Scope of 'Trade Dress' Protection and Infringement in India

Products and services available in the market are distinguishable or recognisable by their general appearance, or "get-up". This ‘trade dress’ is protected under the Trademark Act (the Act) and is regulated by the laws of unfair competition. The expression 'deceptively similar' as defined in Section 2 (d) of the Act means that the similarity or resemblance must be such as it would be likely to deceive or cause confusion.

The plaintiff in each case must establish that a ‘get up’ or trade dress has become by use of distinctive of the plaintiff's goods. The term distinctive when used for the purpose of deciding the question of passing off must be taken as meaning factually distinctive and not mere assertion on the part of the plaintiff that the products of the plaintiff are inherently distinctive. When the plaintiffs are relying upon trade dress or get up the plaintiffs must, prima facie, establish that the trade dress or get up used by the plaintiffs had become associated exclusively with the products of the plaintiffs. The plaintiffs must also establish, prima facie, reputation and the plaintiffs must also, prima facie, show that the trade dress of the defendants is likely to deceive or cause confusion.
 

To determine trade dress infringement, the infringement must affect the total image or the overall impression of the plaintiff’s product, packaging and advertising. The plaintiff’s product is compared with the corresponding image of the defendant’s product. If the defendant’s trade dress is strikingly similar to the trade dress of the plaintiff and is likely to cause confusion in the minds of the consumers, then there is a trade dress infringement of the plaintiff. Even if it cannot be said that the defendant has infringed a specific trademark of the plaintiff, this does not control the separate issue of liability under the broader rules of unfair competition through the infringement of trade dress. This can be covered under the law of passing off.

There is however, a fundamental distinction to be drawn between trademarks infringement and unfair competition. Trademark infringement rests on a relatively narrow principle as compared to unfair competition. The essential element of a trademark is the exclusive right of its owner to use a word, phrase or a device to distinguish his product. On the other hand, in claim of unfair competition such as passing off, one has to consider the fact that the defendant does something unwarranted, which causes consumer confusion. Copying of trade dress of plaintiff is one such act. Thus, unfair competition exists if total impression of the package, size, shape, colour, design and the name of a product create confusion in the minds of consumers as to the origin of the product. A defendant cannot avoid the liability for unfair competition simply by separating the various aspects of plaintiff’s product, packaging and labels and claiming that no one of these is protectable in itself. Thus, the plaintiff can challenge the act of infringement of trade dress from a wider perspective if the action is taken against unfair competition such as the act of passing off.

Normally, in an action for passing off the relief of injunction is not granted at the interim stage because still there has to be a trial but in exceptional cases such an interim relief can be made available to the aggrieved party where it has been established on record that the two products are so similar in appearance that there was absolutely no way of avoiding the grant of interim injunction.

The Delhi High Court in the case of Beiersdorf AG v. RSH Global Private Limited had directed the defendants to stop using the plaintiff’s cosmetic products as they were deceptively similar to the plaintiff’s distinctive trade dress, amounting to an infringement of the plaintiff’s registered trademarks.

The plaintiff made an application alleging trademark infringement by the defendants of the trade dress of their products which included bottles of body lotions. The plaintiff had claimed that the defendant had copied the label, trade-dress and packaging of their products. It was also claimed that the defendants had commenced manufacture of ‘Joy Intense Moisture’ moisturizing lotion, in a container, using a trade dress which was deceptively similar to that of the plaintiff.

The distinguishing features of the trade dress of the plaintiff, as were apparent from the body of their products, of which infringement was alleged, are following:

• The brand name of the plaintiff has always been written in white font on a dark blue background,
• The container had a distinctive blue colour, which was stated to be inevitably identified with the plaintiff and its products and which, as per the assertions in the plaint, stands protected as A colour mark by German Trademark and Patent Office in Class 3
• A milk swirl/splash device in white colour towards the lower half of the container and
• Cocoa butter in the form of a droplet design in golden colour in the middle of the milk swirl/splash device.

The defendant pointed out that they had been manufacturing and dealing in sale of beauty  care and cosmetic products under the name ‘Joy’  but,  till  the  commencement  of  manufacture  of the allegedly infringing moisturizer, was adopting trade dresses which were distinct from those of the plaintiffs. They further argued that they had started manufacturing the allegedly infringing products, the trade dress of the defendants’ products did not imitate or replicate any of the distinctive features which mark the trade dress of the plaintiff’s product.

The Court discussed that a prima facie comparison of the products of the plaintiff and the allegedly infringing products of the defendants reveals this, indeed, to be the case. The defendant packaged their products in a container of similar, even if not identical, shape and size, with white letters on a blue background, the shades of blue also being similar to the naked eye and, perhaps, most significantly, a white semi-circular splash towards the lower half of the container, which at any rate is, prima facie, a feature distinctive to plaintiff’s product. It is a settled principle of law that the test for comparison is not for identifying the dissimilarities between the product of a plaintiff and the allegedly infringing product of the defendant, but of whether, when seen as a whole, the product of the defendant is deceptively similar to that of the plaintiff.

The order of the High Court can be broken down as following:

• The Court held that when the alleged infringed product was holistically seen, there was every likelihood of an unwary purchaser, of average intelligence and imperfect recollection, confusing the product of the defendants with that of the plaintiff.
• The fact that the defendants had not adopted any trade dress, for its other products, which was similar to that of the plaintiff’s product, is a clear case and deliberate case of deliberate infringement by the defendants, of the trade dress of the plaintiff is, in my opinion, made out.
• The Court directed the defendants, their directors, wholesalers, distributors, partners, proprietor, its officers, servants, and agents to restrained from using, manufacturing,  selling, exporting,  importing,  offering  for sale, distributing,  advertising,  directly  or  indirectly dealing in cosmetic products, especially body cream, lotion or goods that  are deceptively similar to the plaintiff’s distinctive trade dress, amounting to an  infringement of the plaintiff’s registered trademarks.
• There was infringement of the plaintiff’s copyright in the artistic work of their ‘NIVEA’ label.
• Since the Court passed an ex-parte order, they clarified that the defendants would be at liberty to apply for variation or modification of the order, if they so choose.