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as to why there were such similarities with the plaintiffs trade dress in their products
trade dress. This shows the dishonest adoption and the defendant’s were accordingly
injuncted.
4. Trade Dress and Deceptive Similarity
In order to evaluate deceptive similarity of trade dress, the trade dress has to be compared
as a whole a what is to be seen is how a normal consumer with imperfect discerning
ability will respond to the trade dress of a rival trader who is a second entrant. It is
possible that trade dress is deceptively similar and the trademark is totally different and
vice versa i.e. trademark is identical and trade dress is totally different. The courts will
have to evaluate as to whether average consumers will be deceived or confused.
(a) Deceptive Similarity and Injunctions
In case trade dress of defendant is held to be deceptively similar to that of the plaintiff
injunction will be granted in favour of the plaintiff. The below mentioned cases throw
light as to how the deceptive similarity of trade dress is perceived in India and in what
cases injunction is granted and in what cases injunction is refused.
(i) Injunction Granted where Trade Dress of Defendant Held to be Deceptively
Similar
Where the trade dress of the defendant is held to be deceptively similar to that of the
plaintiff in a suit of passing off, the defendant is restrained from passing off his goods and
services as those of the plaintiff. The Delhi High Court in the Colgate Palmolive Co.
Case198 extended the passing off action to violation of trade dress. The court after
examining the two packages, concluded that even though the trademarks used by the two
parties was different, the trade dress used by the defendant was deceptively similar to that
of the plaintiff and restrained the defendant from copying the trade dress. The court
observed: “If illiterate, unwary and gullible customer gets confused as to the source and
origin of the goods which he has been using for longer period by way of getting the goods
in a container having particular shape, colour combination and get-up, it amounts to
passing off’.
In the Ruston & Hornby Ltd Case199 the Supreme Court observed: it very often
happens that although the defendant is not using the trademark of the plaintiff, the get-up
of the defendant’s goods may be so much like the plaintiffs that a clear case of passing off
would be proved...” In the Frito-Lav India & Ors Case200 a decree of permanent

198 Colgate Palmolive Co. v. Anchor Health & Beauty Care Pvt. Ltd 2003 (27) PTC 478 (Del).
199 Ruston & Hornby Ltd v. Zamindara Engineering Co. Ltd AIR 1979 SC 1649.
200 Frito-Lav India & Ors v. Guru Prasad Enterprises 2004 (29) PTC 537 (Del).
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injunction was passed against the defendant’s from using the packing labels under the
trademark “Mannka Aloo Bhujia”, “Mannka Navrattan Mix” and “Mannka Moong Dal”
packaging which is deceptively similar to the plaintiffs’ “Lehar Aloo Bhujia”, “Lehar
Navrattan Mix” and “Lahar Moong Dal” packaging and from so doing any other act as
may constitute confusion and deception, resulting in passing off.
In the Panacea Biotec Ltd Case201 the High Court of Delhi concluded on the basis of
evidence that “the layout, design, get-up, colour combination and artistic work of the
defendants’ cartons/packaging/blister strips is so deceptively similar that it is difficult to
locate dissimilarities at a glance.” Injunction was therefore granted to the plaintiff.
In the Raiendra Sahoo Case202 in a suit seeking injunction for passing off, based upon
unregistered trademark the plaintiff was able to prove that the wrappers and labels used
on the packets of beedis were deceptively similar to those used by the plaintiff and a
decree for injunction was passed. In the Richardson Vicks Case203 the plaintiff was
registered proprietor of the label mark containing the words “Vicks Action 500”. The
plaintiff was marketing the product in a foil strip packing having a distinctive design,
layout and colour scheme. The defendant was a later entrant who started using on their
product the trademark “Power 500” and also imitated the lay out, colour scheme and get
up. The Delhi High Court granted temporary injunction against the defendant. In the
United Distillers Case204 the court held that the trade dress used by the defendants has
similarity with the trade dress of the plaintiff.
(ii) Injunction Refused where Trade Dress of Defendant Held not to be
Deceptively Similar
If there is no deceptive similarity between the trade dress of the plaintiff and the
defendant, injunction is not granted. In the United Breweries Ltd Case205 the trademark
“Black Label” was registered by the plaintiff for beer which was sold in West Bengal
only. The defendant registered the word “Hercules” for the same product and used the
label “Hercules Black Label Super strong Beer” for several years. Injunction was refused
since the label was held to be not deceptively similar to that of the plaintiff.

201 Panacea Biotec Ltd v. Elprags Pharma 2002 (24) PTC 385 (Del).
202 Raiendra Sahoo v. Ganeswar Swain AIR 1987 Orissa 156.
203 Richardson Vicks v. Medico Laboratories (1985) 28 Delhi LT 166.
204 Supra n. 197.
205 United Breweries Ltd v. Khodavs Brewing & Distilling Industries 2003 (25) PTC 130 (Kant).
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(b) Deceptively Similar Trade Dress and Different Trademark
The grant of injunction is a matter of discretion of the court. The court is however guided
as to whether the plaintiff is able to prove distinctiveness of its trade dress,
misrepresentation by defendant leading to confusion and deception and damage or
likelihood of it to the plaintiff. The below mentioned cases throw light as what criteria is
followed by courts in granting injunction if trade dress is deceptively similar and
trademark is different.
(i) Cases where Injunction Granted if Deceptively Similar Trade Dress and
Different Trademark
In the Vicco Laboratories Case206 the plaintiff claimed passing off on the basis of copy of
the distinctive get up and colour scheme of the collapsible tubes and cartons although the
trademarks “Vicco” and “Cosmo” were different. The court held that the entire get-up and
colour scheme of the tube and carton were identical and likely to confuse the customer.
The plaintiff was prior user and the defendant had intentionally copied the colour scheme
and get-up of the plaintiffs carton and tube. Where different marks “Vimal” of the
plaintiff and “Sonal” of the defendant were sold in deceptively similar get-up, interim
injunction was granted.207 In the Pataka Biri Mfg. Co. Ltd Case208 the court observed that
the defendant is selling its product in a wrapper, the colour scheme, get-up, layout,
arrangement of alphabets or features of which are strikingly similar to that of the plaintiff.
That fact that the names of the rival products i.e. “Pataka Biri” of the plaintiff and “Sagar
Special Biri” of the defendant are different makes no difference. In the Glaxo Group
Limited & Others Case209 the court held that the trademark “Corinal” does not appear to
be confusingly similar to the trademark “Crocin”, but confusion is sought to be created by
adopting similar carton/packaging as that of the plaintiff. Infringement is compounded by
using the logo SGS in the manner as the plaintiffs logo GSK within the heart shaped
device.
(ii) Cases where Injunction Refused if Deceptively Similar Trade Dress and
Different Trademark
In the Kellog Co Case210 even in view of similarities in size and shape of get-up, as the
word trademarks “Kellog’s Cornflakes” and “Aims Aristo” were different and
prominently displayed the court held that there is no occasion for granting injunction. In

206 Vicco Laboratories v. Hindustan Rimmer AIR 1979 Del 114.

207 Reliance Industries Ltd v. Anand Traders and Others 1999 PTC (19)414.
208 Pataka Biri Mfg. Co. Ltd v. S.N. Biri Factory & Anr 2005 (31) PTC 68 (Cal).
209 Glaxo Group Limited & Others v. Vipin Gupta & Others 2006 (33) PTC 145 (Del).
210 Kellog Co v. Pravin Kumar Bhadabhai 1996 PTC 187 (Del) (DB).
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the Colgate Palmolive Company & Another Case211 it was held that the words “Colgate”
and “Anchor” are distinct and have not an iota of similarities in look and sound. This is
why the ingredients of trade dress, get-up, colour combination, lay out of the container or
packing acquire significance and relevance for determining the offence of passing off.
Similarly in the Three-N-Products Pvt. Ltd. Case212 the plaintiffs were proprietors of the
trademark “Ayur” in respect of cosmetics whereas the defendant’s legally purchased the
trademark “Ayush” for ayurvedic products. The shape of bottles, colour schemes of labels,
lettering style and get-up were different. Injunction was therefore refused.
(c) Trade Dress not Deceptively Similar but Trademark Identical
In the Rawel Industries (P) Ltd Case213 the court held that no doubt there is a difference in
the shade of the colours used and the size of the cartons of the defendant but the word
“Duke” adopted by the defendant is the same as used by the plaintiffs. There is therefore
reasonable probability of the defendant’s passing off their goods as that of the plaintiff.
(d) Deceptively Similar Trade Dress and Deceptively Similar Trademark
In the Maharashtra Raiva Sahakari Doodh Mahasangh Ltd Case214 it was held that the
bare look at the two pouches clearly shows that the milk pouch of the defendant’s is
deceptively similar to that of the plaintiffs and there is every likelihood of public being
confused or mislead into the belief that it is the product of the plaintiff. The trademark
used by the plaintiffs on the pouches of its milk product viz., “Mahanand Cow Milk
(Homogenised and Pasteurised)” has been deceptively copied by the defendant’s on their
milk pouches bearing the mark “Maa-Anand Cow Milk (Homogenised and Pasteurised)”.
The defendant’s have copied the goodwill and reputation of the plaintiff and tried to pass
off their goods as that of the plaintiff and were restrained. In the Amar Nath Chakrobortv
n1 r
Case the defendant was held to be using a deceptively similar trademark “Maj” and
deceptively similar label to sell buckets the plaintiff was proprietor of trademark “Taj”.
The defendant was restrained from passing off his goods as that of the plaintiff.
In the United Decoratives Pvt. Ltd Case216 the court held that a comparison of two labels
shows that the defendant having adopted the writing “FEX” in the same size of letters as
the plaintiffs “FIX”. The labels are also deceptively similar as the defendants have
copied the device of globe in similar size and style. The defendants were held guilty of

211 Supra n. 198.

212 Three-N-Products Pvt. Ltd, v. Amrutha Trading Corporation 2003 (27) PTC (Ker) (DB).
213 Rawel Industries (PI Ltd v. Duke Enterprises & Others PTC (Suppl) (2) 212 (Del).
214 The Maharashtra Raiva Sahakari Doodh Mahasangh Ltd v. Ideal Vitamin Food Products Ltd 1999 PTC
(19)402.
215 Amar Nath Chakrobortv v. Dutta Bucket Industries and Ors 2005 (31) PTC 415 Cal (DB).
216 United Decoratives Pvt. Ltd v. Prem Traders 1995 PTC 107.
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infringement of copyright and passing off. In the Raiamani Fabrics & Anr Case217 the
court restrained the defendant from passing off their towels as and for the plaintiffs
towels by use of the trademark “Moti Label” or any other label similar to the plaintiffs
“Mothi Label” in the colour scheme, get-up and layout or in any manner so as to confuse
and deceive the purchaser.
In the Horlicks Limited & Ors Case218 it was held that the use of the trademark “Horlik”
and label by the defendant in respect of coffee is likely to cause confusion and deception.
The marks are semantically similar except the letter “c”. The plaintiff has been able to
establish passing off. In the Sai Sai Agencies Pvt. Ltd Case219 the plaintiff sought restraint
order against the defendant from using the trademark “Mathurag Ghee” which was
deceptively similar to the plaintiffs mark “Mathura Ghee” along with deceptively similar
pictoral device. The court held that confusion and deception is inevitable.
(e) Deceptively Similar Trade Press and Descriptive Trademark
Where the plaintiffs mark consists of a purely descriptive word it will be difficult to make
out a case of passing off by use of such word alone. But if the defendant in addition to
using the descriptive word used by the plaintiff also used the plaintiffs colour scheme,
get-up etc., it may be easier to establish passing off.220
5. Combination of Features of Trade Dress
In the Reliance Industries Ltd. Case221 the trademark “Sonal” inside an oval device was
represented by the defendants in the same manner and script as the trademark “Vimal”
inside an oval by the plaintiff. Interim injunction was granted. In the Jolen International
Case222 injunction was granted in favour of the plaintiff who was the owner of the
trademark “Cosmo” which was written in a particular style and distinct script in respect of
toothpaste. The defendant was manufacturing toothpaste under the trademark “Cosco” in
similar type of packaging, get-up and colour combination.
In the Habibur Rahman Case223 the defendant’s sold their products Zarda in pouches
which were deceptively similar to that of the plaintiffs. It was held that there is a visual
similarity in the packing and get-up. The defendant was injuncted. In the Murari Lai
Harish Chander Jaiswal Case224 the defendant’s were using similar get-up as that of the

217 Raiamani Fabrics & Anr v. Mothi Textiles 2006 (33) PTC 694 (Mad) (DB).
218 Horlicks Limited & Ors v. Kartick Sadhukan 2002 (25) PTC 126 (Del).
219 Sai Sai Agencies Pvt. Ltd v. Chintala Rama Rao 1997 PTC (17) 610.
220 Sunra n. 16 p.774.
221 Supra n. 207.
222 Jolen International v. Divan Industrial Chemicals 2002 (25) PTC 24.
223 Habibur Rahman v. Kannaui Zarda Products 1996 PTC (16) 133.
224 Murari Lai Harish Chander Jaiswal v. Rai Zarda Works 1996 PTC (16) 157.
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plaintiff who sold their product chewing tobacco and tobacco for hooka in a packing that
had the device of Hans placed in a floral circle. The defendant’s imitated the device of
Hans and adopted similar paper colour scheme, get-up, lettering size and orientation on
the packing. Permission was granted to the defendants to continue their business after
removing similarity in the get-up.
In the Kali Aerated Water Works Case225 it was held that the get-up, packing and other
writing adopted by the defendant on the goods or on the bottles in which the goods are
offered for sale is deceptively similar and likely to deceive the consuming public. The
defendant was accordingly injuncted. Where the plaintiff had established that the
defendants have been using their trademark with same trademark and colour scheme for
sale of their goods on similar packs, it was held that the plaintiff was entitled to get
injunction in its favour. In the Colgate-Palmolive Co. & Anr Case the court held that
the infringing mark “Collegiate” is written in logo script which deceptively resembles
with the plaintiffs tube. Especially looking at the colour scheme of red and white is not
only confusingly similar to that of the plaintiffs registered trademark but may lead to an
association of the defendant with the plaintiff.
6. Trade Dress and Confusion and Deception
If the defendant’s trade dress is deceptively similar to that of the plaintiff such that
confusion and deception amongst traders and end consumers is inevitable, the courts will
not hesitate in granting injunction. The below mentioned cases show that injunction is
granted where confusion and deception is established due to deceptively similar trade
dress.
(a) Injunction Granted where Confusion and Deception Established
In the Hygienic Research Institute Case228 the plaintiff was the owner of the artistic work
on the Carton of its product “Super Vasmol 33” and was also the registered proprietor of
the trademark “Super Vasmol 33” since 1957. In a suit for infringement of copyright,
passing off etc., the Delhi High Court held that the defendants in their product hair dye
has copied the artistic work of the plaintiff, in as much as it contains the same colour
scheme, get-up, look-up and the arrangement as “Super Vasmol 33” by placing the
picture of a man and woman on the same side of the carton as that of the plaintiffs
product, the defendants have also copied the entire descriptive matter on the carton. This

225 Kali Aerated Water Works v. M/s Rashid and Others 1989 PTC 54.
226 Etona Company Ltd v. Jakeman Engineering and Manufacturing Co & Ors PTC (Suppl) (1) 66 (Dei).
227 Colgate-Palmolive Co. & Anr v. Sundeep Enterprises 1995 PTC (15) 389.
228 Hygienic Research Institute v. Shoban Lai 2001 PTC 855.
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action of the defendant is clearly dishonest and malafide and is bound to cause confusion
and deception in the minds of the consumers/purchasers. By using the methodology the
defendants’ intention is to pass off their goods as the goods of the plaintiffs’. Decree was
therefore ordered accordingly.
In the G.M. Modular Pvt Ltd Case229 it was held that the test for determining whether one
trademark is deceptively similar to another is based on the likelihood of confusion or
deception arising in the minds of the consumer. Virtually comparing the label “GM” of
the plaintiff with the label “TM” of the defendant, one finds that they are prone to be
confused for the other. The background colour red is the same. Therefore passing off is
made out. It was however held that the plaintiffs at that stage are not entitled to any
injunction with regard to the trade dress of box/carton. The crucial test to be applied for
judging an infringement action or a passing off action is as to whether the customers of
average intelligence and imperfect recollection are likely to be confused on the first
impression.230
• •

(b) Confusion and Deception and Class of Consumers

In the Colgate Palmolive Co. Case231 the court observed that the plaintiff has succeeded
prima facie in showing from the look of trade dress of the two articles, one manufactured
by the plaintiff and another by the defendant from the point of view of not only unwary,
illiterate customer/servants of the household but semi-literate also of confusion and
deception as the trademarks “Colgate” and “Anchor” are written in English language
which cannot be distinguished by ordinary customer of a country where bare literacy level
is abysmally low.
7. Trade Dress to be Compared as a Whole
The test is not that the two names/logos/scripts should be jurally examined in
juxtaposition but it is enough if the two are viewed and the question is posed, on the
mental recollection, whether there is a likelihood of deception or confusion . In the
Kishore Zarda Factory (PI Ltd. & Ors Case233 it was held that the two marks have to be
compared as a whole and greater regard has to be paid to the features that are common. In
the present case the not only the colour scheme, even the writing style and the selection
and setting of numericals are similar. This has been done by the defendants to pass of
their goods as that of the plaintiff and hence they have to be injuncted.

229 G.M. Modular Pvt Ltd v. TM Marketing flndial & Others 2007 (35) PTC 406 (Del).
230 Raikamal Metal Industries v. Mahadev Steel Products 2001 PTC 510 (Del).
231 Supra n. 198.
232 Rainforest CafS. Inc v. Rainforest Caf6 & Ors 2001 PTC 353 (Del).
233 Supra n. 191
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In the Keilog Company Case234 the court held that in a passing off matter in determining
deceptive similarity of get-up, the whole thing must be seen in entirety and not in parts. In
the circumstances, it was held that similarity of get-up or trade dress is not tenable. In the
Richardson Vicks Inc & Another Case233 it was held that keeping in view the fact that the
plaintiffs are the registered proprietors of the trademark “Vicks Action 500” and having
advertised “Double Power Vicks Action 500” and the defendants having started using the
trademark “Power 555” in identical strips, design, get-up, layout and colour scheme, it is
a clear case of passing off as the two marks have to be compared as a whole.
8. Passing off where Minor Changes in the Trade Dress
In the Sidhnur Sat-Isabgol Factory Case the defendant had copied each and every
essential feature of the plaintiffs distinctive carton and had done a minor change in as
much as they had replaced the device of “Ganesh” with the device of “Telephone”. They
could not escape the mischief of passing off. In the Amar Suitings Case237 the plaintiff
was the proprietor of the trademark “Amartex” with the logo of galloping horse for
suiting and the defendant adopted deceptively similar trademark “Amtex” with similar
logo for same goods. The court injuncted the defendant as the overall impression
remained the same. In the Wockhardt Ltd Case238 the defendant’s were restrained as the
cartons were similar. In the Sir Shadi Lai Enterprises Ltd Case239 the court held that the
defendant was selling identical products i.e. alcoholic drinks under identical mark
“Chetak” and deceptively similar label and had attempted to pass off their goods as that of
the plaintiff. The so called additional material in the form of dimly shaped human figure
mounted on a horse and sprinkling star besides the letter “Chetak” makes no difference
for the unwary purchaser of average intelligence, who is not expected to keep the goods
manufactured by the plaintiff and the defendant side by side to decide which product he
intends to buy.
9. Trade Dress Common to Trade
In the Samsonite Corporation Case240 the court held that the colour, shape and other
features referred to by the plaintiffs constituting their trade dress are quite common to
trade. The plaintiffs have not established any proprietary interest in the trade dress or the
colour which is capable of being acquired so as to make it a ground of passing off. In the

234 Supra n. 210.

235 Supra n. 203.
236 Sidhpur Sat-Isabgol Factory v. Delhi Sat-Isabgol Industries 2001 PTC 648 (Del).
237 Amar Suitings v Amar Syntax 2000 PTC 77 (P & H).
238 Wockhardt Ltd v. Dua Pharmaceuticals 1998 (18) PTC 135.
239 Sir Shadi Lai Enterprises Ltd v. Kesar Enterprises Limited 1998 PTC (18) 309.
240 Samsonite Corporation v. Viiav Sales 1998 PTC (18) 372.
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Rothmans of Pall Mall Limited Case241 it was held that the device of crest is common to
the trade of cigarettes.
In the Vidarbha Distillers Case242 plaintiff failed to show that it is the originator of the
mark or label. It was held that many different manufacturers of country liquor were using
similar labels. The plaintiff was therefore denied relief of injunction. In the Cipla Limited
Case243 the court refused to restrain the defendant from marketing/selling its product
“Norfloxacin” in oval shape, orange colour tablets in blister packaging. It was held that
blister form of packaging of tablets is a common and prevalent packaging.
10. Trade Dress and Colour
As per section 2 (1) (m) of the Trade Mark Act, 1999 a 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. Hence combination of colours is
not excluded from the definition of mark The below mentioned judgements will assist
jurists, lawyers in understanding as to how colour and colour scheme has been afforded
protection in India.
(a) Colour and Injunctions
In case combination of colour is exclusively associated with the plaintiff and has become
distinctive of the plaintiff, the courts will not hesitate in granting injunctions if it can be
proved that deceptive similarity of the trade dress of the defendant will cause confusion
and deception amongst consumers and damage or likelihood of damage to the plaintiff.
However the courts have held that no trader can be allowed to monopolize a particular
colour. It has been consistently held that colour must combine with other things to acquire
a distinctive design which may afford protection to the plaintiff.
(i) Injunction Granted
In the Colgate Palmolive Company and another Case244 the High Court of Delhi
restrained the defendants from passing off the red and white trade dress of the Colgate i.e.
the plaintiff. In this case the court concluded that there was no infringement but the
defendant is liable to be restrained for passing off, however as the defendant was willing
to change its trade dress, the court issued the direction to the defendant to use the changed
trade dress as per the undertaking. In the Castrol Limited and Another Case245 it was held
that trademark “Indol” adopted by defendants has deceptive similarities in look and sound

241 Rothmans of Pall Mall Limited v. New Tobacco Co. Ltd. & Anr PTC (SuppI) (2) 247 (Cal).
242 Vidarbha Distillers v. Vidarbha Bottlers Pvt. Ltd 2005 (31) PTC 427 (Bom).
243 Cipla Limited v. M.K. Pharmaceuticals 2008 (36) PTC 166 (Del).
244 Colgate Palmolive Company and another v. Patel & Aianta India 2005 (31) PTC 583 (Del).
245 Castrol Limited and Another v. Subhash Kapoor and Another 2002 (24) PTC 628 (Del).
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to the trademark “Indrol” with similar combination and accordingly the defendant was
restrained. In the National Garments. Kaloor, Cochin Case246 the defendant was restrained
from passing off its goods as that of the plaintiff and using the words “National
Garments” and the yellow colour get-up in the box used in connection with the sale of
goods manufactured by the defendants.
In the Anglo-Dutch Paint. Colour and Varnish Works Pvt. Ltd Case247 it was held the
combination of violet background and a large circle with white background and grey
lettering is distinct combination of colours and there is no legal bar to a person acquiring
a trademark in such combination of colours for his containers. In the Virumal Parveen
Kumar Case the plaintiff was the proprietor of the trademark “555” along with the
device of swan with distinctive colour combination for buttons, safety pins, hooks, eye­
lets, fastners etc. The defendant started selling goods under deceptively similar mark
“Asian 555” with identical colour combination, get-up and arrangement of the carton. It
was held that confusion and deception is inevitable and restrained the defendant.
In the Colgate Palmolive Co. Case249 the court made the following observations: “May be,
no party can have monopoly over a particular colour, but if there is substantial
reproduction of the colour combination in similar order either on the container or packing
which over a period has been imprinted upon the minds of customers it certainly is liable
to cause not only confusion but also dilution of distinctiveness of colour combination.”
(ii) Injunction Refused
In the Kuber Khaini Pvt Ltd Case250 it was held that after considering all the facts and the
get-up for “Kuber Khaini” of the plaintiff and “Chakor Khaini” of the defendant except
for the colour combination, the name and get-up are altogether different. Therefore this is
not a fit case for granting injunction.
(b) Trade Dress and Colour Scheme
Where colour scheme is exclusively identified and associated with the plaintiffs the
courts in India do not hesitate to grant injunction. The below mentioned cases throw light
as to how colour scheme is granted protection in India,

246 National Garments. Kaloor. Cochin v. National Apparels. Emakulam. Cochin 1990 PTC 98.
247 Angl-Dutch Paint. Colour and Varnish Works Pvt. Ltd v. Indian Trading House PTC (Suppl) (2) 585
(Del).
248 Virumal Parveen Kumar v. Gokal Chand Hari Chand 2002 (25) PTC 672 (Del).
249 Supra n. 198.
250 Kuber Khaini Pvt Ltd v. Prabhoolal Ramratan Das Pvt. Ltd and Another 2002 (24) PTC 135 (Cal).
 328
(i) Injunction Granted
In the Vraiilal Manilal & Co Case251 the plaintiffs registered trademark consisted of the
numeral “22” on a label with a distinctive colour scheme and get-up. Defendants mark
consisted of the numeral “12” on a label closely similar to the plaintiffs label in colour
scheme and get-up. Interim injunction was granted. In the Sri Balamurugan Modem Rice
Mill Case252 the defendant was using similar colour scheme as that of the plaintiff. It was
held that the plaintiff is prior user and had made a prima facie case. Interim injunction
was granted. In the S.V.S. Oil Mills Case253 the defendant’s in earlier litigation between
the parties had been restrained from using the trademark “SVS”. The defendant had
changed their mark to “SVN” but adopted the very colour scheme of the plaintiff without
giving any explanation as to why they changed the colour scheme and get up of their
earlier label similar to that of the plaintiff. The defendants were accordingly injuncted.
In the Vicco Laboratories Case254 the defendants had copied the colour scheme and get-up
of the plaintiffs’ carton and tube for vanishing cream although the trademarks “Vicco”
and “Cosmo” were different, injunction was granted. In the Camlin Private Ltd Case255
although the trademarks were different, but the defendant had copied the get-up and
colour scheme of the plaintiffs pencil and interim injunction had been granted. In the M/s
Richardson Vicks Inc. & Anr Case256 the plaintiffs label consisted of the trademark
“Vicks Vaporub” in a particular colour scheme and get-up. Defendants label consisted of
the trademark “Vikas’s Pacorub” in a similar colour scheme and get-up. Interim
injunction was granted. In the Dharam Chand Ghambier Case257 the plaintiffs trademark
in respect of sweetmeats consisted of a logo of “GP” in a distinctive get-up, colour
combination and style of writing. The defendants used the logo “CP” along with similar
get-up for similar goods. Injunction was granted. In the J & P Coats Ltd and another
Case258 it was held that the two devices, get-up and colour scheme are deceptively similar
deception and confusion will arise and accordingly the defendants were restrained.
CQ
In the Pernod Ricard S.A. France & Anr Case the plaintiff was proprietor of trademarks
“Imperial Blue” and “Royal Stag”. The defendants adopted the trademark “Imperial

251 Supra n. 331.

252 Sri Balamurugan Modem Rice Mill v. Subbulakshmi Modem Rice Mill & Anr 2005 (31) PTC 546 (Mad)
(DB).
253 S.V.S. Oil Mills v. S.V.N. Agro-refineries & Anr 2004 (29) PTC 548 (Mad) (DB).
254 Supra n. 206.
255 Infra n. 339.
256 M/s Richardson Vicks Inc. & Anr v. M/s Vikas Pharmaceuticals 1990 PTC 16.
257 Dharam Chand Ghambier v. Milan Confectionery 2000 PTC 511 (Del).
258 J &P Coats Ltd and another v. Gian and Co and another 1983 PTC 127.
259 Pernod Ricard S.A. Prance & Anr v. Rhizome Distilleries Pvt. Ltd. & Ors 2009 (39) PTC 367 (Del).
 329
Gold” using the trade dress, get-up, colour combination and label of “Royal Stag”. The
court held that the defendant has committed acts of passing off and infringement. In the
case of Khemrai Case260 the defendants had copied the get-up, layout, design and colour
scheme. Interim injunction was granted.
(it) Injunction Refused
In the Rich Products Corporation & Anr Case261 it was held that while the colour scheme
employed in the packaging by the defendant may be similar to those employed by the
plaintiffs, their presentation is different. Therefore prima-facie there is no scope of
passing off.
(c) No Monopoly of Particular Colour
In the Colgate Palmolive Company and another Case262 the court rejected the plaintiffs’
contention that essential feature of their mark is red and white colour scheme and hence,
when the defendant has copied this essential feature, it amounts to infringement of their
mark irrespective of other differences between their marks. The court held that if this
argument is accepted without any proof of likelihood of deception, it would bar the colour
combination of red and white from the toothpaste trade and subsequently deprive the
concerned trade, the colour combination of red and white. The court held that considering
the fact that nature has only seven primary colours, the effect of such interpretation would
be to effectively deprive the trade, one seventh out of the available spectrum of colours.
In the N. Ranga Rao & Sons Case as there was similarity in colour pattern and phonetic
similarity in trade name, the court held that a case of passing off is made out. The court
was of a view that there is some substance in the plea of learned counsel for the
defendant’s that the plaintiff cannot have monopoly on colours. The court observed:
“Thus, even in the U.S., the position of law is that colours per se cannot be claimed as
trademarks. It has been consistently held that colour must combine with other things to
acquire a distinctive design which may afford protection to the plaintiff.”264
11. Trade Dress and Design
If the distinctive design and shape of the plaintiffs goods has acquired reputation,
injunction will be granted to the plaintiff. As per Section 2 (1) (zb) a trademark includes
shape of goods. If the shape of goods is functional it will not be protected by an
injunction. There is an overlap between shape marks under the Trade Marks Act, 1999

260 Khemraj v. Garg AIR 1975 Del 130.

261 Rich Products Corporation & Anr v. Indo Nippon Foods Ltd 2007 (35) PTC 15 (Del).
262 Supra n. 244.
263 N. Ranga Rao & Sons v. Anil Garg & Ors 2006 (32) PTC 15 (Del).
264 Ibid.
 330
and design under the Design Act, 2000. The below mentioned judgements will assist
jurists, lawyers and students in understanding protection given to design and shape of
goods in India.
(a) Design, Pattern and External Configuration of Goods
Where there is proof that the plaintiffs goods have acquired reputation in connection with
goods of a distinctive shape, injunction will be granted. In the Camlin Private Ltd Case265
the defendants adopted pencils in similar appearance, colour scheme and get-up. Interim
injunction was granted. In the MRF Ltd. Case266 the defendant copied the thread pattern
of the plaintiffs tyres. It was held that the similarity of the thread patterns may raise a
presumption of common origin or close business association between the plaintiff and the
defendant. The defendant’s contention that thread pattern is not a trademark cannot be
accepted for the purpose of injunction application. Similarly the non registration of the
thread pattern either under the Design Act or under the Patent Act has to be considered at
preliminary stage. The defendant was restrained from passing off its goods as that of the
plaintiffs. In the Hafizulla Case267 it was held that mere imitation of the goods is no
offence unless there is infringement of patent or copyright or an attempt to pass off goods
of another trader by using false trademark or description likely to deceive purchasers.
(b) Design/Shape and Passing off
Passing off action is available in case of a design provided the ingredients of passing off
are established. The below mentioned cases will assist jurists, lawyers and students in
understanding how the law of passing off is applied in granting or refusing protection in
cases pertaining to design and shape of goods.
(i) Injunction Granted for Imitating Design/Shape
In the Smt. Monika Chawla Case268 the plaintiff was the proprietor of the design of baby
bouncer and filed a suit for permanent injunction for passing off and pirating the design of
baby bouncer against the defendant. The defendant was injuncted. In the Smithkline
Beecham Case269 it was held that a passing off action is maintainable in case Of a design if
the necessary ingredients are established. In the Saltzer Electronics Ltd Case the
Madras High Court granted injunction restraining the defendant from infringing the

265 Infra n. 339.

266 MRF Ltd, v. Metro Tyres 1990 PTC 101.
267 Hafizulla v. Papa AIR 1933 Nag 344.
268 Supra n. 192.
269 Smithkline Beecham v. G.D. Rathore 2002 (25) PTC 243 (Del).
270 Saltzer Electronics Ltd v. Zenith Mould and Tools Pvt. Ltd 1998 PTC 18 (DB) 25.
 331
registered design of the plaintiff pertaining to rotary switches containing contact stage and
covered plate as well as passing off their goods as that of the plaintiffs.
In the Vikas Jain Case271 the plaintiff filed suit for infringement of registered design in
respect of toy scooter as well as passing off. It was held that the defendant’s design
appeared to be an obvious imitation of the plaintiffs design even in respect of
measurements and colour. Interim injunction was granted.
(ii) Injunction Refused for Imitating Design/Shape
Copying the design or shape of article by itself does not amount to passing off. The
plaintiff will have to show misrepresentation by defendant suggesting that the goods he is
selling are those of the plaintiff. In the Kemp and Company & Ors Case272 interim
injunction was refused. In the Smithkline Beecham Pic & Ors Case273 the plaintiff filed a
consolidated suit for infringement of its design for the tooth brush sold under the
trademark “Acqua Flex” and for passing off action restraining the defendant from passing
off their business and goods as that of the plaintiff. It was held that the plaintiffs have not
placed on record any evidence of use, reputation or goodwill in the “S” bend feature of
their tooth brush. Accordingly the court dismissed the injunction application. In the Dart
Industries Inc & Anr Case274 A.K. Sikri, J while refusing an injunction raised an
important question. He observed that there would be another interesting question for
determination if the design is no more protected under the Design Act and is now in
public domain, whether passing off action will be maintainable. He did not give any
finding on this question.
(c) Design/Shape and Functionality
In the Smithkline Beecham Pic Case275 the patents taken and the advertisements of the
plaintiff showed that the design of the toothbrush which was “S” shaped with zig-zag
folds was purely functional. The plaintiff had not established any goodwill and reputation.
Interim injunction was refused.
(d) Overlap between Shape Marks under the Trade Marks Act, 1999 and Design
under the Design Act, 2000
The area of law that is likely to provide an interesting debate is whether shape of a
product is protectable as a design under the Design Act, 2000 or trademark under the
Trade Marks Act, 1999. The definition of “Design” under the Design Act, 2000 excludes

271 Vikas Jain v. Aftab Ahmad and Others 2008 (37) PTC 288 (Del).
272 Kemp and Company & Ors v. Prima Plastics Ltd 2000 PTC 96 (Bom).
273 Smithkline Beecham Pic & Ors v. Hindustan Lever Limited & Ors 2000 PTC 83 (Del).
274 Dart Industries Inc & Anr v. Techno Plast & Others 2007 (35) PTC 129 (Del).
275 Supra n. 273.
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a trademark as defined under the old Trade and Merchandise Marks Act, 1958. The
decision of Delhi High Court in the case of Coming Inc. Case276 though pronounced prior
to coming into force of the new Trade Marks Act, 1999, provides some assistance on the
seemingly overlapping protection under enactments pertaining to design and trademark.
In this case the court clarified that the fundamental distinction between a trademark and
design is: “a ‘trademark’ signals to the mind, the source or identity of the
producers/manufacturers of the article, whereas a ‘design’ appeals to the eye and attracts
the consumer/ purchaser. A ‘trademark’ may also be attractive and appealing to the eye
but it should be directly relatable to the producer/manufacturer of the goods whereas the
‘design’ may be merely appealing or attractive to the eye and need not give any indication
to the consumer/purchaser about the identity of the manufacturer or producer of the
article.”277 In this case it was further held that a design only protects the features of shape
and configuration. This distinction is significant because, in view of the inclusion of
shape in the definition of mark under the new Trade Marks Act, 1999, it may be
concluded that whereas trademark law protects the shape of goods, design law protects
the features of the shape.
In the Kemp and Company & Ors Case278 the plaintiff filed suit for infringement of
registered moulded chair with design of human face and passing off. The court held that
in order to establish goodwill and distinctiveness in a particular get-up, there must be
something more than mere similarity between the goods themselves. Mere copying is not
passing off. If a person copies shape or configuration or get-up of other person’s goods or
article, by itself it cannot be said that he has made a false representation. Monopoly in the
property is only preserved in favour of registered design holder. If the plaintiff has to
succeed on the ground of passing off, he must show something more than mere similarity
between the goods. Exceptions apart, where an article is shaped in an unusual way not
primarily for giving same benefit in use of for any other practical purpose, but capricious
in order purely to give an article a distinctive appearance, characteristic of that particular
manufacturer’s goods, a case may be made out by the plaintiff that he has a reputation and
goodwill in the distinctive appearance of the article itself which would provide him a
cause of action in the passing off if his goods were copied.

276 Coming Inc, v. Rai Kumar Garg 2004 (28) PTC 257.
277 Ibid.
278 Supra n. 272.
 333
12. Trade Dress and Copyright
There is an overlap between protection granted to trade dress under the Copyright Act,
1957 and passing off under Trade Marks Act, 1999. It is a usual practice for plaintiff to
bring consolidated action for infringement of copyright and passing off to protect his
trade dress. The below mentioned judgements will assist jurists, lawyers and students in
understanding protection given to trade dress under the Copyright Act, 1957 and the
Trade Marks Act, 1999.
(a) Overlap between Infringement of Copyright and Passing Off of Trade Dress
In many cases the plaintiffs bring a consolidated suit for infringement of copyright in
artistic work and passing off of trade dress and get-up where the defendants use
deceptively similar get-up or trade dress in their labels or cartons as in the Pidilite
Industries Ltd Case279 and the Glaxo Smith Kline Pharmaceuticals Ltd Case280 where the
defendants were held to be infringing the copyright of the plaintiff in its artistic work and
passing off their goods as that of the plaintiffs..
In the Brooke Bond India Limited. Calcutta Case it was held that the averments made
by the plaintiff about the defendant introducing similar or near identical plastic pouches
like that of the plaintiffs in somewhat similar get-up, design and colour scheme having
not been controverted by the defendant and there being close resemblance of the packets,
the plaintiff has been able to establish infringement of copyright and passing off. In the
Nova Ball Bearing Industries Case the court observed that a comparison of two cartons
“Nova” and “Jani” would reveal that two cartons are exactly similar in size, colour
scheme and get-up, the only difference is that the trademark of the defendant is written at
5 places and that of the plaintiff is written in 3 places. The two cartons bear such a close
resemblance that they can easily confuse and deceive a customer. The plaintiffs are
actually using the artistic carton entitled “Nova” since 1971 and the defendants were
second comers. It was held that prima facie the defendants seem to be guilty both of
infringement of copyright and passing off. In the Kalvani Covering. Chennai Case283 the
plaintiff was the registered proprietor of the trademark “Kalyani Covering” in respect of
gold covering ornaments and its artistic style and logo was also registered under
Copyright Act. Defendant started selling gold covering ornaments and jewellery bearing

279 Pidilite Industries Ltd v. S.M. Associates & Ors 2004 (28) PTC 193 (Bom).
280 Glaxo Smith Kline Pharmaceuticals Ltd v. Biovet Formulations 2004 (28) PTC 538 (Del).
281 Brooke Bond India Limited. Calcutta v. Sona Spices Private Limited. Chandigarh 1991 PTC 13.
282 Nova Ball Bearing Industries v. Mico Ball Bearing PTC (Suppl) (1) 497 (Del).
283 Kalvani Covering. Chennai v. Kalvana Covering. Ramanathapuram PTC (Suppl) (2) 164 (Mad).
 334
trademark “Kalyana Covering” and also imitated artistic, style and logo. The court held
that there is deceptive similarity amounting to infringement of copyright and passing off.
(b) Difference between the Trade Mark Act, 1999 and Copyright Act, 1957
In the Prince Rubber Industries Case284 which was a case under the old Trade &
Merchandise Marks Act, 1958 the court held that Copyright Act and the Trade &
Merchandise Marks Act, 1957 are two distinct statutes envisaging distinct rights and
liabilities. While copyright can be claimed in original literary, dramatic, artistic work etc
under the Trade and Merchandise Marks Act, the registered proprietor of a trademark is
entitled to exclusive user of the distinctive mark. As the trademark complained of i.e.
device on the lower half portrait of a dancing girl, wearing a payal in each of the two
ankles, the plaintiff has a right prima facie to ask for a restraint order against the
defendant even if the defendant has a copyright of its artistic work. This decision although
passed under the erstwhile Trade and Merchandise Marks Act, 1957 applies to the new
Trade Marks Act, 1999.
13. Trade Dress of Foreign Manufacturer
The courts in India have been very proactive in protecting the trademarks and trade dress
of foreign manufacturers. In the Centron Industrial Alliance Ltd Case285 trans-boarder
reputation of a foreign company in its get-up was protected. The defendant in this case
attempted to pass off his goods as that of the plaintiff and was injuncted. The court held
that there is a blatant and flagrant attempt to imitate the plaintiffs goods and the adoption
of the red numeral “7” and the clock at 7 in the “7-Up” blades with the identical colour
and get-up cannot be allowed merely because the word “Up” has been put instead of “O”.
The other product “7 Baje” is still a more blatant imitation and a clearer attempt to pass
off the blade presumably as a Hindi version of the famous product “7 O’ Clock”
trademark of the plaintiff.
In the M/s P.C. Mallapa & Co Case286 it was held that the respondent’s logo “M” is a well
known and famous logo and the courts have recognised the existence of trans-boarder
reputation. It is the case of the respondent that they have entered India in 1983 and are
dealing in fast foods. The logo of the defendant is identical to that of the plaintiff. The
defendant was injuncted even though they were in the business of manufacturing sanitary
wares. In the Carlton and United Breweries Ltd Case287 it was held that the plaintiff is a

284 Prince Rubber Industries v. K.S. Rubber Industries 1983 PTC 34.
285 Centron Industrial Alliance Ltd v. Gillette U.K. Ltd 1998 PTC (18)) (DB) 288.
286 M/s P.C. Mallapa & Co v. McDonald’s Corporation 1999 PTC 9 (Kam).
287 Carlton and United Breweries Ltd v. Harmohan Singh Chandhok & Ors 2005 (31) PTC 363 (Del).
 335
well established company having world wide reputation in the trademark “Foster” and “F
Device”. The defendant’s cannot be permitted to infringe the trademark of the plaintiff
which the plaintiff has been using sincel889. The defendants were restrained form
infringing the copyright of the plaintiff and pass off their goods as that of the plaintiff.
In the William Grant & Sons Ltd Case288 the court held that the plaintiff has made out a
prima facie case that it has a world wide reputation in the “Glenfiddich” whisky, and its
label and the plaintiffs whisky is recognised as the largest selling Single Malt Whisky in
the world and the defendant was restrained from selling its goods in deceptively similar
label. In the Ardath Tobacco Company Ltd Case289 the plaintiff was proprietor of
internationally known cigarettes “State Express 555”. The defendants were dealing in the
cigarettes under the label “Peacock” but the packaging and trade dress was held to be
deceptively similar to that of the plaintiffs. Relief of permanent injunction was granted.
14. Trade Dress and Dilution
In the Colgate Palmolive Co. Case290 the Delhi High court recognized the fact that
distinctive trade dress whose goodwill has been cultivated by hard work over the years
can be diluted if the defendant copies it. In the Frito-Lav India & Ors Case291 the
defendants were injuncted from passing off their packaging as that of the plaintiff and
from indulging in acts of unfair competition and further from diluting the brands, labels
and packaging of the plaintiffs.’
15. Trade Dress and Disparagement
The Paras Pharmaceuticals Ltd Case292 pertained to disparagement of the product “Moov”
of the appellant in the TV commercial of the respondent for its product “Volini”. It was
held that even if the respondent had to choose any non existent product, the same cannot
be in the same colour pack, i.e. violet colour pack in which the product of the appellant is
put. Accordingly direction was given to the respondent to change the colour of the pack
of the product in its commercial. In the Annamalayar Agencies Case it was held that
an advertiser cannot disparage the goods of the competitor. The advertisement of the
defendant sends a wrong message to the TV viewers and the buyers of the coconut oil that
the blue bottle of “Parachute” products are inferior to that of the green bottle of “VVD”
products. Injunction was allowed.

1 Supra n. 195.
289 Ardath Tobacco Company Ltd v. Munna Bhai & Ors 2009 (39) PTC 208 (Del).
290
Supra n. 198.
291
Supra n. 200.
292
Paras Pharmaceuticals Ltd v. Ranbaxv Laboratories Ltd and Ors 2008 (38) PTC 658 (Guj).
1 Annamalayar Agencies v. VVS & Sons Pvt. Ltd & Ors 2008 (38) PTC 37 (Mad).
 336
16. Trade Dress and Pharmaceutical Products
Trade dress of pharmaceutical products need to be protected assiduously as medicines are
not sweets but poises and any confusion or deception can not only be disastrous but also
life threatening. The below mentioned judgements will assist jurists, lawyers and students
in understanding protection given to trade dress of pharmaceutical products.
(a) Injunction Granted
Pharmaceutical products need extra protection as any confusion and deception between
the products can be disastrous and life threatening and more so in a country like India,
where majority of population is illiterate or semi-literate. In the Cadila Healthcare Case294
the Supreme Court of India held that pharmaceutical products will be purchased by both
villagers and townsfolk. The purchaser in India cannot be equated with a purchaser of
goods in England. Any confusion and/or deception can not only be disastrous but also life
threatening. In the Chetrapal Sharma Case the plaintiff had been selling certain
medicine under the trademark “Sudh Sindhu” in a particular get-up. The defendant
commenced selling a similar medicine under the trademark “Piyush Sindhu” in a
deceptively similar get-up. Injunction was granted. In the Upendranath Bramachari
Case296 the plaintiff had used the trademark “Urea Stibamine” in a particular get-up for
medicines for a number of years. Defendants commenced using the same name and get-
up for identical goods. Injunction was granted. In the Ranbaxv Laboratories Limited
Case297 it was held that the defendant’s label is a slavish copy of the plaintiffs label in
respect of its colour scheme, arrangement of features, get-up and layout. Hence, an
injunction was granted.
In the Panacea Biotec Ltd Case298 it was held that the defendant’s have been using the
offending trademark “Nimesulide” and packing cartons/packing strips which are
identical/deceptively similar to that of the plaintiffs copyright and are thus passing off
their medicines as that of the plaintiffs. In the Haw Par Bros. International Ltd Case299
the defendant was restrained from using in relation to pain balm or any other medicinal
preparation the trademark “Tiger Balm”, the word “Tiger” in English or Chinese
characters and the trade dress being the device of leaping tiger and the cartons, labels,
containers, and sachets which are deceptively similar to the plaintiffs products.

294 Cadila Healthcare v. Cadila Pharmaceuticals 2001 PTC 300 (SC).

295 Chetrapal Sharma v. Jaeannath Das AIR 1922 All 178 (DB).
296 Upendranath Bramachari v. Union Drug AIR 1926 Cal 537.
297 Ranbaxv Laboratories Limited v. AKME Drug & Pharmaceuticals & Anr 2007 (34) PTC 573 (Del).
298 Supra n. 201.
299 Haw Par Bros. International Ltd v. Tiger Balm Co. (Pt Ltd & Ors 1996 PTC (16) (DB) 311.
 337
In the Win Medicare Pvt. Ltd Case300 it was held that comparison of two bottles clearly
shows that the defendant has substantially copied the bottle of the plaintiff and has
adopted and identical and/or substantially similar get-up, layout and colour combination
on its Povidone Iodine Solution Bottle labels which would amount to infringement of
copyright and the conduct of the defendant would amount to passing off.
(b) Injunction Refused
In the Cadila Healthcare Ltd Case301 the court was of the view that neither the mark
“Superdac” of the respondent is deceptively similar to the mark “Spardac” of the plaintiff
and even the appearance, shape and size of the two medicines is quite different and the
medicine of the respondent cannot be passed off as that of the appellant.
17. Trade Dress and Trade Name
If the trade name of the plaintiff is written on a distinctive trade dress or get-up in a
unique manner by the plaintiff the defendant will not be allowed to usurp the same. The
below mentioned judgements will assist jurists, lawyers and students in understanding
protection given to trade dress and trade name in passing off matters.
(a) Injunction Granted
In the Helpage India Case302 the plaintiff, a voluntary Non Government Organisation
(NGO) filed a suit for permanent injunction, passing off and infringement of copyright
against the defendant restraining the defendant form using the mark “Helpage and
Childcare” and deceptively similar logo. It was held that the plaintiff received
considerable donations and the defendant is trying to encash the reputation and goodwill
of the plaintiff by use of deceptively similar trade name and logo. Decree was passed in
favour of the plaintiff.
(b) Injunction Refused
In M/s Johnson & Johnson and Another Case303 it was held that the packing of the
Appellants shows the trade origin as that of “Johnsons” whereas that of the Respondents
shows of “Christine Holden”. The colour scheme is different, lettering style is also
different. In these circumstances temporary injunction was rightly refused by the single
judge.

300 Win Medicare Pvt. Ltd v. K. Pharmaceuticals Works 2005 (31) PTC 660 (Del).
301 Cadila Healthcare Ltd v. Swiss Pharma Pvt Ltd 2002 (24) PTC 708 (Guj).
302 Hetease India v. Helpage & Childcare 2005 (31) PTC 673 (Del).
303 M/s Johnson & Johnson and Another v. Christine Holden India (P~) Ltd and Another 1988 PTC 39.
 338
18. Trade Dress and Writing Style
If the font and writing style of trade dress has become exclusively identified with the
plaintiff and goodwill and reputation then the defendant will not be able to usurp it. The
plaintiff will have to prove goodwill and reputation by filing documentary evidence to
that effect as in other passing off cases. The below mentioned cases will assist jurists,
lawyers and students in understanding how writing style of trade dress is protected in
India.
(a) Injunction Granted
Where the plaintiff has coined, conceived, designed, adopted and independently used his
trademark in a unique writing style the defendant cannot be allowed to pilfer it. In the
Naresh Confectionary Works Case304 besides copying the get-up, trademark “Kamal” and
device of Joker on the carton^ the defendant had copied the writing style of the plaintiffs
and it was held that the plaintiff has been able to establish passing off.
(b) Injunction Refused
In the Bawa Masala Company Case305 it was held that where all other, features between
the disputed trademark are distinctive, a mere similarity in writings in various scripts do
not amount to passing off as they do not amount to essential particular or feature.
19. Trade Dress and Website
In the Himalaya Drug Company Case306 the court held that the defendant’s have
misappropriated the effort, skill and expense that has gone into the creation of the
plaintiffs website. Thereby the defendant’s have copied the entire herbal database of the
plaintiff and have thereby infringed the copyright of the plaintiff. The plaintiff has also
been able to demonstrate that the defendant’s have attempted to pass off its herbal
database as and that of the plaintiffs and have also violated the “trade dress” rights that
exist in respect of the plaintiffs herbal database. The defendant’s were accordingly
injuncted.
20. Trade Dress and Wrapper
The defendant cannot be allowed to use a wrapper which is deceptively similar to that of
the plaintiff which causes confusion and deception. The plaintiff has to prove that the
wrapper of the plaintiff has goodwill and reputation attached to it and the defendant’s use
of the same will cause damage or there is likelihood of damage. The below mentioned

304 Naresh Confectionary Works v. Jain Confectionery 2002 (25) PTC 129 (Del).
305 Bawa Masala Company v. Gulzari Lai Laipat Rai PTC (Suppl) (1) 361 (Del) (DB).
306 Himalaya Drug Company v. Sumit 2006 (32) PTC 112 (Del).
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judgements will assist jurists, lawyers and students in understanding protection given to
wrappers of products in India.
(a) Wrapper Defined
In the William Grant & Sons Ltd Case307 Mahinder Narain, J defined label as: “The
wrapper on the other hand, is something in which the article which is being bought and
sold, is wrapped, and as soon as the article which has been purchased along with the
wrapper in which it is wrapped, is to be used, without removal of thewrapper it is not
possible to use the article itself. The instance in the case of soap is veryclear. No
*)AQ

cake/tablet can be put to use without removing its wrapper.”

(b) Deceptively Similar Wrapper
If the wrapper of the defendants product is deceptively similar to that of the plaintiff such
as to cause confusion and deception courts in India will grant injunction in favour of the
plaintiff and against the defendant. There is no yardstick to determine whether wrapper of
the defendant is deceptively similar to that of the plaintiff or not. The courts compare
wrappers as a whole and do not do microscopic examination of the same. If they come to
the conclusion that average consumer with imperfect recollection will be confused
injunction is granted.
(i) Injunction Granted
In the Shanmugha Mudaliar Case309 the plaintiffs had been using for their beedies a
wrapper in a particular get-up, design and layout and bearing the expression “No. 4 Jadi
Beedi”. The defendant’s adopted for their beedis a wrapper which was closely similar to
the plaintiffs wrapper in get-up, layout and colour along with the expression “No.4 AG
Beedies”. Injunction was granted. In the Kedar Nath Case310 the defendant copied the
artistic design relating to the plaintiffs cartons and wrappers. The plaintiffs application
for injunction was allowed.
In the M/s Amar Soap Factory Case311 the defendants were restrained from reproducing
the plaintiffs artistic wrapper. In the Tata Oil Mills Co. Ltd. Case the wrapper of the
defendants product 507 half bar washing soap was held to be deceptively similar to the
wrapper of the plaintiffs 501 half bar washing soap to constitute passing off. In the

307
Supra n. 195.
308
Ibid.
309
Shanmugha Mudaliar v. Abdul Kareem AIR 1975 Mad 248
310
Kedar Nath v. Monga Perfumery and Flour Mills AIR 1974 Delhi 12
311
M/s Amar Soap Factory v. M/s Public Gram Udvog Samiti 1985 PTC 85.
312
Tata Oil Mills Co, Ltd, v. Reward Soap Works 1984 PTC 19.
 340
Samrat Bidi Works and Ors Case313 it was held that the colour combination bn the
wrappers of the plaintiff and the defendant are similar and there are minor dissimilarities
and therefore the defendant was restrained.
In the Sahana Soap Works and Others Case314 it was held that the wrappers of both the
parties are deceptively similar and identical in design. As the plaintiff is the prior user of
the trademark, the defendant was rightly restrained by the trial court. In the Britannia
Industries Ltd Case315 the dispute pertained to biscuit under the trademark “50 50”. The
allegation of the plaintiff was that the defendant adopted trademark and wrapper identical
to that of the plaintiff. The defendant was restrained from manufacturing and selling
biscuits under the impugned trademark and impugned wrapper.
(ii) Injunction Refused
In the Surendra Kumar Maingi Case316 it was held that similarity of wrappers of the
defendant with that of the plaintiff is not such that may cause confusion and deception.
Mere similarity in size and language is not sufficient to mislead. In the Punjab State Co­
operative & Marketing Federation Ltd Case317 it was held that the wrapper of the
defendant was not deceptively similar to that of the plaintiff and therefore the plaintiff
was not entitled to relief of injunction.
21. Trade Dress and Label
The defendant cannot be allowed to use a label which is deceptively similar to that of the
plaintiff which causes confusion and deception. The plaintiff has to prove that the label of
the plaintiff has goodwill and reputation attached to it and the defendant’s use of the same
will cause damage or there is likelihood of damage. The below mentioned judgements
will assist jurists, lawyers and students in understanding protection given to labels of
products in India.
(a) Label Defined
In the William Grant & Sons Ltd Case318 Mahinder Narain, J defined label as: “In my
view, a label is a device which is affixed by a manufacturer on a product/article and
contains material placed upon it by the manufacturer of the goods so as to distinguish his

313 Samrat Bidi Works and Ors v. Davalal Meghii & Co 1999 PTC (19) 610.
314 Sahana Soap Works and Others v. Kanpur Trading Company Pvt. Ltd & Others 2002 (25) PTC 369 (All).
315 Britannia Industries Ltd v. Om Food Products 2002 (25) PTC 472 (Del).
316 Surendra Kumar Maingi v. Dodha House 1998 PTC (181249.
317 Punjab State Co-operative & Marketing Federation Ltd v. Sona Spices Pvt. Ltd 1987 PTC 294.
318 Supra n. 195.
 341
own goods from the goods of other manufacturers, and contains information regarding the
•3 JQ

nature and quality of the product, or goods to which the label is appended or affixed”.
(b) Deceptively Similar Label
If the label of the defendants product is deceptively similar to that of the plaintiff such as
to cause confusion and deception courts in India will grant injunction in favour of the
plaintiff and against the defendant. There is no yardstick to determine whether label of the
defendant is deceptively similar to that of the plaintiff or not. The courts compare labels
as a whole and do not do microscopic examination of the same. If they come to the
conclusion that average consumer with imperfect recollection will be confused injunction
is granted.
(i) Injunction Granted
In the Nestle Case320 the plaintiffs sold milk under a labeTwith the trademark “Ideal”
which had become well known amongst the customers. Defendants sold milk under the
name “Cordial” in a container with the label resembling those of the plaintiffs in the get-
up. Interlocutory injunction was granted. In the Sidhpur Sat-Isabgol Factory Case321 the
defendants copied the plaintiffs label completely except for the word “Ganesh” in place of
“Telephone”. Injunction was granted. M. Hidayatyllah J in the Beni Prasad Aggarwal
Case322 observed that if two labels are kept side by side and carefully scrutinised, there
are several distinguishing features in the two labels but such a scrutiny is not warranted in
an action of infringement of a trademark or in a passing off action.
In the Manmohan Garg Case323 the defendant was using a deceptively similar label
Khargosh Chap for Bidis in respect of the design, layout, get-up and colour scheme. The
Supreme Court held that there is no error in the order of the Single Judge and the Division
Bench that the labels are deceptively similar and the plaintiffs are prior users who have
established infringement their mark. In the Poonam Detergent Industries Case324 the label
of the defendant was held to be deceptively similar to that of the plaintiff. In the M/s
Richardson Vicks Inc. & Anr Case325 the defendant was using similar get-up and design
of label and design of container as that of the product “Vicks Vaporub” of the plaintiff
and the defendants were restrained from passing off their products as that of the plaintiff.

319 Ibid.
320 Nestle v. Doshi AIR 1939 Cal 466.
321 Supra n. 236.
322 Beni Prasad Aggarwal v. Hindustan Lever Ltd AIR 1958 Madhya Pradesh 348.
323 Manmohan Garg v. Radha Krishna Naravan Das 1998 PTC (18) (SC) 297.
324 Poonam Detergent Industries v. Kapur Trading Company Ltd 2004 (28) PTC 161 (All).
325 Supra n. 256.
 342
In the Mohan Meakin Ltd Case326 it was held that the defendants label being deceptively
similar to that of the plaintiff label and the plaintiffs have been able to make out a prima
facie case that the defendant’s are likely to pass off their whisky for that of the plaintiff
and the defendant’s were accordingly injuncted. In the Panipat Co-Operative Sugar Mills
Ltd Case327 it was held that the label of the defendant is deceptively similar to that of the
plaintiff and there is a possibility of consumers of whisky getting confused and injunction
was granted against the defendant. In the Hawkins Cookers Ltd Case328 the plaintiff was
able to establish that the defendant had infringed the “Hawkins” label of the plaintiff and
had also resorted to passing off their goods deceptively as the goods of the plaintiff.
(ii) Injunction Refused
In the Kirorimal Kashiram Mkg. & Agencies Pvt Ltd Case329 it was held that there is no
similarity in label of the defendant with the label of the plaintiff. Even an illiterate person
can see that there are two deers on the label or there is only one deer on the label.
Injunction application was dismissed. In the Brooke Bond Case330 it was held that the
trademark “Red Label” with a particular colour scheme and get-up was not deceptively
similar to a red label with the trademark “Red Apple”.
(c) Deceptively Similar Label: Class of Consumers
In the Vrailal Manilal & Co Case331 two labels of different manufacturers of biri came up
for consideration. The court came to the conclusion that that the resemblance between the
two labels was extremely close. The court also came to the conclusion that biri is
consumed by illiterate and unwary purchasers and it would be impossible for them to
decipher an imperceptible difference. Following this decision Calcutta High Court in the
Pataka Biri Mfg. Co. Ltd Case332 held that biri consumers are mostly illiterate persons and
as such it would not be possible for them to decipher the product of the defendant’s with
that of the plaintiff when the rival labels are similar.
In the Pernod Ricard S.A. France & Anr Case333 the court held that even a seasoned
consumer is liable to be mislead by the “Imperial Gold” label and the overall trade dress
of the bottle of the defendants including its shape into believing that the plaintiffs group,

326 Mohan Meakin Ltd v. Kashmir Dreamland Distilleries and Anr 1990 PTC 209.
327 Panipat Co-Operative Sugar Mills Ltd v. Mohan Meakin Breweries Ltd PTC (Suppl) (2) 898 (P & H)
(DB).
328 Hawkins Cookers Ltd v. Sonia Kitchenware Industries PTC (Suppl) (1) 383 (Del).
329 Kirorimal Kashiram Mkg. & Agencies Pvt Ltd v. Shree Sita Chawal Udyog 2008 (37) PTC 466 (Del).
330 Brooke Bond v. Manibhai 1988 IPLR 143.
331 Vrailal Manilal & Co v. N.S. Biri & Co 1988 (8) PTC 62 (Del).
332 Supra n. 208.
333 Supra n. 259.
 343
which is engaged in the sale of “Imperial Blue” whisky for more than a decade, has
launched “Imperial Gold” with the trade dress to the plaintiffs “Royal Stag” whisky.
22. Trade Dress and Carton
The defendant cannot be allowed to use a carton which is deceptively similar to that of
the plaintiff which causes confusion and deception. The plaintiff has to prove that the
carton of the plaintiff has goodwill and reputation attached to it and the defendant’s use of
the same will cause damage or there is likelihood of damage. The below mentioned
judgements will assist jurists, lawyers and students in understanding protection given to
cartons of products in India.
(a) Carton Defined
In Compact Oxford Dictionary Thesaurus & Wordpower Guide Carton has been defined
as: “a light cardboard box or container”. If the carton of the plaintiff has by long and prior
use and advertisement become exclusively identified by him then in a passing off action
the defendant will be injuncted from using a deceptively similar carton.
(b) Deceptively Similar Carton
If the carton of the defendants product is deceptively similar to that of the plaintiff such as
to cause confusion and deception courts in India will grant injunction in favour of the
plaintiff and against the defendant. There is no yardstick to determine whether carton of
the defendant is deceptively similar to that of the plaintiff or not. The courts compare
carton as a whole and do not do microscopic examination of the same. If they come to the
conclusion that average consumer with imperfect recollection will be confused injunction
is granted.
(i) Injunction Granted
In the Pidilite Industries Ltd Case334 it was held that the entire features of the artistic
works and the colour scheme on the front part of the plaintiffs carton are seen on the
defendant’s carton and the defendant’s were injuncted. As the rear face of the carton was
different it was held that there was no infringement in relation to the rear face. In the
Souza Cruz Case335 it was held that the defendant’s infringing carton is a replicate of the
plaintiffs carton and no one can be allowed to enrich himself on the goodwill and
reputation built up or earned by anyone else and accordingly the defendants were
restrained from selling cigarettes, tobacco or related products in impugned cartons along
with trademark “Hollywood”. In the Godrej Soaps (P) Ltd Case336 the defendant’s were

334 Supra n. 279.

335Souza Cruz v. N.K. Jain and Others PTC (Suppl) (2) 892 (Del).
336 Godrej Soaps (PI Ltd v. Dora Cosmetics Co 2001 PTC 407 (Del).
 344
restrained from using the trademark “Glory” or any imitation of the plaintiffs trademark
“Crowning Glory” soap cartons. In the Hindustan Pencils Ltd Case337 the court held that
the defendant has copied the get-up and colour combination of the plaintiffs carton. The
intention of the defendant is to make illegal use of the goodwill enjoyed by the plaintiff
and the defendants were restrained from infringing the copyright of the plaintiff and
passing off its goods as that of the plaintiff.
(ii) Injunction Refused
In the J & P Coats Ltd Case338 it was held that as the defendant had changed the style,
lettering, colour scheme and get-up and the cartons as they stand today looking at the
overall structure there is no passing off as the cartons of the respondent are quite different
and there is no scope of confusion. In the Camlin Private Ltd Case339 it was held that
there is no deceptive similarity between the cartons of the defendant and the plaintiff and
therefore action of passing off cannot be maintained.
23. Trade Dress and Device
The defendant cannot be allowed to use devices on its trade dress which is deceptively
similar to that of the plaintiff which causes confusion and deception. The plaintiff has to
prove that the device used on its trade dress has goodwill and reputation attached to it and
the defendant’s use of the same will cause damage or there is likelihood of damage. The
below mentioned judgements will assist jurists, lawyers and students in understanding
protection given to devices used on the trade dress of products in India.
(a) Device Defined
In Compact Oxford Dictionary Thesaurus & Wordpower Guide Device has been defined
as a drawing or design. If the device on the plaintiffs trade dress has by long and prior use
and advertisement become exclusively identified by him then in a passing off action the
defendant will be injuncted from using a deceptively similar device.
(b) Deceptively Similar Device
If the devices of trade dress of the defendants product is deceptively similar to that of the
plaintiff such as to cause confusion and deception courts in India will grant injunction in
favour of the plaintiff and against the defendant. There is no yardstick to determine
whether devices on the trade dress of the defendant is deceptively similar to that of the
plaintiff or not. The courts compare devices as a whole and do not do microscopic

337 Hindustan Pencils Ltd v. Bangalore Cottage Industries. Gava 2006 (33) PTC 269 (Del).
338 J&P Coats Ltd v. Popular Thread Mills 1996 PTC (16) (DB) 688.
339 Camlin Private Ltd v. National Pencil Industries 1986 PTC 1.
 345
examination of the same. If they come to the conclusion that average consumer with
imperfect recollection will be confused injunction is granted.
(i) Injunction Granted
In the M/s Thapsons Pvt. Ltd Case340 the plaintiff was the proprietor of the trademark
Lotus and the device of lotus. It was held that use of trademark with similar device by the
defendants’ amounts to passing off. In the M/s Modi Threads Ltd Case341 the plaintiffs
were proprietors of the trademark “Cock Brand” with the device of cock in respect of
yam and thread. The adoption of similar device and the trademark by the defendant in
respect of threads was held to be infringement of the trademark of the plaintiff. In the M/s
Jindal Industries Limited Case the plaintiff was proprietor of the trademark/copynght
“Jindal” with device of map of India. The defendant was restrained from using the
trademark “Bindal” with the device of map of India and thus passing off their goods as
that of the plaintiffs’. In the WWF International Case343 the plaintiff was registered
proprietor of the trademark “Panda” and also owned copyright in the device of “Panda”. It
was held that use of trademark “Panda” with the device of “Panda” in respect of threads
amounts to infringement of copyright and passing off.
In the R. Paneerselvam Case344 the plaintiff was prior user and adopter of the trademark
“Appu Seeval” with the device of dancing elephant on a globe. The defendant started
using identically similar trademark in respect of same mark. The defendant was
accordingly injuncted. In the K.B. Venkatachala Mudaliar Case345 the defendant copied
the device of standing stag for safety matches and was accordingly injuncted. In the M/s
Mayor Brothers Case346 the defendant was restrained from using the device of the device
of head/face of a man which was deceptively similar to that of the plaintiff on chaff-cutter
knives. In the Montblanc Simplo-GmbH Case347 the defendant was restrained from using
the three ring device of the plaintiffs on writing instruments. In the Metro Playing Card
Co Case348 the device of tractor for playing card of the defendant was held to be
deceptively similar to that of the plaintiff. In the Saboo Sodium Chloro Limited Case349
the plaintiff who was proprietor of trademark “Tota” with device of parrot was able to

340 M/s Thapsons Pvt. Ltd v. M/s Ashoka Food Industries 1991 PTC 227.
341 M/s Modi Threads Ltd v. M/s Som Soot Gola Factory & Anr 1993 PTC 32.
342 M/s Jindal Industries Limited v. M/s Samana Steels Limited 1993 PTC 129.
343 WWF International v. Mahavir Spinning Mills Ltd 1994 PTC 250.
344 R. Paneerselvam v. M/s Mohammed Rafi 1990 PTC 240.
345 K.B. Venkatachala Mudaliar v. M/s Vania Match Works 1990 PTC 259.
346 M/s Mayor Brothers v. Viiav Industries and Anr 1985 PTC 208.
347 Montblanc Simplo-GmbH v. New Delhi Stationery Mart and Anr 2008 (38) PTC 59 (Del).
348 Metro Playing Card Co v. Wazir Chand Kapoor 1982 PTC 221.
349 Saboo Sodium Chloro Limited v. Shree Sodium Chloro Pvt. Ltd 2005 (31) PTC 658 (Del).
 346

establish case of infringement of copyright and passing off as the defendant was using
deceptively similar label. In the Chimanlal Narsaii Suhan Case350 the court held that even
though the respondents have used the device of ox instead of cow, the respondents mark
is likely to cause confusion.
(ii) Injunction Refused
In the Roshan Lai Oil Mills Ltd Case351 the plaintiff was proprietor of “Jumbo label” with
device of Aeroplane in respect of edible oils and the defendants were using trademark
“Jumbo label” with the device of elephant in respect of tea. It was held that the two
marks are visually dissimilar and the device used are also different and therefore ad
interim injunction was refused. In the Brooke Bond India Limited. Madras Case352 it was
held that the defendants were prior user of the trademark “Dilkush” in Marathi language
in device of heart in respect of tea. Regarding passing off as the defendant is prior users
and there being sufficient distinction between the get-up, packing and the writing on the
pouches there is no chance of deception and confusion.
In the Harbans Lai Malhotra & Sons Limited Case353 it was held that the defendant was
first to adopt the device of galloping horse and it cannot be said that the plaintiffs goods
in connection with the device of horse has obtained any distinctiveness and therefore no
injunction was granted to the plaintiff. In the S. Sudhakar and Shri Agro Foods Pvt Ltd
Case354 it was held that the device of sun rays on the defendant’s packages was different
from the device of sun rays from the plaintiffs packages and hence vacated interim
injunction. In the White Horse Distillers Ltd Case355the court held that there are sufficient
dissimilarities between the device of horses of the rival parties.
In the Surya Coconut Oil Industries Case356 the court observed that the device of half
“sun” and stylised “surya” cannot be said to be identical or deceptively similar so that a
reasonable person can be confused or deceived into believing that one mark is the same as
the other and hence neither party is entitled to claim injunction against the other. In the
R.S. Kandasamv and Others Case357 it was held that figure of frog and crocodile can
never be similar much less deceptively similar by any standards. Order of lower court
granting permanent injunction was set aside.

350 Chimanlal Narsaii Suhan v. Parasmal Mithalal Parmar 1997 PTC (17) (DB) 729.
351 Roshan Lai Oil Mills Ltd v. Assam Company Ltd 1996 PTC (16) 699.
352 Brooke Bond India Limited. Madras v. Kamlesh Trading Kalvan 1993 PTC 6.
353 Harbans Lai Malhotra & Sons Limited v. Wiltech India Limited 1983 PTC 136.
354 S. Sudhakar and Shri Aero Foods Pvt Ltd v. S.S.P. Durairai (Firm) and Mr. Durairai 2008 (36) PTC 150
(Mad).
355 White Horse Distillers Ltd v. The Upper Doab Sugar Mills Ltd, and Another PTC (Suppl) (2) 328 (Del).
356 Surva Coconut Oil Industries v. Surva Agro-Oils Ltd PTC (Suppl) (1) 495 (Del).
357 R.S. Kandasamv and Others v. New Joti Match Industries 1995 PTC 91.
 347
24. Trade Dress and Logo
Logos help in identifying the products of traders. The defendant cannot be allowed to use
a logo which is deceptively similar to that of the plaintiff which causes confusion and
deception. The plaintiff has to prove that the logo of the plaintiff has goodwill and
reputation attached to it and the defendant’s use of the same will cause damage or there is
likelihood of damage. The below mentioned judgements will assist jurists, lawyers and
students in understanding protection given to logos in India.
(a) Logo Defined
In Compact Oxford Dictionary Thesaurus & Wordpower Guide logo has been defined as:
“a design or symbol chosen by an organization to identify its products.” If the logo of the
plaintiff has by long and prior use and advertisement become exclusively identified by
him then in a passing off action the defendant will be injuncted from using a deceptively
logo.
(b) Deceptive Similar Logo
If the logo of the defendants product is deceptively similar to that of the plaintiff such as
to cause confusion and deception courts in India will grant injunction in favour of the
plaintiff and against the defendant. There is no yardstick to determine whether logo of the
defendant is deceptively similar to that of the plaintiff or not. The courts compare logos as
a whole and do not do microscopic examination of the same. If they come to the
conclusion that average consumer with imperfect recollection will be confused injunction
is granted.
(i) Injunction Granted
In the Ziff-Davis Inc Case338 the defendant was injuncted from copying the stylized logo
of the plaintiff and the trademark PC Magazine, Computer Shopper, Internet user and PC
Week. In the Hindustan Petroleum Corpn Ltd Case359 the defendant who copied the HP
logo of the plaintiff was injuncted. In the Pepsico Inc & Ors Case360 the defendant was
restrained from using the deceptively similar logo of “7 UP/SEVEN-UP” along with
deceptively similar mark “SEVENth UP/7th UP”.
(ii) Injunction Refused
In the J.R. Kapoor Case361 it was held by the Supreme Court that the word “Micro” is
common to trade and visual effect of logos of rival parties not being same in the mind of

358 Ziff-Davis Inc v. Dr. D.K. Jain and Ors 1998 PTC (18) 739.
359 Hindustan Petroleum Corpn Ltd v. H.P. Oil Corporation Ltd 2004 (28) PTC 362 (Bom).
360 Pepsico Inc & Ors v. Sunrise Beverages 2007 (35) PTC 687 (Del).
361 J.R. Kapoor v. Micronix India 1994 PTC 260.
 348
buyers, the order of High Court is set aside. In the Gomzi Active Case362 it was held by
the Supreme Court that the trade slogan “I am what I am” cannot be construed as a logo
or trademark of the plaintiff as it carried on business under “Gomzi” and therefore grant
of interim injunction will not be proper and directed the High Court to dispose of the
matter in 4 months. The High Court of Karnataka in the Reebok India Company Case363
gave a finding use of the slogan “I am what I am” along with the trademark “Reebok” by
the plaintiff was different from the use of the slogan “I am what I am” along with the
trademark “Gomzee” by the defendant and hence there is no possibility of consumers
being confused.
25, Trade Dress and Container
A container such as a bottle may be part of the get-up of goods of a trader if it is of a
peculiar shape which catches the eye and is retained in the memory of the purchasing
public and is associated in the mind of the purchasing public with the goods of that
particular trader alone and of no other. The defendant cannot be allowed to use a
container which is deceptively similar to that of the plaintiff which causes confusion and
deception. The plaintiff has to prove that the container of the plaintiff has goodwill and
reputation attached to it and the defendant’s use of the same will cause damage or there is
likelihood of damage. The below mentioned judgements will assist jurists, lawyers and
students in understanding protection given to containers of products in India.
(a) Container Defined
In Compact Oxford Dictionary Thesaurus & Wordpower Guide logo has been defined as:
“holder, receptacle, repository, vessel.” If the container of the plaintiff has by long and
prior use and advertisement become exclusively identified by him then in a passing off
action the defendant will be injuncted from using a deceptively container.
(b) Deceptively Similar Container
If the container of the defendants product is deceptively similar to that of the plaintiff
such as to cause confusion and deception courts in India will grant injunction in favour of
the plaintiff and against the defendant. There is no yardstick to determine whether
container of the defendant is deceptively similar to that of the plaintiff or not. The courts
compare containers as a whole and do not do microscopic examination of the same. If
they come to the conclusion that average consumer with imperfect recollection will be
confused injunction is granted.

362 Gomzi Active v. Reebok India Co. & Anr 2007 (34) PTC 161 (SC).
363 Reebok India Company v. Gomzi Active 2007 (34) PTC 164 (Kam).
 349
(i) Injunction Granted
In the Hi-Tech Foods Case364 the defendant’ container was deceptively similar to that of
the plaintiff’s in as much as the defendant’s container was also cylindrical and white with
a perforated lid identical to that of the plaintiffs container. The defendant was therefore
injuncted from passing off their goods as that of the plaintiffs. In the Shri Jawharlal and
another Case it was held that keeping in view the facts and the product as well as the
tin container and wordings thereon along with the photograph on the tin are so similar to
the product and the appearance of the tin being used by the plaintiffs to constitute passing
off. In the Anglo-Dutch, Colour & Varnish Works Private Limited Case366 it was held
that where the container of the defendant is practically identical to that of the plaintiff
passing off is made out. In the Castrol Ltd and Others Case367 it was held that the use of
the trademark “Castrol CRB Plus” in respect of printed material on lubricants, oil as well
as using the plastic container with the trademark “Castrol logo”, the defendants are
infringing the legal rights of the plaintiff by infringing trademark as well as copyright of
the plaintiff. The defendant’s are trying to pass off their goods as that of the plaintiff.
(ii) Injunction Refused
In the J & P Coats Ltd Case368 the court closely examined the two rival containers by
keeping them side by side and was unable to find any similarity between them as would
cause an average purchaser, however illiterate to mistake the figure of “dog” for that of
“anchor”. The court held that considering the shape, get-up, and the general look of the
two containers, there is no reason for disagreeing with the conclusions of the district
judge that the defendant’s box cannot pass off as that of the plaintiff.
26. Trade Dress and Packaging
■5£Q

In the Visaka Chemicals Case the court held that a comparison of the two packaging
leaves little manner of doubt that the attempt of the defendant’s is clearly to replicate the
packaging of the plaintiff. It is the total impact which has to be seen and not merely a
question of a particular colour combination being used. The defendant’s were accordingly
restrained.

364 Hi-Tech Foods v. Khanna Enterprises 1998 PTC (18) 689.

365 Shri Jawharlal and another v. M/s Bharat Tobacco Manufacturing Co 1984 PTC 110.
366 Suora n. 247.
367 Castrol Ltd and Others v. Mukesh Kumar & Another 2002 (24) PTC 316 (Del).
368 J & P Coats Ltd v. Chadha & Company (Indial PTC (Suppl) (1) 295 (Del) (DB).
369 Visaka Chemicals v. Mala Ram & Sons 2006 (32) PTC 441 (Del).
 350
27. Trade Dress and Pouch
The plaintiff in the case of Scientific Compounds and Processes Private Limited and
Another v. Hanuman Cottage Industry370 filed a suit of infringement and passing off on
the ground of deceptive similarity of pouches of the defendant. It was held that the
plaintiff is manufacturing and selling cleaning powder in polythene pouches under the
trademark “Sabena” and the defendant is dealing in same goods in pouches under the
trademark “Subeema” using almost identical artistic work, colour scheme and design with
minute and insignificant dissimilarities which will lead to confusion and deception.
Accordingly ad interim injunction was made absolute.
28. Trade Dress and Bag
If the defendant uses a bag to sell his goods which is deceptively similar to that of the
plaintiff and the plaintiff has by prior use established distinctiveness on his bag, the
defendant will be injuncted. The plaintiff in J.K. Corp Ltd Case371 the plaintiff filed suit
for passing off and infringement for restraining the defendant from selling cement in
deceptively similar bag. The court held that the defendant’s bag is by and large similar to
that of the plaintiff and accordingly issued injunction.
F. REVIEW
As seen hereinabove trade dress can be protected at common law through the tort of
passing off. A plaintiff must demonstrate goodwill and reputation, deception and
confusion due to misrepresentation and actual or potential damage. Passing off
essentially protects the goodwill of an individual or his business. Case laws stated
hereinabove has established that goodwill can exist in anything like mark, symbol, device,
label, wrapper, container, logo, shape, package, get-up, colour, colour combination.
Therefore trade dress can be effectively protected as get-up under the law of passing off.
Trade dress can be protected as get-up under the law of passing off in United Kingdom
and India. Trade dress is a common law remedy for protecting unregistered trademarks.
Basically passing off is connected with protecting unregistered trademarks. Get-up,
packaging etc if unregistered is protected under the law of passing off. Trade dress is also
part of trademark and no one can use the specific writing style, definite colour
combination and identifiable background and labelling on a product. When trade dress is
registered it can also be protected through action of infringement in United Kingdom and
India.

370 Scientific Compounds and Processes Private Limited and Another v. Hanuman Cottage Industry 2002
(24) PTC 249 (Mad).
371 J.K. Corn Ltd v. Pratibha Cement (P) Ltd 2002 (24) PTC 254 (Del).
 351
In the United States logos, symbols, trademark etc are protected under trademark law.
Although it has limits, trademark law in the United States, through Lanham Act, also
protects packaging of products, trade dress etc.
In the US, even without registration, a non functional and distinctive trade dress is
protected under section 43 (a) of the Lanham Act. While trade dress protection is not
expressly protected in the Lanham Act, it has evolved and been recognised through the
development of case law. The Lanham Act protects trade dress by preventing second
comer from offering a product or package that may cause consumer confusion with the
first comer’s product or package. To offer this broad protection, courts have continuously
expanded trade dress protection. Currently trade dress law protects almost any non
functional element that the ordinary purchaser sees including a product’s overall image,
including its size, shape, colour, graphics, packaging, label, texture, colour combinations
and specific sales methods. Although often noting these individual factors/elements,
courts will focus on the total combination of these elements in a product’s design when
determining trade dress infringement.372
The Two Pesos. Inc Case373 was the first case on the protection of trade dress to be
decided by the Supreme Court of the US. It granted a somewhat broad protection to the
trade dress of a Mexican restaurant by noting that such trade dress was inherently
distinctive and does not require proof of secondary meaning. The Wal-Mart Stores. Inc
Case374 divided the trade dress into two categories as product packaging trade dress and
product design trade dress.
The United States Supreme Court does not often hear trademark cases, but twice the court
has granted certiorari in cases involving trade dress issues. In this first Two Pesos. Inc.
-57c

Case , the court held that inherently distinctive trade dress is protectable without proof
of secondary meaning. In the second decision, in the Qualitex Co. Case376 the court held
that under the right circumstances, The Lanham Act permits registration of a trademark
that consists, purely and simply, of a colour.
In the US, trade dress law is not settled still. The circuit courts are divided on the issue of
inherent distinctiveness and trade dress classification into product package and product
configuration trade dress. There are other aspects of trade dress where the law differs

372 Charles Gielen- “Case Comment, EC: Trademarks-Shape mark- Whether Registrable as Trademark”
E.I.P.R [2003] 25 (2), N28-29.
373 Supra n. 108
374 Supran. Ill
375 Supra n. 108
376 Supra n. 8
 352
from circuit to circuit, for example, as to which party bears the burden of proof on
functionality and the standards to be applied in determining distinctiveness and
infringement in trade dress cases are being formulated and refined in appellate decisions
on an ongoing basis.
As far as colour of trade dress is concerned, in the United States, prior to Supreme 1
Court’s decision in the year 2000 in Wal-Mart Case377 , some read the Court’s Oualitex
c
0*70

Co. Case opinion as not settling the issue whether a single product colour can ever be
so unusual as to be “inherently distinctive” and hence protectable without proof of
secondary meaning. The court, albeit not in so many words, said that for this type of
trademark or trade dress, a single colour per se can never be classified as inherently
distinctive and all will always require proof of secondary meaning for protection and
registration. This dispute came to an end when the U.S Supreme Court in its Walmart
decision379 cleared up once and for all any lingering doubts about the rule in Qualitex
case380. In Wal-Mart Case381, the Supreme Court looked back to its previous decision and
stated that in Wal-Mart Case 382, it had held that no single colour can ever be inherently
distinctive. Single colour always requires proof of secondary meaning.
Trade dress is an evolving and dynamic area of trademark law. To obtain legal protection
for trade dress, an owner must establish in the United States that the trade dress is
inherently distinctive or has acquired secondary meaning and is non functional.
Over the years the law of trademarks in India has undergone considerable change. The
subject matter that comes within the ambit of law of trade dress has evolved, with
recognition of concepts such as shape marks, service marks and well known trademarks.
Trade dress is an important concept that has been perceived by the judiciary in India to
mean the total image of a product, which includes features such as size, shape, colour
(whether single or combination), texture and imagery.
In India in view of recent developments in trading and commercial practices and to give
effect to important judicial pronouncements, a need for simplification and harmonization
of trademark management system was felt. The new Trade Marks Act, 1999 which came
into force in September 2003 is the result of this realization. The trademark law in India
has undergone drastic reform resulting in the repeal of the Trade and Merchandise Marks

377 Supran. 111.

378 Supra n. 8.
379 Supran. 111.
380 Supra n. 8.
381 Supran. 111.
382 Supra n. 8.
 353
Act, 1958, by the Trade Marks Act, 1999. The new Act of 1999 makes the Indian law at
par with international standards. The new Act has broadened the definition of trademarks.
The new legal definition of a trademark under the Act consists of the shape of goods,
packaging or combination of colours or any combination thereof. A package in now
protected under the Act, which includes any case, box, container, receptacle, vessel,
casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper, and cork.
Thus, the new definition of trademark in India broadly encompasses almost all the
elements of trade dress under the United States law.
The Indian Trademark Act, 1999 is a reproduction of the United Kingdom’s Trade Mark
Act, 1994 as India follows the English trademark law since inception. Unlike the United
States Lanham Act, 1946, the United Kingdom Trade Mark Act, 1994 and Indian Trade
Mark Act, 1999 do not have provisions like section 43 (a) of the Lanham Act to protect
unregistered trade dress or allow registration of a trade dress which qualifies the tests of
distinctiveness and source identifier. Similar to position in United Kingdom, the
protection to unregistered trade dress can be found within the ambit of the common law
remedy of passing off. Trade dress can be protected as get-up under the law of passing off
in United Kingdom and India. Get-up, packaging, business strategy, marketing techniques,
advertisement themes etc. can also be protected under passing off.
As seen hereinabove, traditionally, the Indian judiciary deemed trade dress to be infringed
only when the word mark itself was copied either alone or in conjunction with label
graphics. This was reflected in the Indian courts judgements such as the Kellog Co.
Case.383 In that case the Delhi High Court denied injunction on the ground that the
similarity in certain colour combinations was outweighed by differences in the word
marks at issue. The Indian gospel on trade dress had for a while been the decision in the
Kellog Co. Case384 where the Delhi High Court, despite enumerating the similarities in
the trade dress of the plaintiffs and defendant’s products, denied an injunction to the
former while observing that the test was to see the product’s as a whole and in doing so
the similarity in certain colour combinations was outweighed by the differences in the
word marks of the plaintiff and defendant.
In recent times there has been a perceptible shift in the approach of the judiciary to
passing off actions related to trade dress. This change approach can be gauged from the

383 Supra n. 210.

384 Ibid.
385 SwetaSree Majumdar- “Painting The Town Red (And White): India Law Recognizes Trade Marks
Rights In A Colour Combination” E.I.P.R. 2004,26 (8), 365-368.
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William Grant and Sons Ltd Case386 and the Colgate Palmolive Co Case.387 Both cases
were concerned with violation of trade dress and in both actions the courts granted
injunctions in favour of the plaintiffs. In the William Grant and Sons Ltd Case388 while
the names of both the parties’ labels were different, the court held that the identical
copying of the colour scheme and layout of the plaintiffs label and trade dress by the
defendant amounted to dishonest use of the trademark and hence granted injunction.
Similarly the Colgate Palmolive Co Case389 was a landmark decision where the Delhi
High Court granted an injunction on the basis of use of similar colour combinations alone,
despite the fact that competing marks were different. The court issued a detailed ruling
taking into account the acquired reputation of the plaintiffs red and white colour
combination in its trade dress. It held that as the trademarks “Colgate” and “Anchor”
were written in English, they could not be distinguished by ordinary consumer in a
country where the literacy level is very low. It also held that if a product having a
distinctive trade dress has been in the market for decades, it will have acquired secondary
meaning on account of its reputation and goodwill earned at great expense.
There is a subtle distinction with the new standard adopted by the Indian courts. On a
comparative analysis of the William Grant and Sons Ltd Case390 and the Colgate
Palmolive Co Case391 is that in the former case a detailed examination of the respective
labels was entered into by the courts in determining infringement of trade dress. The
approach adopted by the court in the Colgate case in addressing issues concerning trade
dress was very different. The court did not engage in a through examination of the rival
parties marks. A far simpler standard was laid down i.e. if on an overall impression, there
is a likelihood of confusion on the part of the ordinary consumer, infringement is bound
to occur. In this backdrop, the decision of the Delhi High Court in the Colgate Palmolive
Co Case392 comes like a breath of fresh air, clearly charting new territory for Indian Trade
Mark Law. In this case the court held that it is the overall impression that a consumer gets
as to the source and origin of the goods from visual impression of colour combination,
shape of the container, packaging etc that matters. If an unwary, illiterate consumer gets
confused as to the source of origin of the goods which he has been using for long periods
by getting the goods in a container having a particular shape, colour combination and get-

386 Supra n. 195.

387 Supra n. 198.
388 Supra n. 195.
389 Supra n. 198.
390 Supra n. 195.
391 Supra n. 198.
392 Ibid.
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up, it amounts to passing off. If we analyse this case, proof of acquired distinctiveness
through secondary meaning (as required in the product design/configuration trade dress
cases in US) is necessary to prove goodwill and reputation through long use and existence
in the market by the plaintiff.
The law relating to trade dress is still in its infancy in India. Nevertheless, passing off can
provide a good alternative remedy for protecting unregistered trade dress and the
initiative has already started in the Colgate Palmolive Co Case393
Trade dress as a source indicator is especially important in a country such as India where
the majority of population is illiterate or semi literate. Trade dress is a useful way for the
consumers who cannot read the word elements of a trademark to obtain a correct product.
The Kellog Co. Case394 implies that differing word marks are sufficient to remove any
likelihood of confusion notwithstanding the presence of striking trade dress elements on
the other hand William Gant and Sons Ltd case and the Colgate case suggest that
strikingly similar trade dress elements are sufficient to cause confusion even where the
word marks involved are completely different. The approaches taken by the courts in
these cases are also different.
Despite contradictory state of the law, it is important to realize that the significance of
particular trade dress elements against word trademarks in determining the possibility of
confusion is entirely a question of fact and not law.
There is a tendency to rely heavily on case law to assess similarity of trade dress whereas
in analyzing a multi-feature mark it is very important to realize that there are several
elements involved in creating a brand. These elements may include the word mark and/or
multiple graphic features viz. iconic (eg, picture of a dog to convey feature of a dog),
symbolic (eg, picture of a flag to convey meaning of a country) or indicative (eg, picture
of smoke to convey meaning of fire). The importance of graphic elements can be
understood by the fact that there is a specialized science of visual semiotics, which deals
with interpretation of symbols and their meaning to a class of customers. Therefore,
proper appreciation of significance of a trade dress requires the courts to analyse
empirically what certain elements mean to the people to whom they are addressed. The
courts should be encouraged to examine expert testimony or evidence to ascertain the
significance of various trade dress elements and their recall value in determining the
likelihood of confusion. In India the recent years have seen an interesting shift injudicial

393 Supra n. 198,

394 Supra n. 210.
 ^ 356

perception. The tests for passing off have been interpreted with immense judicial
creativity.
Another important area of trade dress is colour of the trade dress in which products are
dressed. In the N. Ranea RaO & Sons Case395 Kishan Kaul, J discussed the American law
and concurred with the Campbell Soup Co. Case396 where the court had observed that a
man cannot acquire a trademark by colour alone. However if colour is combined with
other things, then what is entitled to protection in the sum total of the combination which
makes up respective labels for the goods. Thus, there may not be any right in any single
colour, but the use of combination of colours coupled with mark and the manner of
arrangement on the box/container, would be of significance. In the Colgate Palmolive
Company and another Case397 also the court held that monopoly of colour scheme of red
and white cannot be allowed. Red is a basic colour and the red and white colour
combination is common to the toothpaste trade in the domestic as well as the international
market and cannot be monopolized by any party.
In conclusion, trade dress is a fascinating legal area in United Kingdom, United States of
America and India. There are many issues which are not usually present in word
trademark cases, such as functionality. Trade dress law continues to evolve and be refined
by courts.

395 Supra n. 263.

396 Supra n. 147.
397 Supra n. 244.