Trade dress – A powerful brand element
On account of rising competitiveness in the commercial industry, the importance accorded to trade dress of a product is tremendous. Trade dress relates to the visual or other appearance of a product which includes its packaging, combination of colours, textures, graphics, shape and other composite features of a product which distinguishes it from the rest.
The Trade Marks Act, 1999 does not explicitly recognise the concept of trade dress, however, Section 2(1)(m) defines a “mark” to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. Hence, indirectly, trade dress would also fall under the ambit of trademark under the Indian laws.
The Delhi High Court in Devagiri Farms Pvt. Ltd. vs. Mr. Sanjay Kapur & Anr. has vividly explained the concept of trade dress as well as the implications of trade dress infringement.
The Respondents (Sanjay Kapur and Naina Kapur) sell tea under the brand name “SAN-CHA” for over three decades. Their tea packaging includes a soft paper packet shaped as a rectangular cuboid and the package slipped into a fabric sleeve and tied at the mouth by a traditional drawstring/dori.
The Appellant Devagiri Farms who came into the tea business several years after the Respondents, sell their tea under the trade name BAGAN. However, it was claimed by the Respondents that the fabric sleeve packaging adopted by the Appellants is similar to that of the Respondents and an ad interim injection was granted against the Appellant.
The Appellant therefore filed the present appeal challenging the interim injunction.
The Appellant contented that fabric sleeve packaging which the Respondents seek to restrain is generic and not capable of being protected and that there were several distinguishing features in the style and get up of the two brands. Moreover, the Appellant’s packaging bears the label “BAGAN FRESH” which ensures that no deception is caused in the minds of the customers.
For the Respondents, it was claimed that the Appellant’s packaging is using the same colour shades in the backdrop and floral designs as that of the Respondents and hence prima facie both the packaging look identical to each other, irrespective of the trade name/label printed on them.
Court’s observation and judgment:
On perusal of the tea packaging of the Respondents as well as the Appellant, the Court was of the view that it is apparent that the Appellant is using the same shades of colour in the backdrop with a floral design as that of the Respondents. Although the floral print is different, but with same shade of colour is used.
The Court applied the well-recognized touchstone of the principle of deception and observed that “it would be apparent to the naked eye that any purchaser of tea with the usual imperfect recollection to which all humans are prone to, would be deceived when she comes across the tea packaged by the Appellant.”
The Court also specifically opined that “merely because a trademark is displayed on the packaging material, notwithstanding a striking similarity in the packaging material there would be no likelihood of deception.”
Finally, the Hon’ble Court held that the overall get up of the trade dress of the Appellant, even taking into account the display of the trademarks, is likely to cause deception when compared to the Respondents packaging.
It was held that, “So striking is the theft by the Appellant of the packaging used by the Respondents that even an elite, educated, widely exposed and travelled person is likely to be deceived.”
The appeal was accordingly dismissed with costs ordered against the Appellant.
The judgment provides a crucial precedential value for cases relating to trade dress infringement and also precisely lays down the criteria for contemplating trade dress infringement. It emphasizes on the fact that while comparing trade dresses, the overall get up and similarity has to be seen and not the minor variations because it is similarity which strikes and not the dissimilarities which distinguish when an ordinary person recollects an object seen in the past.