Trade Dress: A relatively new IPR

A recently decision of the Delhi High Court, which is full of pictures of competing products, brings to fore a relatively new IPR namely "trade-dress". Authored by Nandrajog and Gupta JJ. of the Delhi High Court, their decision in Devanagiri Farms Pvt. Ltd. v. Sanjay Kapur [FAO(OS) 247/2014] offers an interesting insight to both the students of law as also the subject-matter experts as to what constitutes trade-dress protection law in the context of Indian IPR regime.

The case of the Respondents was that they were selling tea in a niche packing for over decades which packing was adopted by the Appellant to sell its similar product and hence the lis. In order to reflect upon the degree of similarity in the two packings, the High Court reproduced the pictures of the competing products which was essential in view of the High Court for "words may sometimes mislead, and the eye may be a better medium to convey a thought".

Having noted the similarity in the product packing, the High Court applied the following test to reach to its conclusion;

"7. Tested on the well recognized touchstone of the principle of deception, it would be apparent to the naked eye that any purchaser of tea with the usual imperfect recollection to which all humans are prone to, would be deceived when she comes across the tea packaged by the appellant.
8. It is the overall get up and similarity which has to be seen and not the minor variations because it is similarity which strikes and not the dissimilarities which distinguish when an ordinary person recollects an object seen in the past."

In view of the High Court the law is well settled in terms of various decisions, including those of the Supreme Court which requires the judge to examine "the overall effect of a colour scheme which has to be the focus of attention in a dispute concerning a packaging material in which the product is sold". On this background the High Court opined that there indeed was deception and violation of trade-dress in the following terms;

"Commonsense guides us that if two persons sell their product in same size rectangular shaped cuboid, nobody can urge that there is deception, but where the add-on grievance is to fabric sleeve used over the rectangular shaped cuboid, deception may occur if the overall similarity in the get up is of the kind that an ordinary purchaser, with the usual imperfect recollection is likely to be deceived. There is no case law cited, and we know of none that merely because a trademark is displayed on the packaging material, notwithstanding a striking similarity in the packaging material there would be no likelihood of deception. Whilst it may be true that in issues concerning trade dress the Courts have considered the display of a trademark, but it is only one of the various factors put in the weighing basket. It needs no argument to bring home the point reached by the learned Single Judge that the overall get up of the trade dress, even taking into account the display of the trademarks, is likely to cause deception; save and except to look at the packaging of the two competing products; and this is the reason why we have reproduced the coloured printout of the packaged product.
13. So striking is the theft by the appellant of the packaging used by the Kapurs that even an elite, educated, widely exposed and travelled person is likely to be deceived."

On such note the High Court has concluded in favour of trade-dress protection. An interesting decision indeed.