Colgate Palmolive Company & Anr. vs. Anchor Health and Beauty Care Pvt. Ltd.

Delhi High Court | J.D. Kapoor J. | 29 October 2003 108 (2003) DLT 51 | 2003(27)PTC478(Del)

Background

Colgate Palmolive Company (Plaintiff No. 1), a US-incorporated multinational and its Indian subsidiary/licensee Colgate Palmolive (India) Ltd. (Plaintiff No. 2) had been manufacturing and selling tooth powder in India since 1951 in distinctively shaped cans bearing a red and white colour scheme approximately one-third red on the upper portion (including the cap) with the word “COLGATE” in white against red and two-thirds white on the lower portion. The red and white colour combination had been registered in respect of toothpaste. In August 2002, the plaintiffs updated the get-up by adding a swirl and yellow representation to the red portion.

Anchor Health and Beauty Care Pvt. Ltd. (defendant), a competitor in the dental products market since 1996, began selling its tooth powder under the trade mark “ANCHOR” in cans bearing a substantially similar red and white colour combination and shape. The plaintiffs alleged that this constituted passing off, as the defendant was misappropriating their distinctive trade dress the red and white colour combination in the specific one-third/two-third proportion to encash upon Colgate’s goodwill and reputation. Notably, the trade names of the parties “COLGATE” and “ANCHOR” were entirely distinct with no similarity whatsoever.

This was the third suit in a series of actions between the parties. An earlier suit before the Bombay High Court relating to dental cream cartons had failed to secure injunction and a Division Bench appeal was pending. A second suit in Delhi had concerned artistic work in a toothbrush hanger display tray. The plaintiffs filed the present application under Order 39 Rules 1 and 2 CPC seeking ad-interim injunction restraining the defendant from using the red and white colour combination and the shape of the tooth powder container.

Issues for Determination

1. Whether a colour combination specifically red and white in a particular order and proportion on a container can constitute a protectable trade dress capable of acquiring distinctiveness and secondary meaning so as to be protected against passing off.
2. Whether the similarity in colour combination and trade dress between the parties’ products, despite entirely different trade names, can give rise to a passing off action.
3. Whether the relevant standard of consumer is the ordinary, literate, diligent purchaser or the unwary, illiterate and gullible customer, for the purposes of determining confusion in a passing off action.
4. Whether the defendant’s use of the red and white colour combination amounted to a dishonest attempt to encash upon the plaintiff’s goodwill and whether there was conscious or substantial imitation of the plaintiff’s trade dress.
5. Whether the plaintiffs were disentitled to interim relief on account of delay, laches and acquiescence.
6. Whether the objection that Plaintiff No. 2 was not a registered user of Plaintiff No. 1’s trade marks was relevant to a passing off action.
7. Whether the Bombay High Court’s earlier refusal of injunction operated as res judicata or otherwise barred the present proceedings.

Key Holdings of the Court

1. Trade dress comprising colour combination and get-up is protectable. The court held that colour combination, get-up, layout and shape of container collectively constitute “trade dress” the overall image of a product and are entitled to protection against passing off when they have acquired distinctiveness and secondary meaning through long and continuous use. No party has monopoly over a single colour, but substantial reproduction of a distinctive colour combination in the same order and proportion can give rise to a passing off action.
2. Passing off established despite different trade names. The court held that difference in trade names is not a conclusive defence to a passing off action where the trade dress colour combination, container shape and get-up is substantially similar. It is similarities, not dissimilarities, that determine whether passing off is established. Where the trade dress has acquired secondary meaning identifying the plaintiff as the source, a competitor’s adoption of a confusingly similar trade dress constitutes passing off regardless of different brand names.
3. The relevant consumer is the unwary, illiterate and gullible purchaser. The court held that in India, where literacy levels are low, the relevant standard is not the diligent or literate consumer but the unwary, illiterate and gullible customer including illiterate household servants or village folk sent to purchase a product who identifies goods by their container shape and colour combination rather than by reading the brand name. For such consumers, the trade names “COLGATE” and “ANCHOR” written in English are indistinguishable, making the red and white trade dress the sole identifier of source.
4. Conscious imitation of trade dress evidences dishonest intent. The pattern of the defendant consistently following the plaintiff’s trade dress changes including container shape and size demonstrated a design to cause confusion and encash upon the plaintiff’s goodwill. A second comer entering an already occupied field must keep “far enough away” to avoid all possible confusion and must establish its own reputation rather than trading on that of a prior comer.
5. Delay and laches do not bar injunction where use is dishonest. The court held that delay simpliciter is not a defence to an injunction application. Where the original use is dishonest, delay is at most relevant to the quantum of damages and rendition of accounts, not to the grant of injunction. Additionally, notice had been given to the defendant in July 1998, the defendant’s subsequent modified product was introduced in October 2002 and the suit was filed within three months making any delay claim untenable.
6. Registered user objection irrelevant to passing off. The court held that the objection that Plaintiff No. 2 was not a registered user under Section 48 of the Trade Marks Act was not germane to a passing off action, which is a common law remedy not dependent on registration.
7. Bombay High Court proceedings not res judicata. The earlier Bombay proceedings related to toothpaste cartons, while the present proceedings related to a differently packaged and distinctively shaped tooth powder container. The products, containers and packaging were different and therefore the earlier refusal of injunction did not operate as res judicata or bar in the present proceedings.
8. Ad-interim injunction granted. The plaintiffs had established a prima facie case. The defendant was restrained from using the colour combination of red and white in that order on the container/packaging of its tooth powder.

Statutory Provisions Involved

• Order 39 Rules 1 and 2, Code of Civil Procedure the procedural basis for the ad-interim injunction application.
• Section 2(j), Trade and Merchandise Marks Act, 1958 definition of “mark,” which the court noted takes colour combination within its fold.
• Section 48, Trade and Merchandise Marks Act, 1958 governs registered users of trade marks; the court held this provision’s requirements were irrelevant to a passing off action.
• Section 10, Code of Civil Procedure raised by the defendant to challenge maintainability on the ground that a directly connected question was pending before the Bombay High Court; not upheld.
• Order 2 Rule 2, Code of Civil Procedure raised by the defendant on the ground that the cause of action relating to tooth powder was available at the time of the earlier Bombay suit; not upheld since the products and packaging were different.

Reasoning of the Court

The court approached the case from the perspective of the end consumer in the Indian market. It reasoned that trade dress the overall visual impression created by colour combination, container shape, get-up and layout performs the same source-identifying function as a trade mark and that sustained use over decades can confer upon trade dress a secondary meaning that makes it exclusively associated with the plaintiff in the public mind. The red and white combination in the specific one-third/two-third proportion, used since 1951, had by 2003 become so deeply imprinted on the public consciousness that it independently communicated the source of the goods as Colgate.

The court emphatically rejected the argument that the presence of prominently displayed, entirely different trade names “COLGATE” and “ANCHOR” was sufficient to prevent confusion. It reasoned that this argument assumed a literate and attentive consumer, which does not represent the actual purchasing public for household consumer goods in India. An illiterate servant sent to buy Colgate Tooth Powder would identify the product solely by the container’s red and white appearance, not by reading the brand name. For such a consumer, the defendant’s identically dressed container would invariably be mistaken for the plaintiff’s product.

The court also found persuasive the pattern of the defendant’s conduct consistently following the plaintiff’s trade dress changes and container shapes since 1996 across multiple products as evidence of a deliberate strategy to trade upon Colgate’s reputation. Relying on the principle from Florence Manufacturing Co. v. J.C. Dowd & Co., the court held that a second comer entering an occupied field has an obligation to keep well away from its rival’s trade dress and the law views with suspicion a trader who approaches so near to a successful rival that the public may fail to distinguish between their goods.

On delay, the court accepted the plaintiff’s explanation that notice was given in 1998 regarding an earlier product, that no action was taken while sales were insignificant, that the defendant reformulated its product in October 2002 removing the blue interline that had provided some distinction and that the suit was filed within three months of the new product launch. Dishonest use having been established, delay was no bar to injunctive relief.

Doctrinal Significance

1. Trade dress protection in India firmly established. This case is a significant Indian authority for the proposition that the overall image of a product its colour combination, container shape, get-up and layout constitutes protectable trade dress even in the absence of any similarity in trade names. It extends passing off protection beyond word marks and registered marks to the totality of visual product presentation.
2. Colour combination as a trade mark. The court held that colour combination falls within the definition of “mark” under the Trade and Merchandise Marks Act and can acquire trade mark status when it has achieved distinctiveness through long use. The court also made an obiter observation though this was qualified and should be read carefully that even a single colour can in some circumstances meet trade mark requirements, though blanket prohibition against a colour used descriptively would not be protected.
3. The illiterate/unwary consumer as the standard for Indian passing off law. The court’s insistence that the relevant benchmark is the unwary, illiterate and gullible purchaser not the literate, attentive English-reading consumer is a foundational contribution to the contextualisation of passing off law to Indian socio-economic conditions. This approach aligns with and reinforces the Supreme Court’s reasoning in Amritdhara Pharmacy v. Satya Deo and Cadila Healthcare v. Cadila Pharmaceuticals.
4. Similarities, not dissimilarities, determine passing off. The court’s articulation that it is the cumulative weight of similarities particularly in trade dress rather than the existence of dissimilarities (such as different brand names) that governs the passing off inquiry, reflects an important refinement of the doctrine in the context of consumer goods marketed to a largely illiterate population.
5. Second comer’s obligation to avoid unfair competition. The court’s adoption of the “second comer” doctrine  requiring a later entrant into an occupied commercial field to establish a genuinely distinct identity rather than benefiting from proximity to an established brand is an important contribution to unfair competition law in India, with broad implications for packaging, branding and product presentation in consumer goods markets.

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