Vodka bottle battle

By Manisha Singh Nair, Lex Orbis
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What’s in a shape of a bottle? A great deal, when the shape of bottles is considered distinctive and forms an intrinsic part of the goodwill and reputation of a brand.

Manisha Singh Nair Partnevr Lex Orbis Intellectual Property Practice
Manisha Singh Nair
Lex Orbis Intellectual Property Practice

Lately, the shape of a bottle of vodka was at the centre of a controversy with Gorbatschow Wodka KG (the plaintiff) contending that the shape of its bottles of vodka was distinctive, and that John Distillers Limited (the defendant) had infringed its intellectual property rights by adopting a deceptive variation of the shape of the bottles.

The defendant’s actions had, it was alleged, led a substantial portion of the purchasing public to assume that the defendant’s product had emanated from or had some connection with the plaintiff.

The plaintiff’s prayer under a Notice of Motion was to restrain the defendant, pending a court hearing, from using the bottle in question and/or any other shape identical or deceptively similar to the shape of the plaintiff’s bottle for or in relation to its product or business so as to pass off its goods as the goods of the plaintiff.

Shape matters

Under the Trade Marks Act, 1999, the shape of goods is recognized in law as being a constituent element of a trademark. Section 2(zb) of the act defines the expression “trade mark” to mean “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others”. This definition is broad enough to include “shape of goods, their packaging and combination of colours”.

The legislature has therefore recognized that the shape in which goods are marketed, their packaging and combination of colours form part of what is described as their trade dress.

Also, in a number of judgments, the law has recognized the importance of the shape in which trader sells his goods.

In Kemp and Company v Prima Plastics Ltd the court considered an action in which the defendants were alleged to have infringed the registered design of a chair manufactured by the plaintiff and to have passed themselves off as the plaintiff by adopting a similar design shape and configuration.

The court endorsed the following: “There may, indeed, be cases where an article itself is shaped in an unusual way, not primarily for the purpose of giving some benefit in use or for any other practical purposes but capriciously in order purely to give the article a distinctive appearance characteristic of that particular manufacturer’s goods. In such a case the manufacturer might be able, in the course of time, to establish that he has a reputation and goodwill in the distinctive appearance of the article itself, which will give him a cause of action in passing off if his goods were copied. In those circumstances, the putting of a copy on to the market with the distinctive feature or combination of features in question would amount to a misrepresentation that it emanated from the plaintiff.”

Decision to grant relief

In the present case, after perusal of the material on record, the court observed that there were several facts which should be taken into account when considering whether to grant injunctive relief.

First, the plaintiff had prima facie established both an international reputation and a reputation in the market in India, and the unique shape of the bottle was an important element in tracing the source of origin of the product to the plaintiff.

Second, the shape of goods and their packaging is recognized under the Trade Marks Act as a constituent element of a trademark which distinguishes the goods or services of a person from those of others.

Third, the defendant did not dispute the submission of the plaintiff that no manufacturer other than the defendant, either in India or worldwide, had adopted the shape of the bottle of the plaintiff.

Fourth, the shape of the bottle adopted by the plaintiff was unique to the point of being capricious, and had no functional relationship with the nature of the product or the packaging requirements of vodka. Also, the court noted that the defendant had no plausible or bona fide explanation for adopting a strikingly similar shape for its own bottles.

And fifth, if the defendant were allowed to continue to use the bottles in question, this would dilute the distinctiveness and exclusivity of the plaintiff’s mark, of which the distinctive shape of the bottle in which the vodka was sold was an essential ingredient. Such a situation would clearly encourage other infringers to infringe the proprietary rights of the plaintiff, and would ultimately result in the destruction of the goodwill which was associated with the plaintiff’s mark.

Design registration disregarded

The defendant argued that it was the owner of a design registration for the bottle under the Designs Act, 2000, and that this was of significance in the sense that the registration was granted only on the authority’s satisfaction that there was no other identical or similar design in existence.

This argument did not find favour with the court, for the reason that an existing design registration does not impinge the right of the plaintiff to bring an action for passing off.

Section 27(2) of the Trade Marks Act provides that nothing in the act shall be deemed to affect the right of action against any person for the passing off goods or services. Section 27(2) is a statutory recognition of the principle that the remedy of passing off lies in and is founded in common law.

Strong case for an injunction

The court concluded by granting the plaintiff’s motion, while also saying that the plaintiff had made a strong prima facie case for grant of an

Manisha Singh Nair is a partner at Lex Orbis, an intellectual property practice law firm headquartered in New Delhi



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