In this post Rahul Bajaj analyses the recent decision of the Delhi High Court in Devagiri Farms vs. Sanjay Kapur in relation to “trade dress” infringement. This is Rahul’s fourth submission for the fellowship.
Even though Indian courts used to frown upon the possibility of affording protection to the unconventional features of products comprising the trade dress before the 1999 Trademark Act came into force, the widely worded definitions of ‘mark’ and ‘trademark’ in the enactment, coupled with the emergence of trade dress as a key source identifier, resulted in a fundamental shift in the courts’ treatment of claims for trade dress protection. The increasing willingness of courts to grant relief to Plaintiffs for “trade dress” infringement is best evidenced by the 2007 decision of the Supreme Court in Heinz Italia vs. Dabur India in which the Court granted an ad-interim injunction against the defendant on account of its product having phonetic similarity and identical packaging/colour scheme as the plaintiffs product; and the decision in Gorbatschow Wodka Kg vs. John Distilleries Limited decision granting an interim injunction preventing the defendant from selling alcohol in a bottle that was similar in shape to the plaintiff’s vodka bottle. In this context, the succinct observation by a single judge of the Delhi High Court in Colgate Palmolive Company vs. Anchor Health And Beauty Care that “trade dress is the soul for identification of the goods as to its source and origin” perfectly encapsulates the growing importance of trade dress as a tool of differentiation in commercial circles.
Against this backdrop, it would be instructive to examine a recent decision by a division bench of the Delhi High Court in Devagiri Farms Pvt. Ltd. vs Sanjay Kapur & Anr. which examined the relevant legal principles that must guide an inquiry of trade dress infringement.
The Plaintiff-Respondents, Sanjay Kapur and Naina Kapur, have been selling tea for over 30 years under the name ‘San-Cha’ in a soft paper packet shaped as a rectangular cuboid that is slipped into a fabric sleeve which is tied at the mouth by a traditional drawstring. On the other hand, the defendant-appellant, Devagiri Farms Pvt. Ltd., has been selling tea under the trade name ‘Bagan’ in a package, which, the Plaintiffs contended, bears a striking resemblance to their package, especially to the fabric sleeve within which the packet is contained.
Arguments of the Appellant
The Appellant sought to assail the grant of injunction by the Single Judge on three main grounds. First, it contended that the trade dress used by the respondent was merely functional and did not bear any distinctive features over and above its functional attributes that merited protection. This argument is predicated upon a well settled principle that features of a package which merely exist as a matter of functional utility do not merit trademark protection as no single trader can claim monopoly over them. Second, the Appellant contended that the trademark in both products was prominently displayed on the package which, according to previous decisions, can be sufficient in certain cases for negativing a contention of trade dress infringement. Finally, it was argued that the public consuming its tea tends to come from an elite and widely-educated background, so they would not be fooled into mistaking the Appellant’s tea for that of the Respondent as people of ‘average intelligence’ or ‘imperfect recollection’ might be.
After having carefully examined the Appellant’s arguments, the division bench upheld the grant of injunction by the single judge for 4 (four) reasons.
First, and most important, the court held that a visual appraisal of the two packages reveals that both contain the same maroon and blue background; golden yellow floral design; green back ground hue; and use of same shade of red. In response to the argument that there were minor variations in the trade dress of the two packets, most notably in the floral print, the court held: “It is the overall get up and similarity which has to be seen and not the minor variations because it is similarity which strikes and not the dissimilarities which distinguish…”
Second, in response to the Appellant’s argument that the Plaintiffs were seeking protection for the functional shape of the packets, the court held that this argument could not pass muster because the Plaintiff’s grievance did not pertain to the use of the rectangular cuboid by the Defendant, but instead pertained to the use of the fabric sleeve on the rectangular packet. Put differently, the Plaintiffs’ argument was that the use of an identically shaped rectangular cuboid by the Defendant further accentuated the similarity between the two packages and not that this was the principal cause of deception.
Third, the court held that while it is true that the prominent display of a distinctive trademark on the package reduces the likelihood of trade dress infringement, this cannot be held to be a dis-positive factor if the visual get-up of the two packages otherwise looks highly similar.
Finally, it was held that the degree of similarity between the two packages was such that any person with the usual degree of imperfect recollection, even if she comes from a well- educated and elite background, would be definitively deceived by the appellant’s package.
As is the case with most of Justice Nandrajog’s judgments, this verdict is founded upon a lucid and solid line of reasoning and the robust application of relevant legal principles. In particular, this judgment stands out for the court’s unambiguous recognition that the level of similarity, and not minor differences, between the products are determinative in an inquiry of “trade dress” infringement and for the enunciation of clear principles about the relevance of the display of the trademark on the product in such an inquiry.