We are happy to bring to you a guest post by Ryan Wilson. Ryan is an associate at Sujata Chaudhri IP Attorneys, dealing with the firm’s litigation matters in the field of trade mark and copyright. He has a bachelor’s degree in law from RML National Law University, Lucknow.
A Game of Puzzle Cubes – Justice Manmohan Singh Rules on Trade Dress in the Rubik’s Cube
Ryan Wilson
The world famous Rubik’s Cube and its trade dress presented Justice Manmohan Singh with an opportunity to turn and twist the contours of Indian trade dress jurisprudence.
The puzzle before the court, was whether or not to grant an interim injunction based on the trade dress of the Rubik’s Cube. J. Manmohan Singh’s order in Seven Towns v. Kiddiland was pronounced on September 6, 2016, and can be accessed here. The Plaintiffs were represented by Sujata Chaudhri IP Attorneys. The Defendants were represented by Ms. Meenakshi Arora, Sr. Adv. and Mr. Vasav Anantharaman, Adv.
The Origin of the Rubik’s Cube & the Plaintiff’s Claim
When the suit was filed, in 2010, Seven Towns Ltd., an English Company, was the worldwide owner of all IP rights subsisting in the Rubik’s Cube. In the year 1974, a first proto type of the working cube was invented by Erno Rubik (a lecturer in the Department of Interior Design at the Academy of Applied Arts and Crafts) in Budapest, Hungary. Erno Rubik had initially named this cube as the “Magic Cube”, and later renamed the puzzle with his own name.
In addition to the trade dress in the packaging of the Rubik’s Cube, the Plaintiffs also claimed an injunction against manufacture of puzzle cubes whose trade dress was similar to trade dress of the Rubik’s Cube.
According to the Plaintiffs, the trade dress of the Rubik’s Cube had acquired distinctiveness by virtue of use for over 40 years prior to filing of the suit as well as sale of over 350 million cubes until filing of the suit.
The Plaintiffs defined the trade dress of the Rubik’s Cube to include:
- A black border/ cage consisting of lines of a particular width;
- The six faces of the cube covered with nine square stickers with rounded edges, bearing six particular shades of colour e., red, blue, orange, green, white, and yellow; and
- The specific shape and size of the Rubik’s Cube.
It should be that at the time of filing of the suit, the Plaintiff, Seven Towns Ltd., did not have any registrations for the three dimensional Rubik’s Cube in India. Therefore, in the instant suit, the Plaintiffs relied on passing-off and copyright infringement.
The Parties’ Cubes
A comparison between the parties’ cubes is shown below.
Plaintiffs’ Cube The Defendants’ Cube
The decision touches upon the following facets of trade dress jurisprudence:
- In analyzing deceptive similarity in trade dress, are the points of dissimilarity to be given emphasis or the points of similarity?
- How far must a second comer in a trade distance itself from the product of a prior user of a trade dress?
- To what extent does precedent pertaining to the trade dress of medicines, apply to the analysis of deceptive similarity of the trade dress of other products?
Set out below, is an analysis as to how the decision answers the above questions.
1. In analyzing deceptive similarity in trade dress between two products, are the points of dissimilarity to be given emphasis or the points of similarity?
The Defendants cited a 1996 decision of the Delhi High Court (Kellogg Company v. Pravin Kumar Bhadabhai, (1996) 16 PTC 187) to argue that if the labels of competing products prominently displayed dissimilar marks, there would be no consumer confusion. The Defendants argued that the prominent appearance of the mark RANCHOS on the packaging of their cube is sufficient to enable a consumer to distinguish the parties’ respective cubes. The court rejected this argument, and qualified the Kellogg’s decision to situation where the consumers were sophisticated. Moreover, the court held that it were the points of similarity between the two competing trade dresses that were to be emphasized in ascertaining consumer confusion, and not the points of dissimilarity.
Therefore, the court found that the existence of points of dissimilarity would no longer substantiate a defense in a passing-off action, unless there is an over-all dissimilarity as well.
2. How far must a second comer in a trade, distance itself from the product of a prior user of a trade dress?
In Colgate Palmolive v. Anchor Health, 108 (2003) DLT 51, the Delhi High Court recognized that the “subsequent comer has certain obligation to avoid unfair competition and become unjustly rich by encashing on the goodwill or reputation of the prior comer.” In connection with this proposition of law, the questions presented in the instant case were:
- How far does this obligation of the second comer stretch?; and
- Can the second comer, distance himself from the trade dress of the prior comer, by introducing mere variations?
As regards the first question, the court interprets Colgate Palmolive (supra) in a way that puts the onus on the defendant to show that it made every effort to stay as far away as possible from the trade dress of a prior comer and create its own goodwill. In this case, the Defendants were unable to justify why they adopted the Rubik’s Cube’s trade dress.
As regards the second question, the court ruled in the negative, by relying upon the Supreme Court’s observation in Parle Products v. JP & Co, (1972) 1 SCC 618, that “variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with.” This well-settled proposition of trademark infringement and passing-off, has been applied with equal fervor to a case such as this involving trade dress. This seems to be consistent with the court’s requirement that the plea of the dissimilarity defense must demonstrate over-all dissimilarity rather than mere points of dissimilarity or variations in detail.
3. To what extent does precedent pertaining to the trade dress of medicines, apply to the analysis of deceptive similarity of the trade dress of other products?
The Defendants relied upon Cipla v. MK Pharmaceuticals, 2008 (36) PTC 166 Del, to argue that the Plaintiffs cannot claim a monopoly over colours, and therefore, colours should be excluded in the identification of the Rubik’s Cube trade dress. The court found the argument to be misconceived as it is based on the erroneous premise that factors that influence a consumer’s decision to purchase a toy puzzle is akin to that of a person who goes to a chemist to purchase prescription drugs.
The decision does make it clear while no single party can claim exclusive rights in a single colour without demonstrating secondary meaning, it is possible for a party to claim exclusive rights in a combination of colours as was claimed by the Plaintiffs in this case. The Court distinguished Cipla from the instant case by holding that, unlike the Rubik’s Cube (whose trade dress included six particular shades of colour i.e. red, blue, orange, green, white, and yellow, as well as the back caging of the cube), Cipla dealt with a situation where the entire get up of the product was dominated by a single colour.
Last year SpicyIP’s Kiran George, argued that while in Colgate Palmolive v. Anchor Health, 108 (2003) DLT 51, the Delhi HC acknowledged that even a single colour may be registered as a mark, the Court in Cipla Limited vs M.K. Pharmaceuticals, 2008 (36) PTC 166 Del, made a diametrically opposite assertion that monopoly over colours cannot be claimed. Seven Towns v. Kiddliand also offers some clarity on this point as well. The decision makes it clear that Cipla v MK Pharmaceuticals only prohibits claims to proprietary rights over colours, if and only if, colour plays a role in helping the consumer identify the product. In Cipla v MK Pharmaceuticals, colour did not play a product-identifying role when consumers purchased medicines form chemists. However, in Seven Towns v. Kiddiland, the same could not be said about a child purchasing toys, where colours form an essential component of the trade dress.
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Has Justice Manmohan Singh solved the puzzle, or instead, twisted it to tempt an appeal? Only time will tell. For its creator, Erno Rubik, once remarked:
“We turn the Cube, and it twists us.”
Image from here