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Dressing up your Wares: Increasing Protection to Trade Dress in India

Issued: February 01 2013

Trade dress, which was once understood to mean labels, wrappers and containers of a product, is now a term that encompasses all elements which create an image or appearance of a product. The fact that consumers are increasingly identifying products from their appearance, design, shape and such other features cannot be ignored. Just as in the rest of the world, courts in India have taken note of this fact, and the distinction between trademark and trade dress is gradually blurring.


Although the term trade dress is not defined under the Trade Marks Act, 1999, the definition of a trademark broadly includes certain elements qualifying as trade dress such as shape of goods, packaging and combination of colors. In most cases, trade dress is afforded protection when it acts as a source identifier. In comparing trade dresses, generally the composite image of the plaintiff’s product is compared with that of the defendant notwithstanding the differences in brand names of the two products.


Two such cases have come up for adjudication before the Bombay High Court wherein the Court, by interim and ad-interim orders, has restrained the use of identical or similarly shaped goods. In the case of Gorbatschow Wodka v. John Distilleries, the Plaintiff, Gorbatschow Wodka, filed a quia timet action before the Bombay High Court alleging that the Defendant had infringed their intellectual property rights by adopting a deceptive variation of the shape of the Plaintiff’s vodka bottles.


The Plaintiff asserted that the shape of its vodka bottle was distinctive, formed a part of the trade dress and had an established reputation in India. It was alleged by the Plaintiff that the Defendant’s act of imitating the shape of their bottle resulted in dilution of their goodwill and reputation, dilution of the distinctive shape, passing off, unfair competition and a mushrooming effect. The essential feature of the shape of the Plaintiff’s bottle was a bulbous dome which imparted uniqueness and novelty to the shape of the bottle. The Defendant had adopted a shape which relied principally on the same bulbous structure. The Defendant, on the other hand, contended that it owned a design registration under the Designs Act, 2000 for its bottle. It was further argued by the Defendant that their bottles were sold under the mark ‘Salute’ which was different from that of the Plaintiff and that the Defendant’s product bore a differently colored, distinctive label which could never be confused by the general public with the bottles of the Plaintiff. Furthermore, the Defendant claimed that the target consumer of the subject products were highly educated, rich and discerning and that the test of passing off would not apply since the consumers in the case were not of average intelligence or imperfect recollection and there was no scope for confusion or deception.


The Court, while hearing an interlocutory application for injunction, rejected the Defendant’s arguments. The Plaintiff’s argument that the Defendant’s design registration could not preclude an action against the Defendant for passing off was accepted. The Defendant was restrained from using the objectionable bottle and/or any other shape identical or deceptively similar to the Plaintiff’s bottle upon and in relation to its products or business in any manner so as to pass off or enable others to pass off its goods as that of the Plaintiff. The said matter is pending for final disposal.


The order was relied upon by the division bench of the Bombay High Court in deciding an appeal to the adinterim order of the trial court in the case of Whirlpool of India v. Videocon Industries. A particular washing machine marketed by the Defendant, Videocon India, was alleged to be very similar to designs registered by the Whirlpool India, such that the Defendant was infringing the registered designs of the Plaintiff and also passing off their goods as and for those of the Plaintiff.


The Plaintiff claimed that the design of the washing machine – square on one side and rounded on the other side – was distinctive and aesthetically appealing. On comparing the two rival products, the trial court had held that the Defendant’s product was similar to that of the Plaintiff. Further, it was also held that there was real and cogent likelihood of deception by similarity of designs and that the action for passing off was also made out. Among other things, the Defendant argued that for passing off, there must be more than mere similarity between products and there has to be an intention to deceive the consumers. It was also urged by the Defendant that the shape had to be distinctive and that in the present case there was no possibility of confusion considering the class of purchasers and that the brand names of the respective products were prominently displayed. Rejecting the arguments of the Defendant, the Appellate court upheld the order of the trial court and enjoined the Defendant from infringing the Plaintiff’s design and from passing off their goods as and for that of the Plaintiff. The case is also pending for final disposal.


In both the orders, it is interesting to observe that the Courts have, while granting protection to shape of goods, examined if the shape is distinctive to the Plaintiff’s goods or if it acts as a source identifier. This liberal yet-cautious approach in protecting unconventional trademarks such as 3D marks, shapes or trade dress will set a very promising and favorable trend in Indian trademark jurisprudence.



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About the Author

Kavita Mundkur Nigam is an associate attorney at Krishna & Saurastri. Her practice areas include trademark prosecution and oppositions, copyright, design, domain names, technology transfer and IP licensing. She also deals with matters relating to infringement, passing off, counterfeiting and due diligence. She has worked on projects relating to company mergers and acquisitions, private equity, project finance and foreign investment. Mundkur holds a Bachelor’s degree in law from Government Law College, Mumbai, and a Bachelor’s degree in commerce from Narsee Monjee College of Commerce & Economics. She also holds a diploma in cyber laws from the Asian School of Cyber Laws, Pune.