I would like to begin this post with a caveat. This post is PRIMARILY meant for non- IP practitioners. This post deals with a settled legal position viz, a trademark encompasses colour scheme / colour combination as well. The intention of this post is to help a non-resourceful, aggrieved person discern the broad strategy in building a prima facie case through a recently decided case law. On quite a few occasions, I have been asked to opine on the aforesaid issue by lawyers, entrepreneurs, start ups etc etc who do not enjoy easy availability of resources. Hence this post. Kindly note that this post is only indicative in nature. It does not substitute a professional legal advice.
DEERE & CO. & ANR. v. S. HARCHARAN SINGH & ANR. I.A. No.24477/2014 (u/o XXXIX R.1 & 2 CPC)
[The Court directed the issue of notice to the defendants.]
The Deere Group is commonly referred to as the ‘John Deere’ after its founder and Chairman Mr. John Deere. Founded in the year 1837, the plaintiff No.1 claims to be one of the largest and leading agricultural and construction equipment manufacturers in the world including India.
According to the plaintiffs, defendants are manufacturing and selling lookalikes of the plaintiffs’ farm equipment including but not limited to Tractors, Harvesters and Combines under their trading name/mark “SURINDERA” across India.
It was contended that the plaintiff No.1 is the registered proprietor of trademarks in relation to the unique Green and Yellow colour scheme and logo. The defendants blatantly copied the impugned marks in relation to their agricultural vehicles without any authorization from the plaintiffs. Further, the manner of use of colour combination by the defendants is deceptively similar to that of the plaintiffs. Such deceptively similar adoption by the defendants (of the plaintiffs’ trademark and trade dress) is bound to confuse the consumers.
Section 2(m) of the Trade Marks Act, 1999 (“the Act”) reads as under:
“mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof”
Section (zb) of the Act reads as under:
“(zb) trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours”
In the light of aforesaid provisions, it was held that the colour/colour-combination can be treated as trademarks if these are distinctive and exclusively associated with the trader. It was held that “the plaintiffs have been able to make out a strong prima facie case in their favour. The balance of convenience also lies in favour of the plaintiffs and against the defendants. In case the interim orders are not issued, the plaintiffs would suffer irreparable loss and injury.” Accordingly, interim injunction was granted.
How did Mr. Praveen Anand, counsel for Plaintiff, argue his case?
Mr. Praveen Anand is one of the leading IP lawyers in the country. He built his prima facie case by relying on the following factors which can, in fact, be taken as an indicative list:
- A brief background of the company
- Its commercial history in India
- Extent of its geographical presence in both India and abroad
- Its presence in media
- Its partnership with the government
- Advertising/promotional expenses of the plaintiffs in India for a period of five years
- Its sales figures for a period of five years
- Comparison of marks and thereby showing the similarities