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In the teeth of the issue




The Delhi High court has injuncted Ajanta India Ltd. from using a red and white packaging for its toothpowder cans on the ground that the same infringes the trademarks and copyrights of Colgate-Palmolive and directed the former to file an affidavit of compliance.

Ajanta was initially marketing its toothpowder in a red can. Recently, they switched over to a can which allegedly echoed the trade dress of the Colgate Toothpowder packaging in red and white colour combination. Colgate immediately brought an action before the Delhi High Court for infringement of its copyright and trademarks along with a common law claim for passing off in the trade dress of its red and white toothpowder can along with its label against Ajanta. While issuing the injunction, the Court clarified that Ajanta could exhaust stocks of the injuncted can within a period of two months from May 25, 2007.

This order marks a significant victory for Colgate in its battle for protecting the trade dress of its red and white toothpowder packaging in India which enjoys a significant goodwill and reputation in the oral care market but has in recent years been facing quite a threat from look-alike products in the market.

A remarkably accurate report on the decision appears on moneycontrol.com which read like a breath of fresh air after all the incorrect and trigger-happy reporting I have been writing about over the past few days.

On a different note, this decision is significant in that this suit was resolved within 24 hours of its institution and it thus demonstrates that summary disposal in IP matters is possible even in India which has so far earned a dubious distinction for its lengthy court proceedings.

3 comments.

  1. AvatarShamnad Basheer

    Gaurav Miglani writes:

    Hi Mrinalini

    I was just reading an old news blog of June 5, 07 and and saw ‘In
    teeth of the issue’ – Ajanta being restrained from using red and white
    for toothpowder. I have been representing Ajanta in their entire red
    and white litigation in Delhi HC along with Ms. Prathiba from Singh &
    Singh and we have fought this issue tooth and nail.

    Colgate first sued Ajanta for red and white trade dress in 2003.
    After a long drawn battle on the issue Mudgul J. passed an order
    restraining Ajanta on the issue of passing-off while refusing
    Colgate’s claim of infringement and the order explicitly stated that
    no monopoly could be claimed on red and white and that red and white
    was common to trade in so far as oral care products are concerned.

    Both parties appealed from that order. We argued, that once red and
    white was common to trade, it could not have been a feature to be
    taken into consideration while comparing the marks in likelihood of
    confusion analysis, for the purposes of passing off, and thus to this
    extent Single judge’s order was bad. Colgate appealed against refusal
    of infringement. While these appeals were pending, matter was
    referred to Mediation Cell of Delhi HC and Colgate approved a few red
    and white cartons to be used by Ajanta, during the pendency of suit.
    While this arrangement continued, Colgate filed this Toothpowder suit
    in HC. We saw it listed and appeared. We brought this to the notice
    of j. Sistani that on one hand they approve this for Toothpaste and on
    the other hand they sue us for same trade dress in relation to
    toothpowder, while the issue of red and white is sub-judice. Furious
    upon the plaintiffs, J. Sistani, disposed off the suit the same day
    saying Ajanta is permitted to use the same red and white colour scheme
    for toothpowder as Colgate agreed to in mediation for toothpaste. And
    i was amaaazed to read – ‘This order marks a significant victory for
    Colgate in its battle for protecting the trade dress of its red and
    white toothpowder packaging in India”

    I’ll provide you more on Red & White…. by Friday

    Best,
    GM

    Reply
  2. AvatarShamnad Basheer

    Gaurav Miglani writes:

    Hi Shamnad

    It was great to hear you speak at Franklin Pierce and now to get in
    touch with you again. I told Mrinalini as well the other day and i
    must say again, you guys are doing a wonderful job at the Blog. Your
    comments are really intriguing.

    With the Colgate-Ajanta thing, you are right. Let the neutral
    authority decide the who’s right. But it’s good to debate over these
    issues and get everyone’s perspective over this. Our principal
    grievance in the new suit against Colgate (CS OS no. 1768 of 2007) is
    that they have been misrepresenting courts’ orders and particularly
    the order passed in the Toothpowder suit (CS OS no. 976 of 2007)
    claiming an illegal monopoly in red in white trade dress, while a Ld.
    Single Judge has held in an earlier suit (CS OS no. 672 of 2003) that
    red and white trade dress is common to trade in oral care products
    and cannot be monopolized by anyone. I have attached the order
    passed by Badar J. in the recent suit, as well as the order in the
    Toothpowder suit. I hope it would give you a clearer picture.
    Sorry for the messed up .pdf files. I had to format my pc’s hard
    drive completely I have not been able to club the entire order in one
    single file.

    The information is public now, since we have done the mandatory
    compliance and served the defendants. You can put it on the
    comments section if you would like. Please do keep in touch.

    Best,
    Gaurav M.

    Reply
  3. AvatarShamnad Basheer

    Dear Gaurav,

    Thanks very much for your detailed mail. Certainly clarifies a number of issues. I’m still unclear on the following:

    Shwe claimed in her post that:

    “This order marks a significant victory for Colgate in its battle for protecting the trade dress of its red and white toothpowder packaging in India which enjoys a significant goodwill and reputation in the oral care market but has in recent years been facing quite a threat from look-alike products in the market.

    I believe this is the critical paragraph that is contested here. She also linked up to a new item which said pretty much the same thing:

    “A remarkably accurate report on the decision appears on moneycontrol.com which read like a breath of fresh air after all the incorrect and trigger-happy reporting I have been writing about over the past few days.”

    The critical component of Sistani J’s order is:

    ” Learned counsel for the parties have drawn the attention of the Court to
    page 8 of I. A. No.6322/2007 on the top of which, the initial get-up/trade dress
    of the defendants has been scanned. In the later portion of this page 8, the
    present get-up/trade dressing of the product of the defendant has been scanned.
    Learned counsel for the defendants submits the initially the defendants were
    selling their products in the colour scheme/trade dress/get-up as scanned in the
    first half of this page, which is marked ?X? and it is only with a view to avoid
    any objection taken by the plaintiff in a connected matter, which had been sent
    for mediation, that the colour-scheme was changed to the red, white and yellow
    and not with a view to deceive the public at large”

    And later:

    “Accordingly, the suit of the plaintiff is decreed and after a period of
    two months from today, the defendants shall not use the colour-scheme/get-up/
    trade dressing in respect of their products as scanned in the later portion of
    page 8 of I. A. No.6322/2007 and marked ?Y?”

    The latter part of his order appears to be an “injunction” restraining Ajanta from using the initial colour scheme/trade dress after two months. I believe this is different from the latter colour scheme that Ajanta would use after two months, in that Ajanta would also add the colour “yellow”?

    If therefore the red and white colour scheme (along with other aspects that contribute to the trade dress of colgate’s tooth powder) cannot be used by Ajanta, does this not constitute an order protecting the “trade dress of its red and white toothpowder packaging” as claimed by Shwe. Of course, the order covers the entire trade dress aspect and not merely the red and white colour. And to this extent, you’re absolutely right that there is no monopoly on “red and white” per se–but certainly if there is a broader trade dress component (of which red and white are just one aspect–thus for e.g. the red part and the white part are not just sprayed across in equal proportions on the toothpowder box but the red colour appears in a curve on the box), then the judges order prevents you from using such trade dress?

    This is an interesting discussion and lets certainly continue to discuss and get to the truth. I will post all of this in the comments section–once I have more clarity.

    Warm wishes,

    Shamnad

    Reply

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