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Will Design come under the purview of Trademark?

By: Nidhi Tandon

It was a `spot the difference’ moment for a judge at the Bombay High Court when he came across `almost identical’ water bottles while hearing a case of infringement. Failing to tell the water bottles apart, the judge ordered the infringer to stop manufacturing its product. The case was brought to court by well-known manufacturer Cello Household Products against Modware India for copying the design and packaging of its bottle ‘PURO’. 

Cello Household Products (“Cello”), manufacturers of plastic insulated products, are manufacturing and selling a unique water bottle “PURO” with a two-tone colour scheme, flip top and unique surface pattern in a distinctive packaging. Cello applied for registration of the design of PURO with the Controller General of Patents, Designs and Trade Marks, who granted registration under Design Registration No. 283345 on 23rd August 2016 with a priority date of 12th May 2016. In January, 2017 Cello came upon Modware India’s (“Modware”) bottle under the name “KUDOZ that was indistinguishable from “PURO” in every single respect, down even to the colours as well as packaging of the water bottles. On becoming aware, Cello filed a suit against Modware seeking injunction on two grounds: one being that Modware is selling a product (KUDOZ) with the same design as Cello’s PURO, which is an infringement of its registered design, and secondly that the KUDOZ bottles sold by Modware would mislead the public into thinking they were products of Cello, thereby leading to passing off.

Cello contended that the design of the bottle had been registered with the Controller General of Patents, Designs and Trade Marks in August, 2016. It further claimed that its design has both novelty and originality in terms of the Designs Act, 2000. Cello contended that the feature of novelty in PURO design resides inter alia in its overall shape, configuration and surface pattern making the said design aesthetically appealing and attractive and that the elements in the design, including the surface ornamentation and various other unique features, have never been used in such combination for any previous bottle. It claimed that these factors put together resulted in the bottle becoming an instant hit – clocking in sales worth seventy million rupees in six months since its launch in May, 2016.

Modware argued that a “bottle is a bottle” and that all the bottles – containers for liquids- are vertical and cylindrical and there was no uniqueness or novelty in the design of Cello’s bottle “PURO”. Modware sought to invalidate Cello’s protection under design law by taking defence of section 4(c) read with section 22(2) of the Designs Act, 2000 by arguing that the design was a result of a combination of earlier known designs by splitting the design of PURO into sub-parts and putting forth, as evidence, earlier designs of bottles that incorporated each of these sub-parts.

The High Court compared the two products PURO and KUDOZ and held in favour of Cello thereby restraining Modware from infringing and in any manner passing off Cello’s registered designs in water bottles on the basis of the following:

Design Infringement

  1. That the understanding of “Bottle is a bottle” and that no vertical cylindrical fluid container can have either originality or novelty is an oversimplification of the Designs Act;

  2. That none of the prior designs brought to the court’s notice, on the whole, were similar to Modware’s KUDOZ, while Modware’sKUDOZ was almost identical to Cello’s PURO;

Therefore, it was held that, prima facie, Cello’s design of PURO was sufficiently original and that Modware’s KUDOZ infringed upon it.

Passing off

For determining whether passing off had occurred, the Judge used a well-established test called the “classical trinity”:

  1. Existence of Reputation and Goodwill

The court held that the reputation of the Cello house mark is already such that Cello is an established name in direct relation to that mark.  

The court further held that people tend to prefer bottles with the CELLO mark, i.e., as identified as coming from Cello’s house or source; within that range of choice of Cello’s products, this particular bottle PURO, has achieved a great deal of commercial renown.

Thus, the question of establishing reputation for the purposes of passing off by identifying the product and its origin or source is thus answered.

  1. Existence of the Fact of Misrepresentation

The court held that no tenable explanation is provided for Modware to have adopted a shape, configuration and ornamentation so very nearly identical to that of Cello.

The court felt that showing other bottles of the same height or girth does not take Modware the required distance.

The court also held that there was no explanation for the indistinguishable colours either, i.e., the exact same two-tone colour combination used by Cello. Modware took exactly Cello’s colours and colour combinations. This is true too of the packaging that Modware chose, and here again between the blue colour the droplets of water and so on, the one is indistinguishable from the other.

It was therefore concluded that everything points but in one direction that Modware was attempting to deceive consumers into believing that its products came from the house of Cello.

This is, therefore, prima facie, an attempt calculated to deceive and the deception and misrepresentation is as to source or origin.

  1. Possibility of Irreparable Injury

The court held that the two products were so similar that they were likely to cause confusion in the minds of consumers. The possibility of confusion is the only relevant factor. The likelihood of damage is also deemed to have been fulfilled.

Advaya View:

In the present case, the court has held that the design of the bottle (PURO) is acting as an indicator of source, thus implying that it is acting as a trademark. The Court has also held that the design of the bottle “PURO” is original and novel as per the Design Act.

There appears to be some ambiguity here. By this order, the Court is trying to overlap the IP regimes of trademarks and designs by giving the IP owner an opportunity to maintain a dual cause of action under both design law and trademark law.

Trademarks and Designs are different. Trademark registration protects letters, numbers, word phrases, sounds slogans, logo pictures, aspect of packaging or any combination of these. It is a known fact that the common law tort of passing off is connected with trademark protection, which is an act of making a representation that induces customers to believe that a product originates from a particular source, without it actually originating from that source. Design law protects only “aesthetically pleasing patterns, ornaments and shapes capable of industrial application” and trademarks have been explicitly placed outside the ambit of ‘designs’ as per section 2(d) of the Designs Act, 2000. The Designs Act, 2000 does not specifically provide for the remedy of passing off.

The Court appears to have erroneously interpreted section 2(d) of the Designs Act, 2000 by considering the design of the bottle “PURO” as a trademark and thereby claiming protection under passing off. In our view, ut will be against the law for designs to be protected under the garb of trademarks.

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