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The COVID-19 situation has changed the buying behaviour of consumers and in a way changed the way products are being produced to meet the needs of consumers. It has created variations of products in both the hygiene and immunity areas – and most products have found room for themselves in one of these two buckets in an attempt to be important in times of the pandemic.
[Image Source: Shutterstock]
But surprisingly, a third zone seems to have formed, seemingly at the intersection of hygiene and immunity. For instance, recently Dabur has launched a soap named ‘Sanitize’ bearing similarity to Dettol’s soap, both in odour and shape. Due to the similarities between the two products, the Reckitt Benckiser and its subsidiary approached the Delhi High Court with infringement suit against the Dabur.
Brief about the Case
The Plaintiff (Reckitt Benckiser Health, US LLC and its Indian subsidiary RB Health) approached the High Court of Delhi seeking a permanent injunction against Dabur (Dabur India Limited) to prohibit Dabur from violating its trade dress/packaging and passing off its product as that of Plaintiffs’.
Plaintiffs have been actively engaged in FMCG business and Dettol (soap bar) is being marketed as one of its products. The Plaintiffs claimed that they have adopted the sword device and the tagline “be 100% sure” in the year 1999-2000 and 2003 respectively. It is claimed that Dabur is infringing Plaintiffs’ trade dress by using identical taglines/trade dress/packaging for its soap “Sanitize”. Plaintiff argued that the purpose of Dabur is evident from the use of predominant green packaging and label with white in its elements, the soap’s orange colour, identical taglines, sword device and the like. All these clearly show the dishonest and deceitful intent of Dabur to confuse the consumers.
What Dabur has to say?
Dabur contented that passing off is an action against deceit and argued that the Plaintiff had no exclusive right over the green colour packaging of the soap or the orange colour of the bar and over the use of generic and descriptive phrases or taglines. Dabur further stated that in the field of disinfectant soap bars there are only a small range of colours available and are thus very common to trade.
Dabur also claimed that its product can be easily differentiated from others and action of passing off will only be maintainable if the mark used or the general get-up and trade dress used by Dabur is identical to the trademark or trade dress of the Plaintiff. It was further claimed that the Plaintiff itself used multiple colours for the Dettol Soap packaging and that therefore the claim of exclusivity with respect to the green-colour is itself flawed. The main argument of Dabur was that its soap bar is distinguishable from that of the soap bar of the Plaintiffs, as the packaging of Sanitizer clearly bears the brand name “Dabur,” leaving no room for doubt.
What constitutes design infringement?
As per the Designs Act, 2000, the piracy of registered design is deemed to be an infringement of design in India. The rules relating to the piracy of registered designs in India are set out in Section 22 of the Designs Act, 2000. Any fraudulent or apparent imitation of a design that is already registered, without the permission of the owner or proprietor of the registered design is unlawful under Section 22 of the Design Act, 2000.It also prohibits the importation of any kind of material or substance closely resembling such a registered design. Any importation, application or publication of a registered design without the consent of the owner or any evident or fraudulent activity or imitation thereof leads to design infringement.
The following circumstances have been mentioned in the Act which constitutes design infringement:
- The infringing act is committed during the existence of a Copyright in any Design;
- Without the prior consent of the registered owner or proprietor, the design is imitated or applied;
- The act is done for commercial purpose and not for any personal use;
- The infringing articles must belong to the same class as that of the registered design.
The court or other adjudicatory authority is not required to specifically compare the two articles in order to assess design infringement in India but should look at the articles from the point of view of the ordinary customer to see if the two articles are creating any evident confusion in the minds of consumers.
Does the Act of Dabur commit Design Infringement?
The soap “Sanitize” created by the Dabur has the following features which are being compared to that of Dettol:
- The packaging of the soap is in a dark green colour which is different from that of Dettol’s packaging which uses light green and white colour;
- The packaging consisting of a sword with a shield which can’t be confused with the plus of Dettol as the two symbols are completely different from each other;
- The colour of the bar is of orange colour which is the same as that of Dettol’s bar but the colour is very common and exclusivity can’t be claimed over a particular colour of a bar;
- The “Sanitize” soap uses the tagline “Let’s be 100% sure with trust at Dabur” which can be considered to be derivative of Dettol’s tagline “Be 100% Sure” but the tagline used by Dettol is very generic and hence it can be used.
The Court of Law also observed that the packaging of “Sanitize” soap boldly bears the mark “Dabur” which clearly distinguishes the Dabur soap from Dettol’s soap. The Court also applied the “imperfect memory” test which determines the likelihood of confusion. It was observed that the two products hold no resemblance and can’t be confused with each other and thus, Dabur has not committed any infringement.
The Court clarified that the industry has many soap bars of identical colours, shapes, and smells. Moreover, the taglines and the indications/signs used by Dettol are still not registered as trademarks. The Court also observed that the products are competing hygiene products, the taglines and indications/signs used by Plaintiff appear to be “customary” to designate hygiene products that contain soap bars in the “current language” of the trade.The Court held that no evidence had been provided by the Plaintiffs to convince the Court to assume that the taglines and indications/signs and other features referred to herein remind the consumer solely of the product of the Plaintiffs.
The Court has noted considerable differences in the packaging of two soaps, with Sanitize’s background colour being dark green as opposed to Dettol’s packaging, which is a mixture of white and light green colour. The packaging of Dabur bears a cross and a shield while there is a plus (+) symbol in the Plaintiff’s product. The court refused to grant an injunction in favour of the Plaintiffs holding that “even a person with imperfect memory could not confuse Dabur’s product with that of the Plaintiff’s”.
Author: Supriya Rani, a student of Symbiosis Law School, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at firstname.lastname@example.org.