In this post, we have put together 4 trademark cases that relate to trade dress and wordmark infringement/passing off. The cases involve products such as cricket helmets, biscuits, tobacco, and edible oil. In all the cases, trademark owners have been able to get positive orders in their favour.
Good Day Vs. Good Times for Butter Cookies: Delhi High Court restrains the use of Blue and Yellow packaging and ‘Good Times’ mark for Butter Cookies.
In a case involving the use of the trademark ‘Good Times’ with Blue and Yellow packaging, the Delhi High Court granted an interim injunction restraining Amar Biscuits from using the mark and packaging because it was similar to the mark ‘Good Day’ and packaging of Britannia. The Court stated that Britannia had acquired a secondary meaning with respect to its Blue and Yellow packaging and that by copying the same, the defendant was causing confusion among consumers. It also stated that the defendant was piggybacking on the goodwill built by the plaintiff, and if the defendant was not stopped, irreparable loss would be caused to Britannia.
Citation: Britannia Industries Limited Vs. Amar Biscuit Private Limited and Ors. [CS (Comm.) 728/2023, I.As. 20158/2023, 20159/2023 and 20160/2023]
Afzal vs. Afsals for Tobacco Products: Delhi High Court injuncts the use of Afsals mark and trade dress.
In a case involving the trademark Afzal used for tobacco products, the Delhi High Court granted a permanent injunction restraining the defendant from using Afsals for chewing tobacco. The Court also injuncted the defendant from using a similar trade dress to that of the plaintiff. While arriving at its decision, the Court stated that tobacco has negative effects on health, and it must therefore protect consumers from spurious products.
Citation: Sopariwala Exports and Ors. Vs. Ashraf V. [CS (Comm.) 259/2021]
Gold Winner Vs. Gold King for Edible Oil: Madras High Court restrains the use of Gold King with similar packaging.
In a case involving the trademark, Gold Winner, for Sun Flower Oil, the Madras High Court stated that Gold King is deceptively similar. The Court stated that the packaging was also deceptively similar and that the plaintiff had made a case for trademark and copyright infringement. The Court therefore granted an injunction restraining the defendant from using the trademark and trade dress.
Citation: M/s. Kaleesuwari Refinery Private Ltd. Vs. M/s. Sri Ganeshmurugan Oil Industries [C.S. (COMM. DIV.) No.681 of 2019]
Is shape of a cricket helmet protectable as a trademark?
In a case involving the shape of a cricket helmet, the Delhi High Court stated that the distinctiveness required to prove a shape trademark is much higher than regular marks and that the shape itself must be considered as a source of origin to get trademark protection. Kohli Sports, the plaintiff, in the case, claimed that its cricket helmets had a unique front grill and ear protection and that it had acquired distinctiveness as cricketers use it extensively. It pointed out that 70 percent of cricketers were using the said cricket helmets in the World Cup, and that 80 percent of IPL players use the said product. While referring the case for mediation, the Court asked the defendant to take down the website content, which it had slavishly copied.
Citation: Kohli Sports Private Limited Vs. Ashi Sports [CS (COMM) 858/2023, I.As. 23949/2023, 23950/2023, 23951/2023 and 23952/2023]
Trade Dress and Trademarks
While Courts have over the years been effectively enforcing word and logo marks, there was some uncertainty about trade dress protection and enforcement. However, that is quickly changing, and the cases in this post elucidate the increasing trend in injunctions against copiers of trade dress and packaging. In some instances, Courts have gone on to hold that a combination of certain colors is protectable if sufficient distinctiveness has been acquired.
Disclaimer
The case notes in this blog post have been written by IP attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases, or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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