With the advent of novel methods of commercializing a brand,
unconventional aspects like aesthetics and look and feel of a
product have become important in creating segmentation in the
market. The interplay of various intellectual property rights
associated with a product have raised questions on the ambit of
protect-ability of such features individually and in combination
with other features, and the Courts in India have time and again
expanded their interpretation in relation to the same. One such
arena is the protect-ability of the elements of a product which
create an image or appearance of a product in the minds of a
consumer, including but not limited to appearance, shape, design
and packaging, together acting as source-identifier for such
product. For e.g. the shape of a shampoo bottle, ornamental
features of a mobile phone etc. In common parlance, such composite
image of a product is denoted as "trade-dress".
Indian Law on "Trade Dress"
Indian law does not recognize the concept of trade dress
specifically unlike the United States where the concept of trade
dress has been provided recognition under the Lanham Act, 1946.
However, Section 2(1)(m) of the Trade Marks Act, 1999
("Act") defines a "mark" to
include a device, brand, heading, label, ticket, name, signature,
word, letter, numeral, shape of goods, packaging or combination of
colors or any combination thereof and therefore it can be construed
that, the Act indirectly provides for the protection of trade-dress
to include shape, packaging or combination of colors or any
Indian courts, considering the growing importance of trade dress
of a product as a source identifier, have afforded protection to
trade dress. Recently, the Hon'ble High Court of Delhi in
Devagiri Farms Private Limited v. Mr. Sanjay Kapur &
Another (2016(65)PTC349(Del) elaborated on various legal
principles which are to be kept in mind while addressing a trade
dress infringement issue.
Facts of Devagiri Farms Private Limited's case
The respondents Sanjay Kapur and Naina Kapur sell tea under the
brand name "San-cha" for over 30 years, which they pack
in a soft paper packet shaped as a rectangular cuboid the package
being slipped into a fabric sleeve and tied at the mouth by a
traditional drawstring/dori. The appellant Devagiri Farms sells tea
under the trademark BAGAN. The grievance is to the fabric sleeve(s)
used by the appellant. An ad interim injunction has been granted in
favour of Kapurs and against the appellant. The counsel for the
appellants had contended mainly on the grounds that the packing
that the Kapurs seek to restrain is generic and has no distinctive
value qua its products; (ii) there are various distinguishing
factors in the style and get up of the two brands and hence the
consumers are able to distinguish the same, Further, it was urged
that pouches of the defendant bear the label 'Bagan Fresh'
in a very conspicuous manner dispelling any apprehension of any
customer or consumer being deceived. They further argued that logo
of both the parties displayed on the packages differ and there is a
marked difference in colour scheme of both the brands.
The court put to rest the case by upholding the grant of
injunction by the single judge while inter alia observing that (i)
Firstly "It is the overall get up and similarity which has
to be seen and not the minor variations because it is similarity
which strikes and not the dissimilarities which distinguish when an
ordinary person recollects an object seen in the past"; (ii)
Secondly, in response to the appellant's argument that logo of
both the parties displayed on the packages differ and there is a
marked difference in colour scheme of both the brands, the court
observed that "There is no case law cited, and we know of none
that merely because a trademark is displayed on the packaging
material, notwithstanding a striking similarity in the packaging
material there would be no likelihood of deception whilst it may be
true that in issues concerning trade dress the Courts have
considered the display of a trademark, but it is only one of the
various factors put in the weighing basket. "
With the rising competitiveness, trade dress of a product can be
an important instrument to tap markets and provide further
distinctiveness to a product. This judgment can be seen as
providing a precedential value and paving a way for wider
protection in trade dress infringement cases.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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