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High Court Of Delhi
COLGATE PALMOLIVE COMPANY - Appellant
Versus
ANCHOR HEALTH AND BEAUTY CARE PVT.LTD. - Respondent
I.T.A. 3502 of 2003
Decided On : 10/29/2003
TRADEMARK - PASSING OFF - INJUNCTION - COLOUR COMBINATION - TRADE DRESS - SIMILARITY - DECEPTIVE SIMILARITY - LIKELIHOOD OF CONFUSION - SECONDARY MEANING - DISTINCTIVENESS - UNFAIR COMPETITION - DELAY - LACHES - ACQUIESCENCE - REGISTERED USER - SECTION 2(J), 46(1)(B), 48 OF THE TRADE MARKS ACT, 1999.
Fact of the Case:
Plaintiffs, proprietors of the trademark "Colgate", filed a suit against the defendant for passing off their goods as those of the plaintiffs by using a similar trade dress, particularly the colour combination of "red and white", on the container of its product, "tooth powder". The plaintiffs claimed that the defendant's actions constituted an infringement of their trademark and amounted to unfair competition.
Finding of the Court:
The court held that the plaintiffs had established a prima facie case for injuncting the defendant from using the colour combination of red and white in that order as trade dress on the container and packaging of its goods. The court found that the colour combination, get up, lay out and size of the container constituted a trade dress which involved the overall image of the product's features and was liable to cause confusion in the minds of unwary customers. The court also held that the defendant's use of the colour combination was dishonest and that the delay in filing the suit was not fatal to the plaintiffs' claim for an injunction.
Issues: 1. Whether the defendant's use of the colour combination of red and white on the container of its tooth powder constituted passing off of the plaintiffs' goods? 2. Whether the plaintiffs had established a prima facie case for injuncting the defendant from using the colour combination of red and white? 3. Whether the defendant's use of the colour combination was dishonest? 4. Whether the delay in filing the suit was fatal to the plaintiffs' claim for an injunction?
Ratio Decidendi: 1. The court held that the defendant's use of the colour combination of red and white on the container of its tooth powder constituted passing off of the plaintiffs' goods because: (a) the colour combination, get up, lay out and size of the container constituted a trade dress which involved the overall image of the product's features and was liable to cause confusion in the minds of unwary customers; (b) the defendant's use of the colour combination was dishonest; and (c) the delay in filing the suit was not fatal to the plaintiffs' claim for an injunction. 2. The court held that the plaintiffs had established a prima facie case for injuncting the defendant from using the colour combination of red and white because they had shown that: (a) they had been using the colour combination for a long period of time; (b) the defendant had entered the market much later than them; (c) there had been no delay in filing the suit for grant of the ex parte injunction; (d) their trademark had become so distinctive and identical with their goods that it had imprinted upon the minds of the public at large that the goods belonged to them; and (e) there was an element of dishonesty on the part of the defendant to pass off his goods as that of the plaintiffs on the premise of deceptive similarities.
Final Decision: The court granted an ad interim injunction restraining the defendant from using the colour combination of red and white in that order on the container/packaging of its goods viz. the "tooth Powder".
( 1 ) THROUGH this application under Order 39 Rule 1 and 2 CPC the plaintiff seeks ad interim injunction against the use of trade dress and colour combination of one third red and two third white, in that order, on the container of its product viz. Tooth Powder as by adopting the similar trade-dress particularly the colour combination of "red and white"the defendant has committed offence of "passing off" goods of plaintiff as its own. There is no dispute as to the trade names as these are distinct and have no kind of similarity whatsoever. Plaintiff s trade name is "colgate" and that of defendant is "anchor". Relevant facts need to be capitulated in brief.
( 2 ) PLAINTIFF no. 1 is a company incorporated under the laws of United States of America having its principal office at Newyork. Plaintiff no. 2 is a public limited company having its registered office at Mumbai. Plaintiff no. 1 is the proprietor of the trademark "colgate" whereas plaintiff no. 2 is the registered or licenced user and has been manufacturing and marketing dental products in India under the trademark "colgate".
( 3 ) THE defendant, Anchor Health, is a company incorporated under the Indian companies Act, 1956 and carries on the business as manufacturers and marketeers of dental products under the trademark "anchor". The defendant is in the said business since 1996. The plaintiffs have been chasing the defendant since then as according to them the defendants have been trespassing the plaintiff s intellectual property right and have filed as many as three suits against the defendants pertaining to different products.
( 4 ) THE product which is subject matter of the instant proceedings is a "tooth Powder" under the trademark "colgate" sold in Cans bearing the distinctive get up and colour scheme or combination of colour comprising pre-dominantly of red and white background. They have been selling this product in India since 1951. Distinct feature of this combination is that around 1/3rd of the background of the upper part of the Can alongwith cap is in red colour and 2/3rd is in white colour and in that order. The trademark colgate appears in white against red.
( 5 ) SOME time in August, 2002 the plaintiffs improved the get up by introducing swoir and a yellow representation in the red coloured portion of the Can. It is claimed that it is because of the distinctive shape of the container and the red and white colour scheme and the overall get up that has helped the plaintiffs in attaining immense reputation and goodwill verging on acquisition of a secondary significance as indicative of the trade of the plaintiff s dental products. It is further claimed that it has become so familiar with the customers at large that they identify the article with the plaintiffs merely by the get up and the red and white colour scheme and for the purpose of the instant product i. e the tooth powder from the shape of the container also.
( 6 ) IN order to demonstrate the dishonest intention of the defendants in appropriating or adopting prominently similar trade dress in terms of layout, get up and colour combination with obvious intention to encash upon the reputation and goodwill of the plaintiffs, the plaintiffs have referred to the past history of the defendants in keeping track of the plaintiffs products in the market by way of illustrative instances of comparative charts of various products having substantial reproduction of the colour combination of the colour red and white not only in respect of packaging but also otherwise. It all began some time in the year 1996 and the first action taken by the plaintiffs in this regard was in a suit filed in 1996 before the Bombay High Court. However the plaintiff did not succeed in getting ad interim injunction from adopting the same colour scheme and layout mainly for the reason that the trademarks used by the parties were not the same. This action arose from the cartons of dental cream. Though the Appeal against
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