Plaintiffs are manufacturers of containers, used to store food products, sold under the brand name ’Tupperware’. Defendant is also a manufacturer of containers, used for storage of food products, sold under the brand name ‘Signoraware’. Plaintiffs have brought this action seeking remedies in respect of Plaintiffs’ Suit Products [MM Square, Best Lunch Bag and Spice Shakers].
Fascinating questions arise for consideration. This case deals with ‘product configuration trade dress’, where product and trade dress cannot be demarcated. Mohan Lal v. Sona Paints, 2013 (55) PTC 61 (DEL) and Faber Castell v. Cello Pens, 2016 (65) PTC 76 (BOM) indicate, not only product packaging but product configuration also may be protected as trade dress. In order to claim such protection, distinctiveness of trade dress and consequent reputation and goodwill in relation thereto should be established. The ‘product configuration trade dresses’ of Plaintiffs’ Suit Products are not ‘inherently distinctive’. Perhaps, product configurations can never be ‘inherently distinctive’. Plaintiffs should establish ‘acquired distinctiveness’, to establish a right to trade dress protection. PW3, Authorized Distributor for ‘Tupperware’, deposed, many tried to exchange lids and bases by relying on life-time warranty of ‘Tupperware’ and such lids and bases sometimes turned out to be from ‘Signoraware’. PW4, also an Authorized Distributor for ‘Tupperware’, deposed, she had visited homes to remodel kitchens and found ‘Signoraware’ being used under mistaken impression it was ‘Tupperware’. There is sufficient evidence of reputation and goodwill.
Another significant dimension to this case: Defendant’s Suit Products appear to be a copy of combined features of Plaintiffs’ Suit Product. Answers were clearly evasive and confirm, Defendant copied Plaintiffs’ trade dresses. There is no tort of copying. But copying with intent to deceive or with knowledge of likelihood of deception amounts to passing off. Defendant was at liberty to copy and make a look-alike, provided ‘trade origin’ of Defendant’s Suit Products was depicted clearly enough to enable customers to easily distinguish. The interest of customers is likely to be prejudiced if close copying is without adequate disclosure of ‘trade origin’. I conclude, close copying by Defendant was unaccompanied by adequate notice of ‘trade origin’.
Plaintiffs are clearly entitled to a permanent injunction restraining sale of Defendant’s Suit Products. Defendant shall pay a sum of Rs. 10 Lakhs to Plaintiffs as costs.
– Hon’ble Justice Senthilkumar Ramamoorthy of Hon’ble High Court of Madras, Dart Industries Inc. v. Techno Plastic Industries, [Civil Suit No. 828 of 2015] decided on 23.11.2022.