Updated: Feb 9, 2022
Citation: 2003 VIII AD Delhi 228, 108 (2003) DLT 51, 2003 (27) PTC 478 Del, 2004 (1) RAJ 214
Court: Delhi High Court
Bench: Justice J.D Kapoor
Colgate Palmolive India Ltd. (“Colgate'') sought an injunction at the Delhi High Court against Anchor Health And Beauty Care Pvt. Ltd. (“Anchor”) for use of the trade dress and the color combination of red and white on its toothpowder cans. Colgate alleged that the red and white color scheme, as well as the shape of the can, was developed, protected, and also nurtured by them over a long period of time, across a wide geographical area. Colgate thus claimed that the distinctive red and white trade dress had acquired secondary meaning.
However, Anchor argued that the use of the red and white color combination was neither distinctive nor capable of identifying the goods with Colgate’s business. It also claimed that the shape of the container cannot be monopolized by Colgate unless it was registered under the Designs Act, 2000.
Whether similarity of trade dress is an attribute of passing off and is actionable per se?
The Law of Passing-Off; Section 2(1)(zb) of the Trade Marks Act, 1999.
The Delhi High Court held that the law relating to trade dress was very clear and that a trader's goods are recognized by their general appearance, or "get-up". Accordingly, resemblance or 'get-up' was commonly an ingredient in passing off.
The Court compared the tooth powder cans and opined that both Colgate and Anchor cans looked similar from a layman’s perspective. The Court held that a trade dress influences the overall impression that the customer gets as to the source and origin of the goods. This may be from the visual impression of color combination, the shape of the container, packaging, etc.
The Hon’ble judge also emphasized the fact that toothpowder is generally used by an illiterate, unwary, and gullible customer. If such a customer gets confused as to the source and origin of the goods which he has been using for a longer period by way of getting the goods in a container having a particular shape, color combination, and getup, it amounts to passing off.
This ruling considerably widened the ambit of protection available to the external appearance and configuration of goods—together constituting the ‘trade dress’ of goods. The Delhi High Court, raising the bar of protection available to the trade dress of goods, held that similarity of trade dress was an attribute of passing off, and was actionable per se.