Author: Intern - Soumya Singh
In the matter of ITC Limited v. N. Ranga Rao & Sons Private Ltd. [O.S.A Nos. 183 and 184 of 2021], a Division Judge Bench [Sanjib Banerjee and P.D. Audikesavalu, JJ.] of the Madras High Court, by judgment dated November 15, 2021, allowed the appeal and set aside the previously passed injunctions, holding that similarity in the combination of primary colours of the colour scheme on the packaging, cannot by itself be a ground for injunction.
Section 29 (7) of the Trade Marks Act, 1999 (“the Act”) states, “A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services…” and Section 2(1)(zb) of the Act defines, “‘trade mark’ means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;”. The question that arises is whether similarity in a ‘combination of colours’ can be a ground for trademark infringement by itself, or does it need to be assessed as a whole with the packaging?
The Respondent argued for their “specific” colour combination of yellow-gold, which they have conceived and adopted for their products and have obtained statutory protection by obtaining registration under the Act. The Respondent alleged that the Appellant was engaged in the business of similar goods and had used a similar combination of colours.
The Appellant argued that no one can claim exclusivity or ownership over any colour combination, particularly if two primary colours are involved. And further argued that their names, get-up, and packaging materials are distinct.
The Court upheld the Appellant’s claims clarifying that the packaging was distinct except for the similar colour combination and that a combination of colour scheme of primary colours cannot by itself form a basis for issuing an injunction on the grounds of passing off; and made relevant observations: “upon a look at the defendant’s packaging material, notwithstanding the colour combination thereof, there is scarcely any resemblance to the plaintiff’s packaging apart from the fact that the red and yellow hues are somewhat common” and that “… there does not appear to be any element of passing-off, notwithstanding the similarity in the colour scheme where two primary colours are used in both cases, there was no justification or basis for issuing any injunction.”
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