Colour Combinations, Trade Dress & Copyright

Fact: Honasa Consumer Ltd. vs Cloud Wellness Pvt. Ltd.

The Plaintiff, Honasa Consumer Limited, is engaged in the marketing and sale of beauty, skin care, personal care, and baby products, sold both in India and internationally. Defendant No. 1, Cloud Wellness Pvt. Ltd., operates in the same product segment, with Defendant No. 2 being one of its directors. The Plaintiff markets a product line under THE DERMA CO. brand, which uses a distinct visual identity involving unique color schemes, stylized layouts, and packaging termed as its “Subject Trade Dress”. The Defendants market products under DERMATOUCH, whose trade dress is alleged by the Plaintiff to be deceptively similar and a slavish imitation of the Plaintiff’s packaging.

The Plaintiff claims copyright in its trade dress, having commissioned a design agency in 2019 for the artwork and used the designs since January 2020. The Plaintiff believes this trade dress has attained public recognition and acts as a source identifier. The dispute centers around whether Defendants have copied this trade dress, thereby infringing the Plaintiff’s copyright and passing off their business as that of the Plaintiff’s, riding on the goodwill and reputation vested in THE DERMA CO. mark.

Procedural Details

The Plaintiff filed a civil suit in the Delhi High Court seeking an interim injunction against the Defendants under Order XXXIX Rules 1 and 2 of the Civil Procedure Code. The relief requested was to restrain the Defendants from using the impugned trade dress for their beauty and skincare products, asserting infringement of copyright under the Copyright Act, 1957 and passing off under common law.

Dispute

The core of the dispute is whether the Defendants’ product packaging replicates, imitates, or is deceptively similar to the Plaintiff’s protected trade dress. The Plaintiff asserts ownership of original artistic work in the trade dress and claims exclusive rights under Sections 13, 14, and 51 of the Copyright Act, 1957.

The Plaintiff further relies on the doctrine of passing off, arguing that the Defendants are riding on its goodwill through substantially similar packaging. The Plaintiff argues it has invested heavily in advertising and promotion, resulting in distinctiveness and secondary meaning acquired by its trade dress.

Defendants’ Arguments

• The Defendants question the originality of the Plaintiff’s trade dress, claiming prior existence of similar designs in the market before the Plaintiff’s adoption.
• They highlight four other companies with similar packaging as early as 2010–2019.
• The Defendants argue that the Plaintiff’s color combination and layout are neither unique nor inventive, thus incapable of protection as original artistic work.
• They assert that consumers buy such products based on quality, ingredients, and price, not packaging.
• The Defendants contend their adoption was bona fide, driven by market norms, not as an imitation.
• They claim ongoing honest co-existence in the market for over four years, with no evidence presented by the Plaintiff of actual confusion among consumers.
• They argue that any loss, if caused, is compensable monetarily.

Detailed Reasoning

The Hon’ble Court began its analysis by reiterating that interim injunctions are granted when the existence and violation of asserted legal rights are contested and uncertain. The object is to prevent irreparable injury to the Plaintiff pending trial, subject to three tests:

Court’s Analysis

In considering deceptive similarity, the Court emphasized that consumer choices in the skincare industry are primarily ingredient-driven rather than packaging-driven. Product packaging, including color schemes or layouts, plays a limited role compared to formulations and brand names.

The Court clarified that protection under the Copyright Act, 1957 is for original artistic works under Section 2(c). The Plaintiff’s claim of originality was challenged based on prior art—Defendants presented examples of similar packaging by “Hylamide” since 2015 and others since 2010, arguing that mere color juxtaposition cannot constitute originality without distinctive creative authorship.

Passing Off

The Court referred to the “classic trinity” of passing off—goodwill, misrepresentation, and damage—as laid down in Heinz Italia, Laxmikant V. Patel, and Syed Mohideen. The burden was on the Plaintiff to show its get-up had acquired sufficient recognition such that consumers would likely be misled, even with distinct brand names like DERMATOUCH displayed.

Secondary meaning was deemed crucial, and the Court observed that color combinations or packaging are registrable only when associated exclusively with a single source. No substantial evidence was presented by the Plaintiff to prove exclusive association or actual consumer confusion.

Delay and Coexistence

It was noted that both parties had coexisted in the market for four years, with no concrete proof of confusion or decline in Plaintiff’s sales. The Court held that injunctions are generally not granted when both parties have openly coexisted unless demonstrable prejudice is shown.

Judgment

After careful consideration, the Court held that the Plaintiff had not made out a clear prima facie case for an interim injunction. The disputed issues—originality, distinctiveness, and prior use—required evidence and could only be resolved at trial.

The prolonged market coexistence, lack of customer confusion, and distinct brand names led to the conclusion that no irreparable injury would be caused to the Plaintiff without the injunction, and any loss could be compensated monetarily.

Case Summary Table

Disclaimer

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By

Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi