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Luthra & Luthra IP Balancing legal protection in India

An understanding of the relationship between trademark and design law is essential to protecting trade dress in India

The judiciary has long recognized trade product design that may not be registered golden colours, there are common use of dress or the get-up of goods, and has for trademark protection because evaluating scrolls, common use of ghosted letters for the traditionally provided protection from trade dress infringement claims requires purpose of writing the name of the whisky, unauthorized appropriation under the tort the court to focus on the claimant’s entire there is common stag/sambhar with antlers, action of passing off. This article analyzes selling image. In cases where passing off is thistles are to be found in both the labels, trade dress protection in India and how it claimed, it has been observed that a court scrolls being found both on the top and the interacts with Indian design law, as may take into consideration and compare lower part of both the labels. All these encapsulated by the Designs Act 2000. the competing trade dress in its entirety to similarities, as a whole, in my view, go to reach a prima facie view of whether there is show that the defendant wished to make its Trade dress and trademarks a likelihood of confusion (ie, shape of label a close approximation of the label of The concept of ‘trade dress’ is anchored in container, colour, printing and the interplay the plaintiff, as it possibly could. It only trademark law and has its origin in US law, of all those elements apart from the made colourable variations in the way the although it can also be traced back to the distinctive feature must be taken into golden scroll curved. In the case of the common law doctrine prohibiting unfair consideration – for example, see Smithkline plaintiff's scrolls, they curve upwards, and, competition. Trade dress (like a trademark) Beecham plc v Hindustan Lever Ltd (2000) therefore, the defendant's scrolls curve acts as a source identifier, albeit an PTC 83 Del). downwards. This is so far as the top part of unregistered one. Simply put, trade dress is Trade dress comparison is of the the label is concerned. Although the label an arrangement by which a particular utmost evidentiary value in proving used by the plaintiff is far more attractive to product can be distinguished on the market passing off. It is used to establish whether a the eye than the label of the defendant, by virtue of its packaging, colour, design or likelihood of confusion may take place, as nonetheless the similarities between the two schematic arrangement (see Wal-mart was done by the Delhi High Court in Stokley cannot be missed.” Stores Inc v Samara Bros Inc (2000) 529 Van Camp v Heinz India Pvt Ltd The definitive test for the use of trade US 205 (SC)). (MANU/DE/1202/2010, decided in dress to establish passing off in the clearest Under the Trademarks Act 1999 the CS(OS)514/2010 on May 31 2010), wherein possible terms is given in Colgate Palmolive shape of goods, packaging or combination the trade dress (ie, the packaging, get-up v Anchor (108 (2003) DLT 51; 2003 (27) PTC of colours or any combination thereof come and overall appearance of the competing 478 (Del)), wherein the judge stated: under the definition of a ‘mark’. A ‘package’ products – Gatorade and Glucon D-Isotonik “It is the overall impression that is further defined under the act as an y case, – along with similar sounding slogans) was customer gets as to the source and origin of box, container, receptacle, vessel, casket, in question. The court decided, on the basis the goods from visual impression of colour bottle, wrapper, label, band, ticket, reel, of trade dress, that there was no likelihood combination, shape of the container, frame, capsule, cap, lid, stopper or cork. of confusion between the two products. packaging etc. If an illiterate, unwary and Thus, the new definition of ‘trademark’ in One of the earliest cases dealing with gullible customer gets confused as to the India broadly encompasses most of the the concept of trade dress was William Grant source and origin of the goods which he has elements of trade dress. Hence, it is possible, & Sons Ltd v McDowell & Company Ltd (55 been using for longer period by way of theoretically, to apply to register trade dress (1994) DLT 80), which was decided by the getting the goods in a container having under the Trademarks Act. Delhi Court in 1994. In this case the particular shape, colour combination and Trade dress offers wider protection than defendants had created a label similar to the getup, it amounts to passing off. In other a trademark in terms of packaging and plaintiffs’ Glenfiddich brand of whisky. The words if the first glance of the article without product design (ie, the overall look of the court held in the current instance: going into the minute details of the colour product), as well as focusing on its entire “What is necessarily to be seen in the case combination, getup or lay out appearing on selling image. This broad aspect of trade of passing off, is to compare the whole of the the container and packaging gives the dress is evident in the manner in which it plaintiff's label with the whole of the impression as to deceptive or near has been interpreted by the courts. Trade defendant's label. When so compared, in my similarities in respect of these ingredients, it dress protects aspects of packaging and view, there are common black, red-rust and is a case of confusion and amounts to

104 World Trademark Review August/September 2010 www.WorldTrademarkReview.com Country correspondent: India

passing off one's own goods as those of the other with a view to encash upon the goodwill and reputation of the latter.” A pertinent question which arises at this juncture pertains to the very nature of trade dress. The design given to a product (or its container) by a manufacturer may also serve to distinguish it from competing products of other manufacturers and hence may be a protectable trade dress.

Design A ‘design’ under Section 2(d) of the Designs Act 2000 is defined as: “features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two Himanshu Bagai dimensional or three dimensional or in both Senior associate forms, by any industrial process or means, [email protected] whether manual, mechanical or chemical, separate or combined, which in the finished Himanshu Bagai is a member of Luthra & article appeal to and are judged solely by the Luthra’s IP, media and entertainment eye; but does not include any mode or group. He graduated from Delhi principle of construction or anything which University in 1999 and went onto is in substance a mere mechanical device, complete his LLB at Delhi University in and does not include any trade mark as 2002. Mr Bagai’s practice covers litigation defined in clause (v) of sub-section (1) of and general trademark law, advising on section 2 of the Trade and Merchandise copyright law, e-commerce issues such as Marks Act, 1958 or property mark as defined data protection and privacy, and media in section 479 of the Indian Penal Code or law issues such as defamation on social any artistic work as defined in clause (c) of networking sites or blogs. section 2 of the Copyright Act, 1957.” Thus, it is evident that the Indian legislature thought it fit to exclude trademarks as defined under the Trade and Merchandise Marks Act 1958 from design protection to any trademark. However, surprisingly, even after the Trademarks Act was notified in 2003 and the definition of ‘trademark’ under Section 2(1) (zb) was widened to include “shape of goods”, there was no amendment to the definition of a ‘design’ in the Designs Act 2000 to exclude the definition of trademark under the new Trademarks Act. This leads to a peculiar situation wherein it may be possible for the proprietor of a registered design to seek trademark protection even after the expiry of the 15-year protection period available under the Designs Act. However, this argument would be tested in light of the fact that the “shape of goods” has now been included in the definition of ‘trademarks’ under the Trademarks Act and the intent of the legislature has never been to extend monopolies in design – hence the clear exclusion of trademark under Section 2(d) of the Designs Act. WTR

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