Gems…Bond? Product Packaging, Passing Off & Forks in the Evolutionary Road
Look at these two pictures side-by-side.
There is a fair chance that what you are experiencing is what trade mark law calls passing off. So ruled the Delhi High Court in issuing ex parte judgment to the proprietors of the CADBURY GEMS trade mark in Mondelez v. Neeraj Food Products on July 26.
The Finding
The news of the ruling has generated some non-zero buzz. It has focused, for one, on the readymade chuckle afforded by the fact that the Defendant, honest to goodness, tried, several years ago, to cash in on the name JAMES BOND for a confectionery product. The other notable is that the Plaintiff won actual costs at the end of a long litigation. However, both headlines, for mine, miss the true contribution of the case.
That contribution lies in how the Mondelez Court has adapted a case largely rooted in product packaging similarities into the legal requirements under Indian passing off law. It is this approach that interests me presently.
With the Defendant set ex parte in these proceedings back in 2011, and no theory of defence pressed in its aid, the banner finding of trade mark similarity is never really in doubt.
Similarity in Context
On the legal question before it, the Court begins by listing out no fewer ten differences between the rival products. These range from the primary colour scheme and arrangement of prominent features, right down to the Defendant product’s placement of “half chocolate-tablets showing the chocolate centre in the exact same manner as the Plaintiff.” There is, concludes the Court, “substantial imitation” of the Plaintiff’s product packaging.
As a general matter, this will do. At the same time, though, this is a legal inquiry into passing off, not a game of spot the difference.
This is where the Mondelez Court’s reliance on precedent comes in. It is also here, I reckon, that this case is elevated from a routine application of well-settled trade mark law to an inquiry of some interest.
Mondelez relies on two propositions drawn from two different cases.
Before I get into them, let me make a small note. Any faithful rendition of the principles of trade mark similarity under Indian law must defer to the difference between a similarity inquiry hewn from opposing a trade mark registration and one which arises at the stage of passing off.
The opposition test for trade mark similarity is limited, in the main, by statute. Its end-goal is to assess whether confusion or deception between two trade marks is likely, as a matter of evidence. Passing off inquiries, on the other hand, tend to be quite different in practice. They are often more hypothetical, more speculative, and less formulaic. In the main, they look for clues to piece together elements of misrepresentation that can then be used to pin misleading or confusing effects onto the Defendant’s presence in the market.
Corn Products, Parle & Vectors of Confusion
There is strong Supreme Court case law on both these positions.
Mondelez dips into this body of precedent but it does so in an unorthodox way. It relies, first, on the 1959 Supreme Court decision in Corn Products v. Shangrila. This case teases out the standard for the hypothetical purchaser in a trade mark similarity inquiry in opposition proceedings. This hypothetical purchaser, Corn Products had advised, must be a person of “average intelligence and imperfect recollection.” In actual fact, Corn Products placed this purchaser at a fairly high perch, possibly owing to the statutory backup afforded to adjudicate challenges to trade mark registrations. Mondelez only takes from Corn Products the hypothetical purchaser, and no more. This is fair enough.
The other crutch used to prop up Mondelez’s similarity position is a 1972 Supreme Court decision in Parle Products v. JP & Co. Although Mondelez does not say so in as many words, it reaches for Parle here for two reasons. The first is that Parle dealt with product packaging for biscuits, which makes it a good stylistic fit for these facts. (Though I am chained here to Supreme Court case law, it is worth flagging that the Mondelez Court also finds endorsement of its position from a now-infamous 2016 Delhi order in ITC v. Britannia over the blues and golds of digestive biscuit packaging that had veered dangerously close to recognizing pure colour monopolies in packaging.)
The second reason to reach for Parle is that it builds on Corn Products’ hypothetical purchaser but introduces her to the rhythms of purchase specific to this type of product. With the benefit of hindsight, it is possible to see that Parle applies a rudimentary form of what Indian trade mark law now recognizes as the storefront test in a passing off inquiry. This is the idea that only a general impression or significant details in product packaging are retained when the hypothetical purchaser’s imperfect recollection is put to an asynchronous test. Parle reduced this attenuation of recollection into its doctrinal counterweight: a comparison of “the broad and essential features” of the rival trade marks, to allow for the purchaser’s imperfect recollection.
Parle also pointedly rejected the approach of comparing rival trade marks side-by-side to assess similarity in passing off cases. In its opinion, a side-by-side comparison was unrepresentative of the manner in which purchasers ordinarily recall product information. A side-by-side comparison also, said Parle, masks the conceit of overvaluing minor variations between the rival products.
Taken in this sense, Parle is rather fatal to the Mondelez Court’s ten-point product packaging comparison (and, in fact, to the side-by-side comparison you saw at the top of this story). The points of comparison to emerge are not all “broad and essential features”; indeed, they cannot all be broad and essential features. To compensate, the Mondelez Court writes out a stack of factors built into the purchasing environment for the Plaintiff’s products, to explain how they might be confused for the Defendant’s products.
These vectors of confusion, in particular, point to:
- The target consumers being children, in both urban and rural areas;
- The potential for pillow package-style trade dress to obscure the name of the trade mark on smaller packages; and
- The low prices of the products making them amenable to informal points of purchase where scrutiny of trade names — relative to the colour and packaging of the product — may not be high.
To be clear, this discussion does not sort out exactly which features of the Defendant’s product packaging are broad and essential. What it does, though, is explain why the broad and essential features alone ought to be compared. It would, of course, be speculation on my part to narrow the Court’s ten-point list to a set of essential similarities.
It is decidedly not beyond my remit, however, to point out that the test itself does not come from Parle at all.
Digging Up Durga Dutt Sharma
In October 1964, the Supreme Court decided Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories. As in Parle some seven years later, the Supreme Court was called on to adjudicate a suit for trade mark injunction that turned on a similarity inquiry.
The Durga Dutt Sharma Supreme Court set out, in a single passage, most of what is worth saying on this subject:
“No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide, in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases.
…[If] the essential features of the trade mark of the Plaintiff have been adopted by the Defendant, the fact that the get up, packing and other writing or marks on the goods, or on the packets in which [the goods are offered] for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the Defendant may escape liability [by showing] that the added matter is sufficient to distinguish [its] goods from those of the Plaintiff.”
Durga Dutt Sharma thus volunteers, in a manner lost on the Parle Supreme Court (and, by extension, the Mondelez Court), a clear path to conceptually navigating trade mark similarity in passing off litigation. In order, there must be:
- An isolation of the essential features;
- A comparison between the rival products, in context; and
- A consideration, as far as passing off via product packaging goes, of any added matter sufficient to distinguish the Defendant’s products from those of the Plaintiff’s.
However, the Supreme Court went further.
In my book Imperfect Recollections: The Indian Supreme Court on Trade Mark Law, I wrote about Durga Dutt Sharma’s contribution to the trade mark similarity inquiry at length.
The harder similarity cases, I noted, would inevitably be where the offending trade mark is not identical to the Plaintiff’s. In such cases, courts would not simply import opposition-style standards to all cases where the trade marks were vaguely similar. It would, then, be an inquiry into whether the trade marks were ‘deceptively similar’ — an expression that Durga Dutt Sharma can claim credit for popularizing in the Indian judicial lexicon.
On the content of this similarity inquiry itself, a clear programme of action can be gleaned from Durga Dutt Sharma. At a minimum, it would involve the following five steps:
- A comparison of the trade marks and the degree to which their resemblance would confuse or deceive;
- In assessing this resemblance, phonetic elements, visual elements or
even the basic idea represented by the Plaintiff’s trade mark would
have to be considered; - In establishing the resemblance, the key would be to identify the
essential features of the Plaintiff’s trade mark, which would be a
question of fact, informed by the evidence of the usage of the trade
mark and the judgment of the Court; - The evaluation would require isolating hypothetical purchasers (usually the purchasers of the product or service in question), and calculating the likelihood of them being deceived by the resemblance; and
- The overall object of the inquiry would be to judge whether the
Defendant’s trade mark as a whole is deceptively similar to that of the Plaintiff’s registered trade mark. This principle would, with particular force, guide the comparison in cases where common words are included in one or both trade marks. In such cases, it would be proper
to look at the rival trade marks as whole, and not to disregard the parts
of them which are common.
Something quite striking emerges from a review of the trade mark similarity inquiry to fall from Durga Dutt Sharma. It is that furnishes nearly a note-perfect blueprint for the Mondelez Court’s similarity discussion. Each of the Durga Dutt Sharma steps is present and detailed, in almost the same sequence, with very much the same consequences. There is, to be sure, a sharp tear in the fabric where an assessment of whether the Defendant’s product packaging contains any added matter sufficient to distinguish its product ought to be; however, on the overall view, the rendition in Mondelez of the classic Durga Dutt Sharma trade mark similarity inquiry adapted to a passing off claim is a remarkably faithful one.
A Fork in the Road
Owing to its long winded path through the judicial system and its ex parte finality, Mondelez appears to be a precedential dead-end. If I had to guess, it will likely sit undisturbed until a whiff of similar facts brings it back onto the radar. Even so, it stands in a fairly unique position. It seemingly applies a popular and well-settled set of trade mark similarity principles to a fairly straightforward fact pattern. Taking a microscope to it, however, reveals that its real advance lies in applying, with the odd gap, a considerably stronger set of principles located a few feet deeper in the same well of Supreme Court precedent.
To passing off claims such as Mondelez, then, Supreme Court precedent Durga Dutt Sharma and Parle present two alternate, partly overlapping visions, like a fork in the evolutionary road. In the event, Mondelez’s preference for Parle over Durga Dutt Sharma (in name, anyway) amounts to little more than swerving right when it could just as easily have swerved left. Certainly, given the prevailing moment of the case, the Court’s preference does not appear to have forced any harm or injustice. Appreciating that there is a fork in this road, however, is vital nonetheless: not just because there is evidently tremendous value in taking the alternate route in this style of case but also because future judicial travellers on the same path might come to greatly appreciate the judges of today for writing them down some directions.
