(Co-authored with Sai Vinod Nayani)
In an order dated 2nd of April, 2012, a Metropolitan Magistrate at New Delhi, acting on a criminal complaint filed by Anchor Health & Beauty Care Pvt. Ltd., has summoned before her several top officials of Colgate-Palmolive, including its global CEO Mr. Ian Cook, along with Mr. G. L. Verma, a Registrar at the Trade Marks Registry. The allegations against Colgate and the Registrar of Trade Marks relate to forgery of a document, making a false document, forgery for the purpose of harming reputation and using as genuine a forged document. Colgate has moved the Delhi High Court under S. 482 of the Cr.P.C. seeking an order quashing the summons and the complaint.
The order of the Metropolitan Magistrate can be accessed over here.
The facts at issue relate to a trademark registration certificate filed by Colgate in a suit for trademark infringement (C.S. (OS) No. 1709 of 2005) against Anchor in the year 2005 before the Delhi High Court. In its plaint instituting the trademark infringement suit against Anchor, Colgate had stated the following
“The plaintiff’s red and white colour trademark applied to a carton for ‘toothpaste, tooth-powder, non-medicate mouthwash and dentifrices’ and identified by the title ‘Colgate Strong Teeth’ is subject matter of registration No. 1223059 in class 3 dated 14th August 2003 under the Trade Marks Act, 1999. A certificate for use in legal proceedings pertaining to the said registration has been applied for and the plaintiffs undertake to file the same as soon as it is received from the Trade Marks Registry. A true copy of certificate of registration along with colour representation of the mark on form TM-1 are annexed hereto collectively marked as Annexure XX.”
The iconic ‘red & white colour’ for toothpaste and related products has been central to several rounds of litigation between Anchor and Colgate since both companies use the ‘red and white’ colour combination for their products. Therefore if either one of the companies could claim monopoly over the ‘red and white’ colour combination, it would mean that the other company would have to rebrand their entire range of products.
In the present case when Colgate had filed for the impugned trademark, it had sought, in its application, a monopoly over the red and white colour. (The application can be accessed over here). However when the mark was advertised for oppositions in the trademark journal, it was advertised without the colour condition. (The journal advertisement can be accessed over here).Thereupon the counsels for Colgate wrote to the Registry informing them of this discrepancy and asking that the certificate be issued with the colour condition. (This letter can be accessed over here).
The registration certificate that Colgate appears to have received and filed in the suit contains the combination mark depicted in the red and white colour as an annexure, but without any accompanying word description of the said colour condition on the certificate itself. We spoke to TM attorneys who opined that the absence of a word description of the colour condition in a TM certificate is not necessarily conclusive of the fact that the said mark does not contain a colour condition. Some certificates do contain such word descriptions and others do not. And we were shown such certificates as well.
It is interesting to note that in a related writ petition filed by Anchor (W.P. (C) No. 4165-66 of 2006), before the Delhi High Court, seeking cancellation of the impugned mark, Colgate informed the Court that it was ready to surrender the original trademark registration certificate for the red and white colour combination. (This order can be accessed over here.)
The fact that the Court has ordered the subsequent certificate to be identical to the certificate as advertised indicates that the writ court was convinced that Colgate was not entitled to claim the ‘red and white’ mark in the present case since the mark was not advertised in that colour.
To further complicate matters, the entry for the impugned mark in the electronic register of trademarks contains a condition granting registration to Colgate for its ‘red and white’ colour combination. In pertinent part the register states “The mark consists a particular shade of red and white applied to the carton in which the goods are packaged, the splash colours yellow and blue do not form part of the mark and serve only to embellish the carton”. (The extract from the Register can be accessed over here) It is not quite clear at this juncture as to how this condition crept into the Register when the same was not advertised in the trademark journal.
Only time will tell us as to how this discrepancy propped up in the Register. If the quashing petition by Colgate, under S. 482 of the Cr.P.C. succeeds before the Delhi High Court, the order of the Magistrate will be set aside. If the quashing petition does not succeed, Colgate will have to face a criminal trial on the charges of forgery and using as genuine a forged document.
Has any petition Under Section 482 Cr. P. C been filed for quashing the issuance of summons? I have tried to ascertain if any cases of Colgate are pending in Delhi High Court pertaining to the year 2012. There is only case which is shown on the High Court website which is Colgate versus Anchor being FAO(OS) 131/2012 which is pending and the next date is 2/8/2012.
I have tried to ascertain about filing of any petition in High Court under Section 482 by searching it by giving the names of each of the accused mentioned in the order of the MM apart from Colgate and Mr. G.L.Varma with VARMA and VERMA (keeping in view the spelling difference and if the search is case sensitive). There is none which I could find. Please inform the readers if any such petition is pending with its details.
The case number is Crl. M.C. 1991 of 2012. The Delhi High Court website shows it quite clearly.
Prashant
Dear Prashant,
There is no doubt that the Court has been mislead in the matter by the attorneys of colgate. From what is stated in the application it is clear that the attorneys has only described the mark and has not claimed any colour combination as distinctive feature. Further, the interesting part is that this application was filed prior to the enforcement of Trade Marks Act-1999 i.e. before September 15, 2003 and hence it was not possible to claim the colour combination as distinctive feature. Acc. to the TM Rules, 2002 if the colours are claimed the same needs to be specifically mentioned as distinctive feature. In this case nothing of that sort has been done. It is a clear case of misleading the court that they have been granted exclusive rights on red & white combination. Further, Colgate cant in any case claim ex. rights on a part of a trademark in view of section 15 & 17 of TM Act.
I would also like to inform you that the TMR seldom advertises the colour combinations claimed by the applicant as distinctive feature and therefore at least we can assume that no foul play has taken place at TMR Colgate seems to have tried to mislead the Court with the rights they have on this registration
Hi Anon,
I wouldn’t prejudge this issue until such time that the TMR can clarify how the colour condition crept into the Register. Was it a human error? Did the data entry operator mistaken enter the colour condition by looking at the TM 1 instead of the advertised journal?
It is likely that Verma may have issued the certificate based on the entry in the Register.
If however it can be proved that the electronic record was tampered with, the conclusion would obviously be different.
In either case, these are both factual questions that can be conclusively answered only after a trial i.e. presuming the matter goes to trial.
Prashant
Prashant, Have you noticed that the name of the petitioner is given wrong in the cause title to read as COIGATE in stead of COLGATE. This seems to be the reason that the search did not reveal the pendency of the petition.
The fact that the petition came up on 29th May, 2012, one can understand why you were not covering up this news earlier. You waited for the petition to be filed and at least have a preliminary hearing before you cover up this story. You seem to be under bombardment from readers (this is what you have stated earlier). Good that you have covered up the story at last. All is well that ends well.
It may be noted that there is no interim stay of the proceedings of the MM. That means that each of the accused will have to seek bail on 27th June, 2012. It has been learnt that the issuance of the Legal Proceeding Certificate to counsel for opposite side of Colgate was deliberately delayed even inspite of filing of tatkal fee (five times of the normal fee) and party keeping on waiting stationed in Mumbai. But then Colgate got the same after making the wrong entries in the electronical register when they wanted.
Anon at 2.33PM has stated that the counsel for Colgate has misled the court. What I understand is that not only Colgate misled the court but the TMR issued wrong certificate after making wrong entries in the register.
Anon @2.33PM has stated that the attorneys had only described the mark and had not claimed the color combination as distinctive feature. I have checked up the statement made in TM1 which reads:
The question is what was the need of such an explanation. One can make out just having a look at it. Please note that the counsel for Colgate has stated in their letter dated December, 9, 2011 that the application was filed with color claim (The letter can be seen in the status of the concerned registration).
Dear Anon:
I hope you’re satisfied now that we’ve carried something on the blog on this issue. We had to review various documents first to understand the nuances of the issue. As Prashant rightly noted, we’ll track further proceedings as many of the key issues are factual ones for which a determination by a court is necessary. So if you have more facts on record that you would like to share, please do so. Or any other legal issues which can further enlighten us and our readers. We hope the blog can be used to further enlighten—and to shed more light on the issue—rather than to engage in mudslinging against opposing law firms or lawyers. Thanks for your co-operation.
Today is 27th June, 2012, the day fixed before MM Patiala House for appearance of the accused.
In fact the date of 27th June 2012 before the MM Patiala House courts was got postponed to 22nd August, 2012 as it was not possible to serve the accused to be present on 27th June keeping in view the time left for serving. The petition under Section 482 Code of Criminal Procedure was fixed on 14th August, 2012 before DHC. Many big lawyers came in to argue the matter on behalf of accused trying to seek quashing of summons and at least seeking the stay of the same. Neither has the quashing been done nor the stay. Accordingly the accused will now have to seek bail on 22nd August, 2012 before MM Patiala House. The petition before DHC will come up on 20th September, 2012.
Hi all,
In relation to the matter, if we assume that colgate did not apply for any monopy on the color combination (as he same was not specifically mentioned or advertised) and even the mark was registered without the color combination. However, Since colgate had aquired reputation on its products by the use of the red and white color-combination, are they not entitled to any relief under the law of passing off (for the trade dress) irrespective of the trademark protection??