This article is written by Soha Goyal pursuing Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.

Introduction

Ferrero Rocher manufactured by Ferrero Spa is one of the top four confectioneries in the world. This chocolate is recognised not only for its delicious taste but also for its appealing appearance, thus making its packaging a unique selling point. In 2018, Ferrero was granted INR 1 million in damages for infringement of Ferrero Rocher trade dress. A trade dress is a kind of Intellectual Property that deals with the visual appearance of a product. With escalating consumerism and the growing significance of designs and aesthetics, distinctive yet alluring packaging becomes even more important, especially for an edible product. As all creativity calls for protection under IPR, trade dress has become essential for most brands. In this article we will understand Ferrero Rocher’s infringement case, the concept of trade dress and where does it stem from in the Indian laws and legal system. Further, we will also explore the trademark infringement case of Cadbury Gems. 

What is a trade dress?

A trade dress stands for the visual appearance of a product that may include its shape, size, design, pattern, graphics, packaging, and combination of colours through which the product grabs attention and is recognised by the masses. A trade dress may be registered to prevent its competitors from copying and using it for their businesses and services. The objective behind the protection of trade dress is to protect the consumers from imitations of original branded products, who may buy those similar looking products believing them to be the original ones.

In any trade dress infringement case, the plaintiff must establish that the visual appearance or ‘get up’ of the product or service is associated exclusively with the products of the plaintiff and has become the key element in its recognition.

Essentials of a trade dress

1. Anything that creates an overall look of the product and generates an image for the brand.
2. The appearance of the product is the distinguishing feature that makes it stand out from the others in a similar field.
3. The combination of shapes, colours and graphics summing up the trade dress shall not serve any other utility to the consumers other than recognition of the product.
4. The statutory requirement for the registration of a trade dress is the same as that of a word or a logo.

Trade dress can be secured on a variety of articles, from the shape of a bottle of soft drinks i.e., Coca-cola bottle, to design of a car i.e., the front grill of Rolls Royce, to even the interior and layout of a showroom i.e., Apple showrooms.

The jurisprudence of trade dress 

1. The jurisprudence of trade dress in the United States

The concept of trade dress has been adopted from the United States Legislation, commonly known as the Lanham Act of 1946, wherein even an unregistered trade dress can be protected against imitation.

In the famous case of Wal-Mart Stores v. Samara Bros. 529 U.S. 205, 120 S. Ct. 1339 (2000), a trade dress has been defined as a classification that initially consisted of only packaging or dressing of a product, but the recent scenario has led to the expansion of its horizons thus, also including the design of a product.

2. The jurisprudence of trade dress in India

Unlike the U.S. which recognises the concept of trade dress under Section 43(a) of the Lanham Act, the Indian law does not have a separate provision for trade dress under its existing legislation, the Trade Marks Act, 1999.

The Trade Marks Act, 1999 came into force in September 2003 and is majorly based on the English Trade Mark Act, 1994. It does not have a particular definition for trade dress but with developing jurisprudence on intellectual property rights, India is now catching up with international standards. Thus, the new definition of a trademark under Indian law by the amendment of 2010, comprises all the elements of the trade dress as under U.S. law. The Indian courts have been recognizing the concept of trade dress from even before 2003.

In 2007 Cadbury India Ltd. filed a case against Neeraj Food Products accusing them of unauthorized usage of their registered trademark ‘GEMS’. The Delhi High Court ordered in favour of Cadbury and held that the name of the defendant’s product ‘JAMES BOND’ was in fact physically and phonetically similar to the plaintiff’s trademark ‘GEMS’. Further, the packaging of the defendant’s product was deceptively similar to that of the plaintiff’s well-recognised product and was an infringement of the plaintiff’s trademark and thus the High Court restrained the defendant from using said trademark and packaging similar to the plaintiff.

Issue of the Ferrero Rocher trade dress

The plaintiff, Ferrero Spa is an Italian confectionary enterprise that is a segment of the Ferrero Group, founded in 1946. The plaintiff was ranked as one of the most reputable companies in the world by the Reputation Survey of 2017 as reported by the Forbes Magazines. 

Although Ferrero’s products were being sold in India for a long time, the company started its official commercial operations in India in 2008 by the name of Ferrero Rocher India Pvt. Ltd.  The plaintiff has established itself as a powerful player in the premium chocolates and confectionery products and enjoys an enormous consumer base “who swear by the chocolates’ uniqueness of taste, as well as their distinct visual appeal”.

The plaintiff has been immensely vigilant in protecting the company’s intellectual property like trademark and trade dress. The plaintiff has secured various trademarks across India and the world for the elements making up the FERRERO ROCHER mark, i.e. the name and the trade dress. As a result, the judicial forums across the world, including India too have recognized the plaintiff’s intellectual property rights over the mark and have also granted relief in several third party infringement cases.

The first defendant, Ruchi International was an importer and trader of chocolates, sold chocolates in India under the brand name of Golden Passion which in appearance were strikingly similar to the plaintiff’s Ferrero Rocher chocolates, sold under the Ferrero Rocher mark and trade dress. The chocolates were manufactured and exported from China under the brand name Golden Passion by the second defendant. When the suit was independent, the first defendant got the matter settled with the plaintiff amicably that led the Delhi High Court to pass a decree of compromise in an order dated 26th May, 2016 and the suit proceeded ex parte against the second defendant.

The plaintiff’s contention was that the chocolates sold by the defendant under the name of Golden Passion were a lookalike of the plaintiff’s chocolates sold under the brand name of Ferrero Rocher. The plaintiff’s trade dress, including the cover, label, colour and design are distinctive features in the packaging of its products and thus should be recognised under Section 11(6) of the Trade Marks Act, 1999. 

The plaintiff argued that such unauthorised use of identical/deceptively similar trademark or trade dress leads to infringement and created a misimpression in the minds of the consumers that the defendant’s products are somehow associated with the plaintiff. These acts were bound to cause confusion and deception, therefore amounting to passing off. Such unauthorised adoption of such a well recognised mark by the second defendant was in bad faith, calculated to take advantage of the reputation and goodwill earned by the plaintiff’s mark and trade dress. 

The defendant did not contest the suit and the court proceeded to decide the matter ex parte.

The Delhi High Court, while taking the evidence into account presented by the plaintiff, passed an order recognizing Ferrero Rocher’s mark and trade dress as well-known trademarks under the act. The court also declared that the sale of products having a mark and trade dress deceptively similar to that of the plaintiff, amounted to infringement, as there was no authorisation provided by, or affiliated with, the plaintiff. The court also granted a permanent injunction against the defendants, including their partners and associate persons, restricting them from dealing in any manner in products that are imitations of the plaintiff’s Ferrero Rocher chocolates in any way that would amount to infringement of the plaintiff’s mark and trade dress.

Further, Ferrero Rocher was granted INR 1 million as monetary damages along with an interest of 10% per annum from the date of filing of the suit up to the date of realization, and a decree was passed against the second defendant for infringement of the plaintiff’s registered mark and trade dress and violation of the interim order. 

Conclusion

With the rising influence of marketing and demand for aesthetic products, trade dress has become a significant part of the intellectual property of a company and its brand. Although India does not have a specific provision in the legislation dedicated towards trade dress, Courts in India have embraced the concept remarkably which can be seen in its precedential jurisprudence. While the principles around trade dress are still at a nascent stage in the country, the Ferrero Rocher’s case points towards the growing significance of courts recognising trade dress protection on similar grounds as that of a trademark or a brand name that has acquired distinction and uniqueness over a period of time.

References

• https://www.advayalegal.com/blog/trade-dress-in-india-evolving-law-and-jurisprudence/
• https://www.mondaq.com/india/trademark/718746/ferrero-awarded-rs1-million-in-damages-for-infringement-of-ferrero-rocher-trade-dress
• http://www.nishithdesai.com/fileadmin/user_upload/pdfs/NDA%20In%20The%20Media/News%20Articles/180609_A_Ferrero_awarded_Rs1_million.pdf
• https://www.ferrero.com/group-news/FERRERO-1st-FOOD-COMPANY-IN-THE-WORLD-FOR-REPUTATION-IN-THE-RANKING-OF-THE-100-BEST-COMPANIES?lang=EN
• https://www.ferreroindia.com/fc-2517#:~:text=Ferrero%20started%20its%20commercial%20operations%20in%20India%20in%202004.&text=The%20Ferrero%20product%20range%20 in,a%20 delicious%20 hazelnut%20chocolate%20 spread
• https://www.mondaq.com/india/trademark/262928/trade-dress-concept-and-indian-practice

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