TRADE DRESS PROTECTION:

LIKELIHOOD OF CONFUSION, INFRINGEMENT AND PASSING OFF

SANKALP JAIN*

Likelihood of Confusion and Deceptive Similarity

It is well-established and settled that while adjudicating the issue concerning infringement or
passing off, it is the deception and likelihood of confusion which have to be considered. It
goes without saying that deception or confusion arises from similarities. In other words,
similarities are the source and origin of deception or confusion. It is a cardinal principle in
trademark law that similarities and not dissimilarities should be considered while determining
the issue of deception or likelihood of confusion.1 When the trade dresses of the two products
are so close that a purchaser is likely to mistake one for the other, it generally constitutes
deceptive similarity.2 The plaintiff must prima facie establish that the trade dress or get up of
the product used by the defendant is likely to deceive or cause confusion in the minds of the
public.3 If the plaintiff establishes to the satisfaction of the court that defendant's trade dress
is likely to cause confusion with trade dress of its own, the finding of the court that such
likelihood of confusion may lead to unfair competition, would be justified.4 It is, however,
relevant to note that the proof of similarity or resemblance in cases of infringement and
passing off can be different. In a passing off action, get up of the product and additions may
be relevant to enable the defendant to escape, however, in infringement cases, such facts do
not assume relevance.5

Likelihood of confusion in the context of trade dress is determined on the factors similar to
those on which trademarks of competing products are evaluated. These factors have been
evolved and judicially recognized by the Courts in India and read as follows:6

1. Strength of the trade dress,

2. Similarity between trade dresses of the plaintiff(s) and the defendant(s),
3. Evidence of actual confusion,

*
Associate at Lex Indis Law Offices (New Delhi).
1
Allied Blenders & Distillers Pvt. Ltd. v. Rock and Storm Distilleries Pvt. Ltd. 2015 (63) PTC 139 (Del).
2
Ibid.
3
Samsonite Corporation v. Vijay Sales, 1998 (18) PTC 372 (Del); Cadbury India Limited v. Neeraj Food Products,
2007 (35) PTC 95 (Del); Dabur India Limited v. Shree Baidyanath Ayurved Bhawan Pvt. Ltd. 2012 (51) PTC 441
(Del).
4
LA Opala R.G. Ltd. v. Cello Plast, 2018 (76) PTC 309 (Cal).
5
S. M. Dyechem Ltd. v. Cadbury (India) Ltd. 2000 (20) PTC 297 (SC); Assam Roofing Ltd. v. JSB Cement LLP, 2016
(68) PTC 37 (Cal); Shambhu Nath & Brothers v. Imran Khan, 2018 (76) PTC 365 (Cal); S.V.S. Oil Mills v. S.V.S. Agro
Refineries P. Ltd. 2002 (24) PTC 41 (Mad).
6
N. Ranga Rao and Sons v. Anil Garg, 2006 (32) PTC 15 (Del); LA Opala R.G. Ltd. v. Cello Plast, 2018 (76) PTC 309
(Cal); ITC Limited v. Godfrey Phillips (India) Limited, MANU/MH/0820/2020.
 4. Nature and type of goods/commodity,
5. Class of purchasers,
6. Mode of purchase,
7. Defendant's intent behind selecting the trade dress, and
8. Marketing channels used by the parties

To evaluate whether the defendant’s trade dress is deceptively similar to trade dress of the
plaintiff, in addition to the salient features found in both the marks as well as the
aforementioned factors, the motive and intention of the both parties must be taken into
consideration so as to arrive at a conclusion.7 Recently, ITC Limited v. Godfrey Phillips (India)
Limited8 it has been held by the High Court of Bombay that in testing whether the defendant's
trade dress and the cigarette dress is deceptively similar, the Court must see:

A. What are the salient features of the marks;

B. The marks are remembered by general impression(s) or some significant or

noteworthy details rather than by mere photographic recollection;

C. Overall similarity;

D. The marks are looked at from the view and first impression of prudent person of
average intelligence and imperfect recollection;

E. The marks are compared as a whole.

In Euro-Solo Energy Systems Limited v. Eveready Industries India Limited,9 the High Court of
Calcutta was of the opinion that in the interim stage, there is no necessity for critical
examination of the trade dress and get up to discover any dissimilarities. In another recent
ruling, i.e. Lifestyle Equities C.V. v. Royal County of Berkshire Polo Club Ltd.10 the Hon’ble
Delhi Court has put forward that mere similarity of the length and circumference of the bottle
would not prima facie exhibit confusing or deceptive similarity in the minds of average
consumers. It is a settled principle of law that if the impact of the product features is only
decorative or aesthetic with no source identifying role, it cannot be given exclusive rights
under the law of trade dress.11 The Court has to examine the two products for broad
similarities. The trade dress of the rival products must be compared and evaluated as a whole
and overall similarity is sufficient to make out a case of passing off.

7
ITC Limited v. Ganesh Flour Mills, 2015 (63) PTC 217 (Mad).
8
MANU/MH/0820/2020.
9
MANU/WB/1400/2009.
10
2019 (79) PTC 591 (Del).
11
Supra note 4.
Infringement and Passing Off

When the act of the defendant(s) is against the norms of fair and accepted trade practices
and leads to erosion and dilution of the uniqueness and distinctiveness of the trade dress of
the plaintiff's goods, it amounts to infringement of trademark and passing off its products.12
The term distinctive when used for the purpose of deciding the question of infringement/
passing off must be taken as factually distinctive and not mere assertion by the plaintiff that
his products are inherently distinctive.13 For determining infringement of trade, if the plaintiff
has defined the trade dress as the overall image or impression of his product, packaging and
advertising, then it is this combination of all these factors that should to be compared with
the corresponding image or impression of defendant's product.14 For asserting a claim for
infringement of trade dress, the following elements must be pleaded and proved:

1. The plaintiff owns protectable trade dress in a clearly articulated design or

combination of elements that is either inherently distinctive or has acquired
distinctiveness through secondary meaning.

2. The accused mark or trade dress creates likelihood of confusion as to source or as to

sponsorship, affiliation or connection.15

If the trade dress is registered, the registration would be a presumptive evidence of non-
functionality and the burden of proving functionality would be on the accused defendant. But
if the trade dress is not registered, the plaintiff must prove that the trade dress is not
functional.16

Passing off action is based on the premise that the defendant is passing off its product as that
of the plaintiff. The plaintiff has to establish that there is a likelihood of confusion if the
products of the plaintiff are sold in the same trade dress. It is pertinent to note that a passing
off action is not confined or restricted to claims on trademark alone; it covers trade dress,
product shape, packaging, colour, visual and overall representation of the article to the
consumers.17 It is a settled principle of law that in an action for passing off, there must be
something more than just similarity between the goods to establish distinctiveness and
goodwill in a trade dress or get up.18 In the context of passing off, trade dress, get up of the
packaging, presentation of the product through label constitute essential components of the

12
Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd. 2003 (27) PTC 478 (Del).
13
Supra note 3.
14
Supra note 4.
15
Supra note 4.
16
Supra note 4.
17
Dart Industries Inc. v. Techno Plast, 2016 (67) PTC 457 (Del); SRMB Srijan Private Ltd. v. Super Smelters Ltd.
2019 (80) PTC 354 (Cal).
18
Supra note 4.
goodwill and reputation of a commercial enterprise.19 However, mere copying does not
amount to passing off. The similarities of trade dress have to be substantial from the look of
the rival products to constitute the mischief of passing off.20 The Court is required to see the
overall impression of the image to find out whether it would amount to trade dress passing
off.21 To constitute passing off in trade dress, the plaintiff has to establish the following
ingredients:22

1. That there is goodwill or reputation attached to the goods or services offered by the
plaintiff, in the mind of the purchasing public, i.e., the consumers, who associate or
identify such goods or services by virtue of trademark used, including the trade dress,
get-up, signs, packaging and labels.

2. That the defendant resorted to misrepresentation which made the consumers believe
that the defendant's goods are those of the plaintiff.

3. That the defendant's action caused damage or is calculated to cause damage to

goodwill or reputation of the plaintiff.

If the first glance of the article without going into the minute details of the colour
combination, getup or lay out appearing on the container and packaging gives the impression
as to deceptive or near similarities in respect of these ingredients, it validates a case of
confusion and amounts to passing off one's own goods as those of the other with a view to
encash upon the goodwill and reputation of the latter.23 The law of passing off is essentially
the law of ‘business morality’. As per the concept of business morality, the defendants cannot
use trademarks or trade dress or getup or other aspects similar to that used by the plaintiff.24
The issue of entitlement of plaintiff to succeed in a suit for passing off is by proving to the
satisfaction of the court that the trade dress, get up or any other aspect has acquired

19
Dart Industries Inc. v. Techno Plast, 2016 (67) PTC 457 (Del); Dart Industries Inc. v. Techno Plast, 2017 (70) PTC
94 (Del); Dart Industries Inc. v. Techno Plastic Industries, MANU/TN/3991/2016; Techno Plastic Industries v. Dart
Industries Inc. 2017 (71) PTC 278 (Mad); LA Opala R.G. Ltd. v. Cello Plast, 2018 (76) PTC 309 (Cal).
20
Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd. 2003 (27) PTC 478 (Del); Dabur India
Limited v. Shree Baidyanath Ayurved Bhawan Pvt. Ltd. 2012 (51) PTC 441 (Del); Carlsberg Breweries A/S v. Som
Distilleries and Breweries Limited, 2017 (70) PTC 413 (Del); ITC Limited v. Ganesh Flour Mills, 2015 (63) PTC 217
(Mad); Seven Towns Ltd. v. Kiddiland, 2016 (68) PTC 308 (Del).
21
Supra note 4.
22
Mohan Lal v. Sona Paint & Hardwares, 2013 (55) PTC 61 (Del); Eicher Goodearth Pvt. Ltd. v. Krishna Mehta,
2015 (63) PTC 444 (Del).
23
Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd. 2003 (27) PTC 478 (Del); N. Ranga Rao
and Sons v. Anil Garg, 2006 (32) PTC 15 (Del); Ranbaxy Laboratories Limited v. AKME Drug and Pharmaceuticals,
2007 (34) PTC 573 (Del); Ferrero Spa v. Raj Baid, MANU/DE/3880/2014; Carlsberg Breweries A/S v. Som
Distilleries and Breweries Limited, 2017 (70) PTC 413 (Del).
24
Godfrey Phillips India Limited v. PTI Private Limited, 2018 (73) PTC 178 (Del); Superon Schweisstechnik India
Limited v. Modi Hitech India Ltd. 2018 (74) PTC 61 (Del).
distinctiveness and the public associates such trade dress, getup or other aspects only with
the plaintiff's goods.25

For seeking prima facie protection in the nature of interim injunction there has to be material
disclosure that the general public associates the shape which is asserted by the plaintiff as its
distinctive mark or get up, only with the plaintiff.26 There can be passing off in labels, even
when the word marks or trade names are dissimilar but the packaging/trade dress is similar.27
However, broad based injunction cannot be granted in respect of magazines in so far as it
relates to colour scheme, lay out etc. or copied, since the size and colour scheme are mostly
common to trade. In so far as fonts are concerned, they are available in all software and the
Court cannot restrain the defendant from using any particular font to draw his trade name.28

As far as well-known trademarks are concerned, the burden on the plaintiff is to prima facie
establish that despite the well-known trademarks of the defendant and of the plaintiff which
are prominently displayed on their respective trade dress, the similarity in the respective
trade dress of the plaintiff and the defendant is such that there is a possibility of confusing
similarity or deception. The burden lies on the plaintiff to prove to the satisfaction of the
court that he has adopted some novel, original and striking features for his get up and that
the Defendants have adopted similar features.29

Conclusion

The Courts in India concur with each other in opining that trade dress must be looked at from
the first impression of prudent persons of ordinary intelligence and imperfect recollection
and that it is the overall image or impression of the product which needs to be considered to
determine whether it amounts to infringement of trade dress. In a case of passing off the
question is whether the trade dress employed by A for his product is so deceptively similar to
the established trade dress of B's product that A's product is likely to be passed off to
consumers as B's product. The trade dress of the rival product has to be compared and
evaluated as a whole. In other words, the trade dress or get up must be compared and
examined as a whole and not in microscopic manner. Overall similarity is the touchstone for
constituting passing off or infringement of trade dress. It is also relevant to note that
injunction cannot be granted against the defendant for copying of colour scheme, layout,
fonts, etc. in respect of certain products wherein the use of such trade dress features or get
up is common to trade.

25
Ibid.
26
Supra note 19.
27
Supra note 7.
28
P. Venkat Rao v. Chandamama India Limited, 2011 (48) PTC 540 (Mad).
29
L'oreal India Pvt. Ltd. v. Henkel Marketing India Ltd. 2005 (6) BomCR 77.
 BIBLIOGRAPHY

AUTHORITIES

1. The Trade Marks Act, 1999

CASE LAWS

1. Allied Blenders & Distillers Pvt. Ltd. v. Rock and Storm Distilleries Pvt. Ltd. [2015 (63)
PTC 139 (Del)]

2. Assam Roofing Ltd. v. JSB Cement LLP [2016 (68) PTC 37 (Cal)]

3. Cadbury India Limited v. Neeraj Food Products [2007 (35) PTC 95 (Del)]

4. Carlsberg Breweries A/S v. Som Distilleries and Breweries Limited [2017 (70) PTC 413
(Del)]

5. Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd. [2003 (27) PTC
478 (Del)]

6. Dabur India Limited v. Shree Baidyanath Ayurved Bhawan Pvt. Ltd. [2012 (51) PTC 441
(Del)]

7. Dart Industries Inc. v. Techno Plast [2016 (67) PTC 457 (Del)]

8. Dart Industries Inc. v. Techno Plast [2017 (70) PTC 94 (Del)]

9. Dart Industries Inc. v. Techno Plastic Industries [MANU/TN/3991/2016]

10. Eicher Goodearth Pvt. Ltd. v. Krishna Mehta [2015 (63) PTC 444 (Del)]

11. Euro-Solo Energy Systems Limited v. Eveready Industries India Limited [MANU/WB/
1400/2009]

12. Ferrero Spa v. Raj Baid [MANU/DE/3880/2014]

13. ITC Limited v. Ganesh Flour Mills [2015 (63) PTC 217 (Mad)]

14. ITC Limited v. Godfrey Phillips (India) Limited [MANU/MH/0820/2020]

15. LA Opala R.G. Ltd. v. Cello Plast [2018 (76) PTC 309 (Cal)]

16. Lifestyle Equities C.V. v. Royal County of Berkshire Polo Club Ltd. [2019 (79) PTC 591
(Del)]

17. L'oreal India Pvt. Ltd. v. Henkel Marketing India Ltd. [2005 (6) BomCR 77]
18. Mohan Lal v. Sona Paint & Hardwares, 2013 (55) PTC 61 (Del)]

19. N. Ranga Rao and Sons v. Anil Garg [2006 (32) PTC 15 (Del)]

20. P. Venkat Rao v. Chandamama India Limited [2011 (48) PTC 540 (Mad)]

21. Ranbaxy Laboratories Limited v. AKME Drug and Pharmaceuticals [2007 (34) PTC 573
(Del)]

22. Samsonite Corporation v. Vijay Sales [1998 (18) PTC 372 (Del)]

23. Seven Towns Ltd. v. Kiddiland [2016 (68) PTC 308 (Del)]

24. Shambhu Nath & Brothers v. Imran Khan, 2018 (76) PTC 365 (Cal)]

25. S. M. Dyechem Ltd. v. Cadbury (India) Ltd. [2000 (20) PTC 297 (SC)]

26. SRMB Srijan Private Ltd. v. Super Smelters Ltd. [2019 (80) PTC 354 (Cal)]

27. Superon Schweisstechnik India Limited v. Modi Hitech India Ltd. [2018 (74) PTC 61
(Del)]

28. S.V.S. Oil Mills v. S.V.S. Agro Refineries P. Ltd. [2002 (24) PTC 41 (Mad)]

29. Techno Plastic Industries v. Dart Industries Inc. [2017 (71) PTC 278 (Mad)]