Recently, the Calcutta High Court in the case of La Opala R.G. Ltd vs Cello Plast & Ors, held that in any event it is no defense that since the infringing articles were sold in cartons there is no infringement
- La Opala R.G. (hereinafter referred to as ‘the Plaintiff’) is a well-known and well-reputed manufacturer of opal glass tableware and was in business since 1980s.
- The products of the Plaintiff with their distinctive shape, configuration, surface pattern and artistic work on it were said to have a distinctive identity of their own and as a whole formed a trade dress of the product.
- The Plaintiff also referred to various trade dresses and/or marks sold under the brands Diva Classique, Ivory, as Mystrio Black, Crimson Bloom, Golden Fall and Dazzle Purple.
- The products that had the said trade dresses were identified as a mark by people common to the trade and public at large and it is the said trade dresses by which the people identify the products of the Plaintiff.
- The Plaintiff submitted that it conceived the said trade dresses and/or the marks, namely, the Dazzle Purple in 2009, the Mystrio Black in 2010, Golden Fall in 2012 and the Crimson Bloom in 2014.
- The Plaintiff submitted that it had been using the same since the date of conception of the said designs and all the brands in commercial manner continuously and extensively. It further submitted that there was no prior use of the same by any third party.
- It also submitted that it had applied for registration of the said trade dress before the Trade mark Registry in order to acquire statutory right of the said dress and/or the mark.
- The Plaintiff disclosed the annual sales figures of its products since 2013 which runs into crores and documents to show that the trade dress and/or mark had been advertised through all the publicity media both within and outside the jurisdiction of this Court.
- The Plaintiff contended that in July 2017, the representative of the Plaintiff while visiting one of its distributors and sellers of their goods in the locality of the Respondents came across the products of the Cello Plast.
- The Plaintiff contended that Cello Plast (hereinafter referred to as ‘the Respondent’) were surreptitiously seeking to represent the trade dress and the shape, pattern, artistic getup, motif and the design on their products identical or deceptively similar to that of the trade dress or the mark of the Plaintiff.
Whether the Respondent’s goods constituted an attempt of passing off his goods under the Plaintiff’s trademark and thereby infringement of the Plaintiff’s trademark?
- It was contended that an unwary customer with imperfect recollection would identify the product of the Respondent as that of the Plaintiff.
- It was also submitted that it’s an undisputed fact that the Plaintiff’s products were in market prior to the infringing materials.
- It was further argued that both the products on visual examination appeared to be deceptively similar, if not identical. The infringing products were slavish imitation of that of the Plaintiff and cannot be said to be common to trade.
- It was submitted that when these kinds of products are sold in a carton, the goods will be identified with the name of the manufacturer prominently displayed in the carton and not the product individually.
- It was submitted that the customers would buy such products on the basis of the name of the manufacturer and not of the product.
- The Court took note of the fact that the cartons produced by the Respondents prominently displayed the name of the Respondent in relation to the product, and that the products can also be sold as in pieces and separately.
- It held that in any event it is no defense that since the infringing articles were sold in cartons there is no infringement.
- It was reiterated that in an action for passing off the Court is regarded to protect the ‘trade mark’ which is an intellectual property developed by the Plaintiff by its own skill and popularized it over a period of time. Since the Court was of the prima facie view that were lot of similarities in the trade dress of the two products, if not absolute identity, and the Plaintiff was able to prove that the infringing products were slavish imitation of their products, an ad-interim injunction was granted against the Respondent.