Avoiding Infringement Pitfalls : Rule of Safe Distance in Trademark Law

By Aashi Nema and Anuj Dhar

Introduction

One of the lesser-discussed equitable principles in trademark law is the Rule of Safe Distance. As the name suggests, the Rule of Safe Distance requires a party to keep a safe distance from an infringing trademark after an injunction order has been passed, thereby restraining them from using a particular trademark. Following such an injunction, a party may attempt to adopt a slightly modified version of the mark to come close to its competitor. When the Court finds that competing trademarks are significantly similar, it expects the restrained party to now maintain a safe distance while adopting a new trademark.

Essentially, the Rule of Safe Distance requires the infringing party to change its trademark substantially, not merely apply de minimis fixes. The rule thus revolves around public interest, fair business practices, and, most importantly, upholding the injunction orders passed by the courts.

Scope and Applicability of the Rule of Safe Distance

The Rule of Safe Distance was first adopted by the US Court in the case of Innovation Ventures LLC v. N2G Distributing, Inc., 763 F.3d 524 (6th Cir. 2014), 12-1635. The US Court described the Safe Distance Rule as “a useful tool in crafting and enforcing permanent injunction[s].” A small change to an infringed trademark to give it a veneer of authenticity and bona fide adoption is not only an act of deception against the original trademark user but also contempt of the Hon’ble Court’s injunction order.

When passing an injunction order, Indian courts often state that the defendant is restrained from using the infringing trademark or any other mark similar or identical to it. The Court expects an infringer to refrain not only from using the specific trademark but also from adopting any mark that is similar or identical. As a common practice, infringing parties propose minor changes to their trademarks while continuing to resemble the original, thereby rendering the injunction order ineffective.

For the Rule of Safe Distance to apply, it is essential that the party has already been interdicted by an order of the Hon’ble Court. In Cipla Limited v. Sun Pharmaceutical Industries Limited, the appellant urged the Court to apply the Rule of Safe Distance in its application under Order XXXIX Rules 1 & 2 CPC, seeking to restrain the defendant from using “RESPULES.” Referring to the Safe Distance Rule, the respondent argued that it is applicable only after final orders have been passed, concluding that the defendant has infringed the plaintiff’s trademark.

Adoption of Doctrine of Colourability in Trademark Law

Although the Rule of Safe Distance has been adopted by Indian courts by referencing American jurisprudence, it closely resembles the legal maxim “quando aliquid prohibetur ex directo, prohibetur et per obliquum”—meaning that what cannot be done directly, cannot be done indirectly either.

This maxim is also incorporated in the Constitution of India under the Doctrine of Colourable Legislation. Essentially, the Rule of Safe Distance mandates that injunction orders must be implemented in full. A party restrained from using a particular word cannot circumvent the order by making slight modifications to the same word.

How Much Distance Is “Safe Distance”?

In India, when a defendant proposes changes to a trademark that infringes on the plaintiff’s mark, courts have taken a strict view, as illustrated by the following cases:

1. Luxembourg Brands S.A.R.L & Anr v. G.M. Pens International Pvt. Ltd., 254 (2018) DLT 603: The defendant was restrained from using “T-MAX,” which was similar to the plaintiff’s “TRIMAX.” The defendant undertook to change the packaging to avoid deceptive similarity. Later, the defendant adopted the mark “TERAMAX.”The plaintiff filed an application under Order XXXIX Rule 2A CPC, alleging wilful disobedience. The Hon’ble Delhi High Court emphasized the Rule of Safe Distance and held that the defendant must ensure that the new mark is not even remotely similar to the restrained mark. The Court noted, “It [TERAMAX] is deceptively similar to the trademark TRIMAX by a higher degree than T-MAX. Thus, essentially, what the defendant has done is to voluntarily give up a trademark on the ground of it being similar to the plaintiff’s trademark but adopt a mark which is even more offensive to the Plaintiff’s.”
2. R. Oomerbhoy Pvt. Ltd. v. Court Receiver, High Court and Anr., 2003 (27) PTC 580 (Bom): The appellant used the mark “POSTIANO,” similar to the respondent’s “POSTMAN.” The appellant offered to change the color scheme and get-up, but the Hon’ble Bombay High Court denied permission, finding the adoption of “POSTIANO” dishonest.The Court cited Wright, Layman & Umney Ltd. v. Wright, emphasizing that the Court should not speculate on hypothetical alternatives for an honest defendant—his conscience should be the guide.
3. Marico Limited v. Mr. Mukesh Kumar & Ors., 2018 (76) PTC 168 (Del): The defendant proposed revised packaging, but the Hon’ble Delhi High Court held that minor changes still misled consumers and hindered the plaintiff’s protection of its mark. The proposed changes were disallowed as they retained key elements of the trade dress already restrained by the injunction.
4. Marico Limited v. K.L.F. Nirmal Industries Pvt. Ltd., 2023 SCC OnLine Bom 2734: In response to the defendant’s proposal to revise packaging, the plaintiff argued that the changes were insignificant. The Hon’ble Court agreed, stating, “…the defendant cannot seek a seal of approval from this Court to use a revised packaging which continues to be in violation of the plaintiff.”

Author’s Note

The measure of “distance” under the Rule of Safe Distance depends on the factual circumstances of each case. It is for the infringing party to exercise sound judgment in determining what changes are necessary to avoid infringing the rightful owner’s trademark. This principle is particularly relevant in contempt proceedings, as it applies once an injunction order has been issued.

The Rule of Safe Distance acts as a vital tool for courts to enforce injunction decrees and prevent unfair trade practices. In essence, the rule holds that once a party has been restrained from using a trademark, it cannot adopt a slightly modified version that undermines the authority and effect of the injunction.