SpicyIP Comments: Trademark Controversies

“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 amazed 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.”

After posting this comment, Gaurav went on to initiate legal action, praying that Colgate be injuncted from falsely claiming a monopoly in the “red and white colour combination”, since this was common to the trade . The court passed an order in Gaurav’s favour holding in pertinent part that there is “no monopoly in the red and white colour combination”.

I’m still trying to get to the bottom of the facts here. From a preliminary reading of the documents in this case, it appears that the initial court order injuncting Ajanta (as reported by Shwetashree) only acknowledged Colgate’s rights to a broader trade dress right, of which the “red and white colour combination” was but one component (and this seems to have been the basis for settlement by the parties as well).

As one can appreciate, there is a difference between rights to a “red and white” colour combination per se and a trade dress right to the entire package, of which the red and white colour combination is one aspect i.e rights to such a combination, clubbed with other features such as the fact that the red colour may not as evenly distributed as the white, and that these colours are separated by a curve and not a straight line (see the excellent image that Shwe used along with her post that highlights this distinctive way of spraying the colours on the toothpowder box).

I first responded to Gaurav’s email, noting that “From the little information that I have on this case, I believe Shwe is right, but am happy to be corrected. Perhaps …. we can have a neutral authority like a court tell us as to who is right?”

I then read some of the orders that Gaurav attached and this was my response:

“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.

Gaurav then responded in pertinent part as below:

“You may be correct in saying that “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” and I had no issues if Colgate reported this limited injunction in the manner it was stated by the judge. But to say that we have been injuncted on a red-and-white trade dress in abstract, and not just on their websites, in newspapers and writing to our bankers, is something we certainly had problems with. For such a consent decree to be advertised by Colgate as a significant victory on red and white issues was something absurd.

I certainly did not intend to point out any mistake in your blog or reporting of Shwe. My only intent was to convey my perspective of this issue, and since I have been handling this red-white controversy for almost 4 years, to bring to you guys the information apart from just what’s in the popular media. “

I am continuing to have an exchange with Gaurav in the “comments” section of the post on the blog. I really want to thank him for being the rare IP counsel that is willing to share information and to debate these issues in a public forum. If only we had more folks like him, we’d have much more accurate reporting in IP matters, more constructive debates around issues, and perhaps even cause our judges and IP authorities to think through some of their decisions before handing them down!!

For those interested in further details on this Spicy trademark issue, please keep checking the comments section from time to time.

2. Mrinalini’s post on piracy (part II of “living in glass houses..”), wherein she refers to piracy as a “necessary evil”.

Lawrence Liang cautions that…

“The word evil has a very long history in western theology and history and should be used with abundant restraint. See for instance Susan Neiman’s book, Evil in Modern Thought for the long and problematic history of the word. “

3. Shamnad’s Post on Participation by the Public in Policy Making:

Yogi said:

“As far as public participation in IP policy making goes, you cannot really compare it with other scientific disciplines. For this reason, economics and law represent the humanities stream. An understanding of the public choice theory may probably provide some solution. But I am not sure since I am neither a political scientist nor an economist. But as a lawyer, I can undoubtedly say that “Law is codified common sense”, which, I believe, the people of India and “sensible” public health groups do possess! Historically, IP has never remained a pure economic or a legal issue. Law is just used as an instrument to foster some other “justifiable” objectives.

Next, the 3(d) issue cannot be left for mere legal and verbal gymnastics. We know it well that there is a blurring line where public participation should end and coherent policy expertise should follow. But dubbing the 3(d) issue as instance of excessive democratization would be wrong in every sense. Is there a final definition for words like “significance” and “efficacy” in legal dictionaries? It’s like the issue of “reasonability” which still haunts the legal world. Well, I really do not intend to say that people unconnected to the issue must have a say. But when we have people who understand the dynamics of the issue, why do we really fret about it all again? May be the pious “public health” objective is just another way to further some other economic objective. One never knows!

Looking from the other side, do you think that this has come as a pure legal issue for Novartis? Is it an issue of “innovation”, or rather, a strategic business issue of not allowing competition through Generics? If that be the case, why do we always whine over all this from one angle? I just got to hear Prof. Bhagwati yesterday. Interestingly, he now believes that public health issue has possibly come into the pure trade framework (especially, at the WTO) as it was then possible for some to bring IPRs into WTO framework! I am sure Prof. Bhagwati would now oppose an US-FTA (hypothetical) if it mandated that 3(d) must be withdrawn. He calls them (the FTA’s) as “protectionist measures” and “termites in the free trade system”. My point is that you can’t really be sure as to where you want to stop within the continuum of under protection and over protection. It’s a difficult choice indeed!“

4. Shwe’s post on “Sholay” and trademark rights: