devagiri farms ltd vs. sanjay kapur and anr

CHENNAI3rd Floor, ‘Creative Enclave’,

148-150, Luz Church Road,Mylapore,

Chennai - 600 004.Tel: +91 - 44 - 2498 4821

BANGALORE Suite 920, Level 9,

Raheja Towers,26-27, M G Road,

Bangalore - 560 001.Tel: +91 - 80 - 6546 2400

COIMBATOREBB1, Park Avenue,

# 48, Race Course Road,Coimbatore - 641018.

Tel: +91 - 422 – 6552921

[email protected]

WEBSITEwww.altacit.com

Devagiri Farms Pvt. Ltd. vs

Mr. Sanjay Kapur & Anr.

PONKAVITHATrademark Department



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


• Sanjay Kapur and Naina Kapur, hereinafter referred to as Kapurs sell tea under the trade name 'San-Cha'.

• Kapurs pack the tea which they sell in a soft paper packet shaped as a rectangular cuboid; the package being slipped into a fabric sleeve and tied at the mouth by a traditional drawstring/dori.

•The grievance is to the fabric sleeve(s) used by the Devagiri Farms Ltd, the appellant.

•The appellant sells tea under the trademark BAGAN. The Kapurs under the trade name San-Cha.

FACTS



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


WHAT IS TRADE DRESS

• Trade dress refers to features of the visual or sensual appearance of a product that may also include its packaging, shape, combination of colors which may be registered and protected from being used by competitors in relation to their business and services. The characteristic includes their shape (3 dimensional), packaging, color, graphic design of the product.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


OBJECTIVE OF PROTECTION OF TRADE DRESS

• Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products; to prevent a consumer from buying one product under the belief that it is another. For Ex. Apple Inc. recently secured the registration over the design of its flagship Apple Stores as trade dress.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


Essentials of Trade Dress

• Anything that creates the overall look and feel of a brand in the marketplace could be a trade dress.

• Consumer really believes that the trade dress is a source indicator of distinguishing the goods and services of one from those of others.

• The configuration of shapes, designs, colors, or materials that make up the trade dress in question must not serve a utility or function outside of creating recognition in the consumer's mind.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


TRADE DRESS UNDER INDIAN LAW

• The Indian law does not have a separate provision for the trade dress under its existing Trade mark legislation unlike the US law which recognizes the concept trade dress under Section 43(a) of the Lanham Act.

• The new Trade Marks Act, 1999, which came into force in September 2003 is largely based on the English Trade mark Act, 1994 recognized the concept of trade dress on the lines of The Lanham Act.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


• The amended Act of 1999 recognizes trade dress through the new definition of Trade mark. Section 2 of the Trade Marks Act, 1999 defines the following as:

• (m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof;



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


• (q) "package" includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper an cork; Hence the new definition of trade mark under Indian law comprises all the elements of the trade dress as under US law. The Indian courts have been recognizing the concept of trade dress even before 2003.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


• In a suit seeking damages and permanent injunction, prayer for an interim injunction pending disposal of the suit has been granted in favour of Kapurs and against the appellant. IA No.5961/2012 filed under Order 39 Rule 1 & 2 of the Code of Civil Procedure; and since an ex-parte ad- interim injunction was granted against the appellants, IA No.7602/2012 filed under Order 39 Rule 4 of the Code of Civil Procedure by the appellant have been disposed of; the former being allowed and the latter dismissed.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


Comparison of the two trade dress reveals that– The same shade of Maroon and Blue colour in

the backdrop with a floral design as are the Kapurs; albeit the floral print being different, but with same golden yellow colour.

– The third shade, being a Green colour, forming the backdrop hue of the third trade dress is also with a floral design; albeit the floral print being different in design as also colour.

– For the fourth colour used, there is complete identity inasmuch as the same shade of Red without any floral design is used by the appellant.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


• That the trade dress sought to be protected by Kapurs is functional and hence not capable of protection.

• The trademarks are prominently displayed by Kapurs as also the appellant and thus there cannot be any deception.

• The cause of action was not one of infringement of the trademark.

• The class of buyers was the elite, educated and widely exposed to the ways of the world.

APPELLANTS’ CONTENTIONS



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


• 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.

• 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.

RESPONDENT’S ARGUMENTS



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


In a well reasoned judgment the learned Single Judge has captured the sales effected by the Kapurs, the advertisements issued by them to market their product. Orders placed on them in the last 30 years showing tea manufactured by them acquiring such reputation that when the Prime Minister of India visited Japan in the year 1986, the Ministry of External Affairs placed an order for the tea manufactured by the Kapurs.

JUDGEMENT



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


The learned Single Judge concluded 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. 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.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


•Relying on several case laws the Single Judge opined that it is 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.

•The appeal was dismissed with costs in sum of Rs.25,000/- against the appellant and in favour of the Kapurs.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

[email protected]


devagiri farms ltd vs. sanjay kapur and anr

Law