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Friday, 2 March 2012

Difference between Passing Off Cases and Infringement Cases


In Corn Products case it was observed that the principle of similarity could not to be very rigidly applied and that if it could be prima facie shown that there was a dishonest intention on the part of the defendant in passing off goods, an injunction should ordinarily follow and the mere delay in bringing the matter to court was not a ground to defeat the case of the plaintiff. It bears reiteration that the word ``Glucon-D'` and its packaging had been used by Glaxo since 1940 whereas the word ``Glucose-D'` had been used for the first time in the year 1989.
Dishonest intention can be proved by they use “extra dark” on their packaging and “dark plus” on the pencil”.
In Cadila Health Care case, it has also been held that in the case of a passing-off action the similarities rather than the dissimilarities have to be taken note of by the court.

Trade Dress Cases

A.V. Rajadurai Nadar v. Ayya Nadar and another wherein it was held that the expression 'deceptively similar' as defined in S.2(d) means that the similarity or resemblance must be such as it would be likely to deceive or cause confusion. Any conclusion reasonable and proper can be arrived at by a meticulous examination of each detail and then making a comparison. At the same time what mainly strikes the eye must also be conducive. But, when one looks at it, especially from the standpoint of a person who is most likely to use a particular brand of matches, if it appears that the distinction is prominent and it cannot lead to any similarity or a deceptive similarity or confusion then there could be no objection to the two different trade marks.

J. and P. Coats Ltd. v. Chadha & Company(India) PTC Supp(1) 295 Del(DB), where colour of rival boxes was similar, the following view was taken:-
"Marks, it must never be forgotten, are remembered rather by general impression or by some significant details than by any photographic recollection of the whole. Keeping in view the main idea, the essential feature or the leading characteristic represented by each one of the two rival marks, we feel that those who use the thread may well be expected to distinguish between the two figures of 'dog' and "anchor" and if they happen to be literate, they can easily distinguish one from the other. It is no doubt true that the colour of the boxes is very much similar, but then that is not conclusive nor is that the domination or the leading characteristic."
Vicco Laboratories Bombay v. Hindustan Rimmer, Delhi case also the plaintiffs were selling their goods with descriptive get up and colour scheme for long in 1995 while the defendants started selling their products in 1997 in the cartons which appeared to be copies of the entire get up and the colour scheme adopted by the plaintiff. It was held to be a case of passing off and fit for injuncting the defendants. The foreign decisions relied upon by Mr. Sibal on the concept of trade dress encompassing colour combination, get up and lay out inspite of there being no similarity in the trade name are as under:-

(i) White Hudson & Company Limited v. Asian Organization Limited 1965 RPC 144. In this case the plaintiffs sold their cough sweets in Singapore since 1953. The sweets were sold loose in orange colored cellophane wrappers on which was printed the word "Hacks" in Roman characters only. In March, 1958 the defendants entered the same market with cough sweets in a white cellophane wrapper. But in May of that year they went over to using an orange wrapper similar to the plaintiffs' but bearing the word "Pecto". The plaintiffs brought an action to restrain passing off. The trial judge found that no other wrapper cough sweets had been sold loose, that the sweets were called by the local population "red paper cough sweets", that the plaintiffs' get-up had become distinctive of their goods, that the get-up of the defendants' sweets resembled the plaintiffs' to such an extent as to lead to confusion, that the difference in the names printed on the wrappers was not sufficient to distinguish the goods in the eyes of a purchasing public largely unable to read English, and that passing-off had therefore been established.
(2) Colgate Palmolive Company And ... vs Anchor Health And Beauty Care Pvt. ... on 29 October, 2003
Words "Colgate" and "Anchor" are distinct and have not an iota of similarities either in look or in sound. That is why the ingredients of trade dress, get up, colour combination, lay out of the container or packing acquire significance and relevance for determining the offence of passing off. This criteria flows from the concept of action of passing off developed over the years that it is the similarities and not the dissimilarities which go to determine whether the action for passing off is required or not. That is why in trademark cases even the deceptive similarities are considered sufficient for infringement of trademark. If similarities of trade dress are substantial from the look of the two goods, it comes within the mischief of passing off.
Upshot of aforesaid discussion leads to the most ineluctable conclusion that the plaintiffs have successfully established a prima facie case for injunction the defendant from using the colour combination of red and white in that order as trade dress on the container and packaging. As a consequence the application is allowed and defendants are, by way of ad interim injunction, restrained from using the colour combination of red and white in that order on the container/packaging of its goods viz. the "Tooth Powder".

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