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A trade dress in India is not given any explicit statutory protection and is not mentioned in the Trade Marks Act, 1999. However, the definition of a trademark under Section 2(zb) of the Trade Marks Act, 1999 includes within its ambit "shape of goods, their packaging and combination of colours". Thus, trade dress is included within the definition of a trademark. Trade dress is protected in the same manner as an unregistered trademark. The common law of passing off provides protection of trade dress consisting of shape of goods their packaging and combination of colours etc. There is no formal registration required in India for a trade dress and the same is connected with the reputation and goodwill built in time. The common law of passing off provides protection of trade dress consisting of shape of goods their packaging and combination of colours etc.

A judgement protecting the trade dress of a proprietor was pronounced on October 11, 2018 by the Calcutta High Court before the single judge bench of Hon’ble Justice Soumen Sen wherein a dispute over trade dress between an established and reputed opal ware manufacturer and a reputed manufacturer of Insulated Thermo-ware and writing instruments was involved.

The brief facts of the case are that the petitioner ‘La Opala R.G. Ltd’ is in the business of manufacturing, marketing and selling opal glass tableware, crockery, cup, saucer, dinner set, crystal wares etc. and maintained full-fledged designing and art department which is involved in conceptualizing various artistic getup, innovative shapes and designs and surface patterns of its product through various modern technologies to give products a lasting and aesthetic look. The products of the petitioner with aesthetic shapes, configuration and pattern have formed a distinctive identity of their own, originating from the petitioner and forming a trade dress of the product. This trade dress of the products of the petitioner have acquired the characteristic of a mark. The products of the petitioner bearing such trade dresses and/or marks and the packaging have come to be known in the trade as designer collection and have transcended the previous reputation that the petitioner had as an opal glassware manufacturing company only. The petitioner owns a number of brands, however, four of these brands i.e. “DAZZLE PURPLE”, “MYSTRIO BLACK”, “GOLDEN FALL” and “CRIMSON BLOOM”, were the concerned brands in the present matter. Sometime in July 2017, the petitioner came across the products of the defendants/ respondents i.e. “Cello Plast”. The case of the petitioner was that the products bearing the motif, art work, design, pattern and comprising a trade dress and/or mark on the products of the defendant were similar and/or deceptively similar to that of the trade dress of the petitioner. Further, the respondent had branded the trade dress and/or the mark with an identical and deceptively similar brand name as that of the petitioner being "ORNATE BLACK", "MANDARIN ORANGE", "GOLDEN PINE" and "PURPLE HUES". The petitioner complained of passing of with the respondent attempting to ride piggyback on the goodwill and reputation of the marks and devices of the petitioner.

The respondent in its defence contended that the artistic work and representation on the products of the petitioner constituted a design and not a trademark and the same was incapable of being protected under the Trade Marks Act, 1999. Further, the respondent argued that the products of the petitioner and the respondent would be sold under their respective house marks i.e. “La Opala” and “Cello” respectively each of which was written on the packaging of the products. Further, the goods of the respondent being sold in the carton can easily be differentiated from the goods of the petitioner. The respondent also submitted that the use of designs, artistic works, ornamentation, patterns etc. pertaining to flowers, trees, leaves, twigs, branches, roots, etc. on the surface area of the opal ware is common to trade and has become an established practice and custom in the crockery industry and the same is used to give and aesthetic, decorative and visual appeal to the products and the same does not automatically qualify to become a trademark. The respondent contended that the purchasers would confine themselves to the aesthetics of the plate and may thereafter look at the reverse of the plate to find out the name of the manufacturer.

In response to the arguments submitted by the respondent, the counsel on behalf of the petitioner contended that there may be several manners of representing and/or arranging such common features but copying a pictorial representation and/or arrangement imitating the colour combination and/or the arrangement of a flower, twigs, branches etc. in an identical or flagrant manner as that of the plaintiff is dishonesty which the defendants/respondents have done and amounts to passing off. Further, the petitioner argued that some of the consumers might have seen the plates at others’ house and would have had a fleeting glance of the plates and would have not gone ahead to reverse the plate and see the house mark written on it.

The court confirmed the interim order passed on May 16, 2016 restraining the respondents and/or their directors, men, servants, assigns, dealers and/or retailers or franchises from using and/or distributing and/or marketing and/or selling and/or dealing with in the course of trade any products bearing the said trade dress and/or mark except for the mark “ORNATE BLACK”.

The court stated “Even a careful eye would not be able to find any difference between the three products of the plaintiff and the three infringing products of the defendant when placed side by side without the names of the respective parties displayed on the products. It is a common human reaction to get attracted with the design and get up of a product and then to enquire about the manufacturer. At this prima facie stage, it cannot be said that the products of the parties are not available loosely or in pieces. The three infringing products of the respondents are slavish imitation of the designs of the plaintiff - even the arrangements of the motifs, twigs and flowers are arranged similar to that of the petitioner. The overall impression that one gets from the two marks with its artistic get up and other distinctive features are same and not distinguishable. That the designs are common to the trade is no answer to copy a design when there are sufficient materials to show that the products of the plaintiffs have acquired a distinctive character by long, uninterrupted and continuous use and has gained popularity and goodwill in the market. Even the cartons and/or boxes produced for visual examination although prominently displayed the name of the respective manufacturers but in the product identification the design adopted by the respondent No.1 are the same three designs forming the subject matter of the present suit…..”

In a country like India, where a large percentage of the population is illiterate and living in rural areas, it becomes fundamental to protect the trade dress of a product. In such a scenario, the colour schemes, packaging and visual layout of a product plays a significant role in having a recollection of a brand helping the proprietors reach every nook and cranny of the society. The products are purchased not only by reference to brand names but also by reference to their visual presentation and layout. The same has been reinforced by growing judicial precedents in the country.

[1] G.A. No.490 OF 2018 C.S. No.27 OF 2018

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