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SEVEN TOWNS LTD & ANR v. M/S KIDDILAND & ANR (6th Sept 2016) (Delhi HC)


Posted By Shrihar on 01 Aug 2017

FACTS

  • The plaintiff No.1, Seven Towns Ltd. is a company incorporated under the laws of England and is world renowned in connection with the manufacture and distribution of a wide range of leisure products inter alia including the world famous Rubik's Cube. 
  • Plaintiff No.1 is worldwide the owner of the trademarks RUBIK and RUBIK'S CUBE as well as trade dress in the famous Rubik's Cube.
  • Plaintiff No.1 owns copyright in the artwork of the label found on the packaging of the Rubik's Cube.
  • The Plaintiff No.1's Rubik's Cube is imported and distributed in India, including in the Capital Territory of New Delhi, through its authorized licensee, namely, plaintiff No.2 -Funskool (India) Ltd.
  • It is a puzzle game comprising of twenty six individual little cubes which together make up a single and larger cube. Each layer of nine cubes can twist and the layers can overlap. Any three squares in a row, except diagonally, can join a new layer. In a classic Rubik’s Cube each of the six faces is covered by nine stickers, among six solid colors (traditionally white, red, blue, orange, green, and yellow) being distinctive trade dress.
  • The defendants are engaged in manufacture and sale of toys and other products for children. They sell a product called Rancho's Cubes (the "infringing product) as being the plaintiff No.1’s Rubik's Cube.
  • The product Rancho’s cube is almost the same as that of the plaintiff’s in every respect and comprises of 36 smaller cubes comprising a larger cube; each layer of nine cubes. The label is also deceptively similar.
  • Since the trade dress of Rubik’s cube was not registered in India, only action of copyright infringement with respect to label and passing off with respect of the product was alleged.

PLAINTIFF’S CONTENTIONS

  • The plaintiffs submit that the defendants have also copied the original artwork found on the label of the packaging, including the distinctive combination of the colours red, blue, dark green, light green and orange as well as other artistic features like the distinct comic font with each letter of the mark in a different color and the placement of the words "AGES 8 to Adult" on the label.
  • The plaintiffs also contended that the defendants attempt to ride on the success of Rubik’s cube and the unauthorised use of their trade dress and label amounts to passing off and copyright infringement under S. 51 of the Indian Copyrights Act.

DEFENDANT’S CONTENTIONS

  • The defendants submitted that there were a lot of dissimilarities between their products’ trade dress and label and plaintiff’s trade dress and label and they cannot be termed as deceptively similar. They also claimed that they have also incurred a lot of expenditure in the advertising of their product.
  • Further it was argued that monopoly cannot be granted on the use of colours.
  • It also contended that the number of products sold by the defendants is double the number of products sold by the plaintiffs and thus, the suit is mala fide and aims at bringing the defendants down. The price of defendant’s product is also half the price of the plaintiff’s product.
  • They also submitted that the plaintiffs have failed to produce any documents to show that their product was widely recognised in India.

ISSUES

  • Whether plaintiff’s product’s trade dress is inherently distinctive?
  • Whether the similarities in the products outweigh the dissimilarities?
  • To what extent should the new comer distance itself from the prior user?

DECISION

The court pointed out that the case of passing off can be made out as per the given material. The court also rejected the defendant’s submissions that no exclusivity can be granted to the colours as it was not demanded. The court held that general public is likely to be confused between the two products. The suit was decided in favour of the plaintiff.

OBSERVATION

The court observed that plaintiff’s trade dress does not constitute merely the colours. The plaintiffs are not seeking protection in any single feature but in the combination of all these features which constitutes the get up of a product namely the combination of shape/size/color-combination/black border of the squares etc. As far as similarities and dissimilarities are concerned, the court observed that the focus should be the similarities in the public interest and if the similarities cause confusion then the products can be termed as similar. The court also observed that dissimilarities are bound to occur but they have to be substantial. The court also observed that the new comer should make all the possible efforts to distinguish his product from the prior user.  

 CONCLUSION

The court has rightly made the observations because if selling products by making minor variations is allowed, it will be against the basic tenets of Intellectual Property Law. The IPR protection will be rendered useless if such activities are allowed.

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