Colgate Palmolive Co. Ltd & Another. vs. Mr. Patel & Others., Delhi High Court 2005 PTC (31) 583Author: Rahul Cherian

This is a case relating to the legal principle of infringement of a trademark. It was decided by a Single Judge Bench of the Delhi High Court comprising of Justice M Mudgal.

Colgate Palmolive Co. Limited (hereinafter referred to as the plaintiffs) is a company that has been manufacturing and marketing dental products in India under the well-known trademark 'COLGATE' since 1937. The company undoubtedly is also an international leader in the trade of tooth paste and other dental related products. The plaintiffs registered their trademark in India in the year 1954. Since then they have always marketed their products in red cartons which had the word COLGATE inscribed in white on it. They used a particular font for printing the trademark on the cartons. Further they had even registered their label relating to colors in India in the year 1959. From then on they have been exclusively enjoying the ownership rights over the trademark 'COLGATE' and also the label containing the red and white colors inscribed on it.

In the year 2003 the plaintiffs came to know that Mr. Patel and his company(hereinafter referred to as the defendants) were using the plaintiff's COLGATE trade dress in the packaging of their products with relation to the layout and color combination of the cartons. The defendants used the word 'AJANTA' printed in white color in a red background in their cartons. Subsequently the plaintiffs filed a suit before the Delhi High Court seeking a permanent injunction against the defendants, thereby restraining them from using the trade dress that was similar in layout and appearance even though the names printed on the cartons were different.  They contended that the defendants had infringed their trademark and copyrights. And further that they were indulging in unfair competition by trying to sell their products using the brand name of trademark COLGATE.

On the other hand, the defendants contended that there was nothing distinctive in the color combination of the plaintiff's container and that the plaintiff could not have a trademark in color combination. Further they claimed that the red and white label was common to the toothpaste trade.

The Honorable Judge observed that essential feature of the plaintiffs' mark was COLGATE inscribed in white color on a red background and not merely red and white color combination alone. He held that the printing of the word ‘AJANTA’ on the defendants’ cartons in white color on a red background does not give rise to any infringement of the plaintiffs’ trade dress. Also affirmed the contention of the defendants that red was a basic color and the red & white color combination is common to the tooth paste trade in the domestic as well as the international market. Hence there cannot be any monopolization of the same by any party. However, he finally held that the defendants were liable for trying to sell their products using the brand name of COLGATE since there was sufficient resemblance between the plaintiffs' and the defendants' product. Further the court ruled that if the defendant alters the packaging there would not arise any question of infringement of the copyright and trademark of the plaintiff. Accordingly the court ordered them to substitute gold for white color in the description of ‘AJANTA’ in their cartons.

Thus, the injunction application was disposed of by the court and the defendants were permitted to market their products provided they made the required alterations in their packaging of the products.