NIVEA vs. JOY: A case of Trade Dress

The new emerging markets and the Internet today has paved the way for Businesses who have more – and more lucrative – opportunities than ever before to create valuable trademarks and more business models that ensure their company’s exposure. Your company’s brand and identity in the market are created by the nature of the goods and services it provides and the identity through which a consumer perceives your business is referred to as the Brand Value of your Company. It was observed that people often confused with the term “trademark” and “brand”. The term brand is a much wider concept that also includes the trademark within its preview. It also includes other elements like Trade Dress, slogan, design, goodwill, and the reputation that helps a consumer to easily associate with a particular company or their products. Here in this article, we will discuss the concept of one of the element of the brand i.e. trade dress with special reference to a recent judgment of Delhi High Court delivered in Beiersdorf AG v. RSH Global Private Limited & Anr., where the trade dress of NIVEA was allegedly infringed by another brand JOY. What is trade dress?
Though the word trade dress is not defined under the Trade Marks Act, 1999, but the concept is prevalent under the Law of Trademark in India. Trade dress essentially denotes the overall visual appearance of the products. In general parlance, it is also known as “Get up” of products. It includes various elements like shape or configuration of the product, packaging of the product, color pattern, size, etc. In another sense, it can be said that trade dress usually means how the product is “dressed up” to go to market. For example, purple color packaging is always associated with the Cadbury Dairy Milk Chocolate. Similarly, Parle G biscuits can be visually identified in the market by their packaging, color pattern, and design. Protection of trade dress
Like trademark, trade dress can also be protected either under the law of trademark if trade dress is registered or under the unfair competition law, or common law action of passing off, if the trade dress is unregistered. In India, there is no specific provision or statute that provides protection to the trade dress. However, the Trade Mark Act 1999 provides little guidance as to how the trade dress can be protected in India. The first and foremost provision which attracts for the protection of trade dress is the definition of “trademark” under Section 2 (zb) of the Act. It provides that trademark includes shape, color combination, and packaging of the products which is part and parcel of the trade dress. With the development of the concept, the Indian Court has given protection to trade dress through common law action of passing off. The only requirement for getting trade dress protection under the common law is that the product’s overall visual appearance must be distinctive. Case of Nivea and Joy over trade dress
The applicant in this case Beiersdorf AG has alleged that defendant RSH Global Private Limited, has infringes his trade dress and particularly his registered trademark bearing registration number 2912562 and 3289787. The details of the infringed trademark are given below: S. No. Trade mark Registration Number TRADE MARK

The plaintiff mentioned distinguishing feature of his trade dress which has been infringed by the defendant’s products. They are summarized as follows:
• Brand name written in white color with blue background
• The Blue color of the container
• Cocoa butter in the form of a droplet design in golden color in the middle of the milk swirl/splash device.
• milk swirl/splash device in white color towards the lower half of the container
The particular goods, for which this lawsuit has been filed, as well as the defendants’ allegedly infringing products, can be viewed as below:
Plaintiff’s Trade Dress Defendant Trade Dress

The defendant on the other hand submitted that they were producing and selling the beauty care and cosmetics goods under the brand name “Joy” which is different from the plaintiff brand name “NIVEA”. They further asserted that they were using different trade dress and produces various items before the court which shown here for your references.

Conclusion drawn by the Court
The court on comparing both the products finds that prima facie the product of the defendant infringes the product of the plaintiff. The court found that both the product have similar containers, shapes, and sizes with white letters on a blue background. Further, a white semicircular splash towards the lower half of the container is also similar. The court further highlights and restated that test for determining infringement in the case of trade dress is not to identify the dissimilarities between the plaintiff’s product and allegedly infringing product of the defendant, but to compare both the product as a whole. On comparing both the product as a whole it was found that the product of the defendants is deceptively similar to that of the plaintiff. The court called it deliberate infringement, which means the defendant has properly planned or decided to do it beforehand. In other words, deliberate infringement happens on purpose rather than by chance. Furthermore, the court pointed out that there is a likelihood of confusion for the product of the plaintiff and defendant amongst the consumer with average intelligence and imperfect recollection. In the juxtaposition of all the points, the court restrained the defendant from using deceptively similar trade dress for their products. Concluding Remark
From the above discussion, it can be concluded that trade dress protection is not limited only to the shape of the product but also extend to cover the size, color pattern, configuration of products. Secondly, in India trade dress can be protected under the common law action of passing off. By disusing the case of NIVEA trade dress, we also get to know the test of comparison in trade dress infringement is not to find out dissimilarity between the products but to compare both the product as a whole. The concept of trade dress is growing day by day and securing a new forum in the field of intellectual property. Recently, whether it is a case of Oreo Biscuit vs. Fabio or the product of Parle Pvt. Ltd. vs. Future Consumer has attracted the IP Professional and advocates with the high pace. In the absence of any specific statute or provision under the Trade Mark Act, whether these recent cases will compel to enact particular law on trade dress or not will be worth watching.