2011 (47) PTC 100 (Bom)
- The Plaintiff was a wholly owned subsidiary of Henkell & Co. Sektkellerei KG, headquartered in Germany.
- Plaintiff had acquired the registration of the shape of its bottle used for selling Vodka in a number of countries.
- In 2008, Plaintiff applied for the registration of the shape of its bottle in India in class 33 under the Trade Marks Act, 1999 claiming use since December, 1999. While, this application was pending it was observed by the Plaintiff, that the Defendant might launch Vodka in a bottle whose shape is deceptively similar to that of the Plaintiff’s bottle.
- An action for passing off was initiated by the Plaintiff before the Hon’ble High Court of Bombay to restrain the Defendant from launching its product in bottles which are similar to that of Plaintiff.
- Plaintiff has bottled Vodka in a shape which is distinctive. The present shape of the bottle was devised in 1996. In 1999, a device of a bird was embossed on the bottle. Vodka is synonymous with Russia. The architecture of the Russian Orthodox Church was famous for its onion dome or bulbous structure with a diameter more than that of the tower upon which it is mounted. This is the inspiration for the shape of its bottles.
- The product in the relevant shape has been sold in duty free shops in India since 1996 and formally launched in India in 2008.
- The Trade Marks Act, 1999 under Section 2(zb) defines trade mark and specifically states that it “may include shape of goods”, thus the bottle of the Plaintiff is entitled to get protection under the Trade Marks Act,1999.
- Plaintiff’s shape of bottle has acquired a global reputation and a goodwill and it is also a well established player in the Indian market.
- The cumulative effect of the conduct of the Defendant is (a) a dilution of the distinctive shape under which Vodka bottles of the Plaintiff are marketed and sold; (b) a dilution of the goodwill and reputation of the Plaintiff in relation to the distinctive shape of the bottle; (c) passing off at common law; (d) unfair competition; and (e) a mushrooming effect, in that unless the Defendant were to be stopped other potential infringers may be emboldened to encroach upon the rights of the Plaintiff.
- The registration which has been obtained by the Defendant, under the Design Act does not signifies that the shape of the bottle is novel, and thus it cannot be used as a defence.
- The product of the Plaintiff was officially launched In India in 2008 and prior thereto the public at large had no access to the product which was sold in duty free shops.
- Goodwill and Reputation of Plaintiff’s bottle cannot be claimed as a ground by the Plaintiff, since the Indian laws do not permit advertisement of the alcohol products under Cable Networks, DTH or IPTV, and, The Norms of Journalistic Conduct formulated by the Press Council Act, 1987.
- Shape of the bottle of the Defendant is being used with a bonafide intention.
- There is no possibility of any confusion in the minds of the people, because a person buying vodka shall ask through its brand name and not through the different shape of the bottle.
- Plaintiff’s product falls in premium category. The class of consumers who would purchase such a product consists of the affluent and educated, who would never be deceived merely by the shape of a bottle.
- Prior to use of the Plaintiff, the Defendant has acquired registration of the design of its bottle after conducting extensive search in the register. Hence, the duty case upon the Defendant to make a reasonable enquiry was duly discharged.
- Under the Trade Marks Act, 1999, the shape of goods is now statutorily recognized as being a constituent element of a trade mark.
- A manufacturer who markets a product may assert the distinctive nature of the goods sold in terms of the unique shape through which the goods are offered for sale.
- The fact that the Defendant has obtained registration under the Designs Act, 2000, does not impinge the right of the Plaintiff to move an action for passing off.
- Prima facie, Plaintiff has established transborder reputation and that an integral part of that reputation lies in the shape of the bottle in which Vodka is sold.
- Plaintiff’s bottle shape has no functionality with the nature of the product or the quality required of the contained in which Vodka has to be sold.
- The Plaintiff’s bottle shape is novel and originated in the ingenuity and imagination of the Plaintiff.
- A comparison of the broad and salient features of the two rival shapes, reveals that the shape of the bottle which has been adopted by the Defendant shows a striking similarity with the bottle of the Plaintiff. The essential feature of the shape of bottle of the Plaintiff is bulbous dome which imparts it novelty and uniqueness.
- Defendant is engaged in the same trade and it is impossible to accept that it would not have been aware of the shape used by the Plaintiff. Defendant’s adoption of its bottle shape is not prima facie honest. No amount of search in the Register would bring it within the purview of an honest adoption.
- Plaintiff being first to use the shape was not duty bound to register it under the Designs Act, 2000.
- The attempt of the Defendant if it is allowed would result in diluting the distinctiveness and exclusivity of the mark of the Plaintiff which has as an essential ingredient, the distinctive shape of the bottle in which Vodka is sold. This would only embolden other infringers to invade upon the proprietary right of the Plaintiff and would ultimately result in a destruction of the goodwill associated with the mark of the Plaintiff.
- The contention that there will be no confusion as the consumer is educated and affluent having a discerning capability is fallacious. This submission if taken to its logical conclusion will make the remedy of passing off only applicable to cases where the goods are of such a nature which are purchased for daily necessities of life by an average consumer. This will lead to the remedy of passing off being illusory. Law has not restricted the remedy only in relation to goods of a particular nature or quality but across the spectrum of trade and business. The class of purchasers is undoubtedly a relevant consideration, but the Court must have due regard to all the relevant circumstances including that.
The High Court made absolute the interim order passed in favour of the Plaintiff restraining the Defendant from selling its products packaged in the shape of bottle which is similar to that of the Plaintiff.
Co-author: Ms. Amanya Shree Gangawat, Amity University, Kolkata