Komal Chhajer[1]
Indore Institute of Law
Introduction
The markets today are filled with levelled up of competitors in all fields which increases the scope of every product as there are many available options to compare with. Simultaneously some well-established products face a backlash due to similar invention. These kind of similar products with variant quality diverts the customers attention from the original product to new proxy product which hampers the business and goodwill of the main product manufacturers. Trade dress protection in IPR is highlighted by judiciary and it its jurisprudence for protecting the original product, its goodwill, and reputation. The factor that affects the liability for infringing trade dress is indistinctiveness. The new product shall contain distinctiveness in its packaging, fonts, colour combination, font style, quotations, product line, model of bottles or containers, its method of usage, etc.
Case of Infringement of trade dress of Nivea Body Lotion & Joy body lotion
Recently, in Beiersdorf AG v. RSH Global Private Limited & Anr[2] on 28.01.21 the Delhi High Court before the single Judge Mr. Justice C. Hari Shankar laid the order of infringement of trademark of a product labelled as NIVEA just on the basis of trade dress infringement by a product labelled as JOY INTENSE MOUSTURIZER.
The original product NIVEA body lotion has some distinguished features related to trade dress such as brand name is in white font written on dark blue background, the container bears distinctive blue colour which is inevitably identified by customers and it signifies the brand itself, a milk splash device in lower half of the container and coca butter droplet in golden colour in middle of the milk splash. All these features including the distinct colour are registered as trademark in German Trademark and Patent Office. The JOY labelled have been manufacturing and dealing in cosmetic and beauty care products including body lotions with variable trade dresses. But recently in December 2020 the JOY labelled product with title as JOY INTENSE MOISTURE commenced in market which was deceptively similar to that of NIVEA.
The JOY INTENSE MOISTURE product was in similar container with same shade of dark blue, having white font on dark blue background, and most significantly a semi-circular milk splash in lower half of the container which is perhaps the distinguished feature of the original product NIVEA.
The test for finding similarities between the two products is to identify whether the other product has the deceptive similarity as to affect the reputation or goodwill of the original product or not. In this case we the found a holistic likelihood to confuse the purchasers of average intelligence and imperfect recollection between these two products. The High Court declared in its order that it’s a deliberate infringement by the defendant company (RSH Global Private Limited). The Court laid order to defendant for restraining from manufacturing, selling, exporting, importing, advertising to this alleged copyrighted product.
Why protection under Designs Act 2008 not seeked by the petitioner?
Since it is the case of design of a particular product it is a prominent question why the designs Act was not given The due consideration for protection of? The answer lies Infection 2D of designs at with exclude the TM which means that trademarks act and designs and cannot go parallel hand to hand in one particular case.
The shape of a product, its packaging or combination of colours used on a product may be a trade mark/trade dress and/or a design applied to the product. The difference lies in the distinct purposes fulfilled by trade mark and design. On one hand, a design is applied to aproduct to merely enhance its aesthetic value and/or commercial appeal. On the other hand, a trade markis applied to a product to showcase its source of origin. A trade mark may also appeal to the eye and enhance aesthetic value of the product but it is necessary that it acts as an association between the product and the source of origin/manufacturer/producer of the product. If a product feature is merely enhancing aesthetic value and/or commercial appeal and/or appeals to the eye without pin pointing any source of origin, it is clearly the subject matter of design rights. However, if it is enhancing the aesthetic value and/or commercial appeal and/or appeals to the eye while also indicating the source of origin, an overlap between trade mark and design rights comes into the picture.
CONCLUSION: Impact of similar trade dress
There is no separate provision for trade dress under trademarks Act 1999 but section 2 sub clause (m) & (q) defines mark and packaging of a product Hence we can interpret that the legislature was aware of the similar trade design or trade dress of a particular product and hence the provisions of package and mark may be included in protection under trademarks Act 1999. The growing trend of market competition and Consumers are also letting the confusion between the products and hence the protection to one particular trade design trade dress and Trademark is necessary for the purpose of smooth business idea. The concept of trade dress must be included specifically by an amendment in Trade Marks Act 1999 as protection because the purpose of IPR is to protect the artistic Idea and honest business idea of a particular brand and product like the most famous trade dress is the shape of the Coca-Cola bottle The Judiciary must act From the eyes of the purpose of the Legislature that is to protect the artistic work and hence even if there is no specific provision mentioned in particular at the interference from the act itself and the particular circumstances shall be respected like in this particular case.