutorily recognized as being a constituent element of a trademark. Section 2(zb) of the Trade Marks Act, 1999, define the expression "trademark" to mean "a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others" and to include "shape of goods, their packaging and combination of colours". The legislature has therefore statutorily recognized that the shape in which goods are marketed, their packaging and combination of colours form part of what is described as the trade dress. A manufacturer who markets a product may assert the distinctive nature of the goods sold in terms of the unique shape through which the goods are offered for sale. Also in a number of judgments, the law has recognized the importance of the shape in which trader sells his goods. In Kemp and Company Vs Prima Plastics Ltd 2000 PTC (20) 96 (Bom) the court considered an action where the defendants were alleged to have infringed the registered design of a chair manufactured by the plaintiff and for passing off by the defendants by adopting a similar design shape and configuration. The court cited – "There may, indeed be cases where an article itself is shaped in an unusual way, not primarily for the purpose of giving some benefit in use or for any other practical purposes but capriciously in order purely to give the article a distinctive appearance characteristic of that particular manufacturer's goods. In such the manufacturer might be able, in the course of time, to establish that he has a reputation and goodwill in the distinctive appearance of the article itself, which will give him a cause of action in passing off if his goods were copied. In those circumstances, the putting of a copy on to the market with the distinctive feature or combination of features in question would amount to a misrepresentation that it emanated from the plaintiff.
Thus the test is whether the shape that has been adopted by the plaintiff is one, which is adopted capriciously, purely to give the article a distinctive appearance or characteristic of the goods. If that is so, the plaintiff may be able to establish that he has a reputation and goodwill in the distinctive appearance of the article itself, which could provide him a cause of action in passing off.
In the present case, the Court after perusal of the material on record observed that there are several circumstances, which must be equally placed in the balance by the Court for the purposes of injunctive relief.
First, the plaintiff has prima facie established both a trans-border reputation as well as a reputation in the market in India and the fact that the unique shape of the bottle is an important element in tracing the source of origin of the product to the plaintiff.
Second, the shape of goods and their packaging, under Trade Marks Act 1999, is statutorily recognized as a constituent element of a trademark as distinguishing the goods or services of a person with those of others.
Third, the defendant did not dispute the submission of the plaintiff that no other manufacturer either globally or in India has adopted the shape of the bottle of the plaintiff (except for the defendant).
Fourth, the shape adopted by the plaintiff is unique to the point of being capricious and also that the shape of the bottle, which the plaintiff has adopted has no functional relationship with the nature of the product or the quality required of the container in which Vodka has to be sold. Also the defendant has no plausible or bona fide explanation for adopting a shape, which is strikingly similar. The Court observed that prima facie a comparison of the shape of the bottle adopted by the defendant with the bottle of the plaintiff would show a striking similarity.
And fifth, the attempt of the defendant if it is allowed would result in diluting the distinctiveness and exclusivity of the mark of the plaintiff, which has an essential ingredient, the distinctive shape of the bottle in which Vodka is sold. This would only embolden other infringers to invade upon the proprietary rights of the plaintiff and would ultimately result in a destruction of the goodwill associated with the mark of the plaintiff.
The averment of the defendant that being owner of a design registration for the bottle under Designs Act, 2000 is of significance in the sense that the registration was granted only on the authority's satisfaction that there was no other identical or similar design, did not find favour with the Court for the reason that an existing Design registration does not impinge the right of the plaintiff to move an action for passing off. Section 27(2) of the Trade Marks Act 1999 provides that nothing in the Act shall be deemed to affect the right of action against any person for passing off goods or services. Section 27(2) is a statutory recognition of the principle that the remedy of passing off lies and is founded in common law.
The Court concluded by making absolute the terms of prayer in the Notice of Motion while saying that the plaintiff in the present circumstances has made out a strong prima facie case for grant of injunction and the Court would not be justified in being astute to presume that that the defendant would not succeed in doing what he has strained every nerve to do.
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