A New Trade Dress And Tagline Saga, Decided By The Hon’ble Delhi High Court

April 7, 2023
Delhi high court

By Priya Adlakha and Tanvi Bhatnagar

Recently, a single judge bench of the Hon’ble Delhi High Court, while rejecting Plaintiff’s application for ad-interim injunction in M/s M.L. Brothers LLP v. Uma Impact Private Limited & Anr.[1] alleging infringement of trade dress, in the judgement dated January 19, 2023, reiterated the three essential elements for establishing an action of passing off, i.e., goodwill/reputation; misrepresentation caused by the Defendants; and the resulting irreparable loss to Plaintiff. The Court also observed that granting a ‘blanket’ injunction against all the products produced by the Defendants in absence of specific averments in respect of each infringing product is impermissible in law.

Brief facts of the litigation:

The Plaintiff herein had already obtained an ex-parte ad-interim injunction order dated March 12, 2019, restraining the Defendants from using packaging similar to Plaintiff’s “U-BORN” products, as well as the tagline “BORN TO WIN”, which was stated to be spinoff of the Plaintiff’s tagline “BORN TO BE FREE” for identical class of products i.e. headphones, earphones, wireless Bluetooth earphones etc. Against the said order, Defendants preferred an appeal to the Division Bench of the Delhi High Court. In appeal, the Hon’ble Division Bench vide order dated April 03, 2019, granted relief to the Defendant and limited the scope of the injunction order only to the trade dress of three products, which were produced by the Plaintiff with the plaint and found similar by the learned Single Judge. The Hon’ble Division Bench granted liberty to the Plaintiff to seek an injunction with regard to certain additional products, which the Plaintiff claims to be similar to its trade dress. The Hon’ble Division Bench also formed an opinion that injunction against the Defendant from using the tagline “BORN TO WIN” was not justified since Plaintiff is neither the registered proprietor of the tagline “BORN TO BE FREE”, not it is a subject matter of separate trade mark application.

In pursuance of this order of the Division Bench, the Plaintiff filed the present injunction application alleging trade dress infringement of its 50 newly added products, which were not included in the suit claims, before the learned Single Judge.

Submissions by the Plaintiff

Plaintiff alleged that the Defendant had been engaged in dishonest marketing and selling of their products by applying similar font, lettering style, packaging size, tagline, celebrity and logo placement, product description, disclaimer, product image, thread/hook design, handle, icon etc. on its product packaging, with the aim to cash in on the goodwill earned by the Plaintiff in the market. It was pleaded that imitation of broad and essential features of Plaintiff’s marks/ trade dress, is sufficient to establish deceptive similarity. It was further argued that such striking similarities would lead to creating confusion in the minds of the consumers as to the source of products. Plaintiff pleaded that such capitalization on the well-established reputation of their products by the Defendant amounts to infringement of their common law rights in the trade dress of their products.

Submissions by the Defendant

Defendant argued that the trade dress alleged to be infringed by the Plaintiff, is generic in nature and is common to trade, hence it is not identifiable solely with the Plaintiff. Without prejudice to its above submissions, it was argued that the packaging of the Defendant’s products is visually different from the packaging used by Plaintiff for their products. Celebrity endorsement, brand logos and arrangements were also stated to be dissimilar. The allegation of using same terminology for a specific segment of products was also refuted taking the defence that they are product feature identifications and therefore, no injunctive relief can be granted in this regard.

Observations of the Court

While hearing the injunction application, Hon’ble Mr. Justice Sanjeev Narula remarked that each passing off allegation and instance for individual products, must be distinctly specified within the suit claims. Plaintiff, without amending its plaint, is seeking to enlarge the scope of relief by praying for additional reliefs qua products that are not the subject matter of the suit, which in the opinion of the learned Single Judge Court, would be wholly contrary to the reasoning given by the Division Bench and would conflict with modification of ex-parte injunction order by said Bench.

The Hon’ble Court compared the following rival products:

Metal Universal Earphones
Ubon Wireless Earphones
Ubon Wireless Handset
Charge Wireless Pad

Trade Dress Passing Off Claims

The learned Judge restated that the brand names of the parties- ‘UBON’ and ‘U&I’ are distinct, and their taglines “BORN TO BE FREE” and “BORN TO WIN” have also been held to be dissimilar by the appellate court.
Further, since the rights of the Plaintiff in the trade dress were unregistered, to decide on the claims of passing off action, the Court went into the three essential requirements which need to be proved by a Plaintiff:

Goodwill and Reputation attached to their products, and that their trade dress had acquired a secondary meaning. The Hon’ble Court after going through Plaintiff’s various products packaging, hold that Plaintiff has not consistently, extensively, or continuously used any single packaging layout or style for its products, for it to claim any right in the same. The Hon’ble Court also remarked that there is no pleading qua the first date of use of the trade dress by the Plaintiff. The learned Judge also gave weightage to the Defendant’s submission that several attributes of packaging are common to trade and widely used by other brands in the market.

Misrepresentation caused by the Defendants- for deciding this factor, the learned Judge after comparing the rival products held that the two differ greatly and most of the features alleged to be infringing, like description of product features, use of icons of headphones, legal disclaimers, etc. were common to trade or were functional features and thus, were not sufficient to establish misrepresentation by the Defendant. The learned Judge also opined that the difference in celebrities endorsing the brand i.e., Mr. Tiger Shroff for Plaintiff and Mr. Shahid Kapoor for Defendant is in itself, a strong distinguishing factor. Therefore, considering the above, the learned Judge rejected the Plaintiff’s claim of likelihood of confusion among the general public as to the source of the products.

Likelihood of customer confusion- the learned Judge also rejected Plaintiff’s allegations of using a similar colour scheme and packaging size on the basis that the yellow colour of the Plaintiff’s packaging was not distinctive enough for the consumers to associate the same with the Plaintiff only, and that the line of goods being the same, the packaging would have to be in a suitably sized box, respectively. The learned Judge held that irrespective of the dissimilarities between the products in question, the apparent similarities are also not peculiar to Plaintiff’s products, but are conventionally found on products of all entities engaged in the same trade. The Hon’ble Court held that the Plaintiff has also not adduced any evidence to show irreparable harm being caused to it by the alleged misrepresentation by the Defendant.

Hence, the injunction application alleging trade dress infringement was dismissed.

[1] CS (COMM) 132/2019

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