A trade mark means a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person or entity having the right as its proprietor to use that mark2. A trade mark is also entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or being from a particular source3.
Passing off action is based on a common law doctrine which states that, “No man is entitled to represent his goods as being the goods of another man and no man is permitted to use any mark whereby without making a direct representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate purchaser.”4
A trader needs protection of his right of prior use of a trade mark as the benefit of the name and reputation earned by him cannot be taken advantage of by another trader by copying the mark5. As held in the judgement of Three-N-Products6 , the substance of the tests in a passing off action appears to be the Court’s perception of the degree of resemblance between the marks. In this vein, the Hon’ble Karnataka High Court in its recent judgement in ITC Limited v. CG Foods (India) Private Limited7 , laid down an outline of governing principles with respect to passing off action, with respect to the packaging of a product or its ‘get up’.
The dispute between herein arose with respect to ‘instant noodles’, which is manufactured by both parties. ‘Sunfeast YiPPee!’ of ITC Limited and ‘WAI WAI’ owned by CG (India) Private Limited, are both market leaders in the instant noodles industry in India. ITC Limited (herein referred to as the plaintiff) filed a suit against CG (India) Private Limited, inter alia asserting its rights over the overall visual appearance’ or ‘get-up’of the Sunfeast YiPPee! ‘Magic Masala’ wrapper, and alleging that the defendant’s ‘WAI WAI’ packaging is violating their IP rights (due to deceptive similarity).
It was claimed by the plaintiffs that the similarities that persisted between the two wrappers with respect to packaging, colours, and placement of graphics amongst others, were enough to mislead the general public or common consumers whilst purchasing, especially owing to the fact that instant noodles are a ‘low involvement product’. Further, it was contended that the trial court erred in judgement owing to the fact that the dissimilarities between the two products were laid more emphasis on, which is contrary to what must be examined.
On the other hand, the defendants argued that the dissimilarities between products cannot be disregarded. If a certain similarity is being contested, it must be backed by evidence of undoubtable correlation with the product and has to acquire a status of distinctiveness. Additionally, dissimilarities such as a distinctive brand name and descriptive marks cannot be ignored in such cases.
In an action for passing off, relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the court that the use of the mark which the plaintiff complains of is not likely to deceive or cause confusion in the course of trade between the goods in respect of which the trade mark is registered8. The same rationale was followed by the court in the present case. The Division Bench took into account two deciding factors under the principle of passing-off, which are the concepts of ‘Distinctiveness’ and ‘Deceptive Similarity’.
It was held by the court that whilst talking about distinctiveness, the overall get up of a product is not what must be analyzed but it’s the relevant features which much be looked into and can be distinguished. The purpose of a trade mark is to aid the identification of the source of goods or a mark used in relation to goods for the purpose of indicating a connection in the course of trade between the goods and the proprietor9. In the present case, features of the get up such as the brand name were far more distinguishable and distinctive than factors such as colours.
Further, the court held that the concepts of distinctiveness and misrepresentation are complimentary and interdependent and hence must be examined together. In order to ascertain misrepresentation, it must be ascertained whether the product is not distinctive enough to communicate misrepresentation. Thus, an individual will always act on what is deemed to be the distinctive features of a product, which in this case would be the brand name of the instant noodles.
It was held by the court that the second factor to take into account with the element of distinctiveness would be the concept of deceptive similarity. The same can be done by first ascertaining or mapping out a ‘hypothetical purchaser’. For the same, the court placed reliance on the case of Pasquali Cigarette Co. Ltd. v. Diaconicolas & Capsopolus10 to enunciate that the perception of consumers is not constant in nature and hence factors such as colours cannot be deemed to be the most striking feature. The main question to answer would be the functionality of the get-up and not the purpose of its design.
Finally, in conclusion, the court held that the perception of a hypothetical purchaser holds importance as the comparison of marks must be done keeping their intent in mind. The court stated that it would be rather unlikely that a consumer whilst purchasing would ask for ‘red-orange’ noodles and if that is the case, there is no guarantee that the product of the proprietor would be handed over as many similar products would bear a resemblance owing to colour. Hence, in light of the above mentioned factors, the injunction was not granted and the decision of the trial court was upheld.
With respect to copyright, it was held by the court that infringement of copyright does not necessarily imply that there must be an exact copy of the work being claimed to be infringed. To ascertain the extent of reproduction, one must note if there has been a substantial amount of copying. If the same cannot be evidenced before the court, a plaintiff cannot claim infringement merely by show of similarity as the same would be inconsequential.
In conclusion, the Karnataka High Court has taken a positive step by laying down guidelines for trial courts to deal with injunction applications with such facts, vis-à-vis product packaging, whilst clarifying the law further with respect to suits seeking relief against passing off and copyright infringement.
2State of U.P. v. Ram Nath, (1972) 1 SCC 130.
3Godfrey Philips India Ltd. v. Girnar Food & Beverages (P) Ltd., (2004) 5 SCC 257.
4James LJ, in Singer MHanufacturing Co v Loog, (1880) 18 ChD 395, p 412. See also Stephen P Ladas on Patents, Trade Marks & Related Rights (Vol II – 1975), para 564.
5Century Traders v Roshan Lal Duggar & Co, AIR 1978 Del; Consolidated Foods Corpn v. Brandon & Co, AIR 1965 Bom 35; Delco Engineering Works v General Motors Corp, ILR 1974 Punj and Hary 502.
6Three-N-Products (P) Ltd. v. Emami Ltd., (2008) 4 CHN 608.
7ITC Limited v. CG Foods (India) Private Limited, 2021 SCC OnLine Kar 14700.
8Millington v Fox, (1838) 3 My & Cr 338.
9State of U.P. v. Ram Nath, (1972) 1 SCC 130.
10Pasquali Cigarette Co. Ltd. v. Diaconicolas & Capsopolus, 1905 TS 472.