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January 7, 2020

Merely Decorative Feature Cannot Be Protected Under Trade Dress Law

Author: Siddharth Varshney

In the matter of Merwans Confectioners Pvt. Ltd. v Sugar Street and 2 others [CS (L) No. 1100/2019], the Bombay High Court (R.D. Dhanuka, J.), vide its order dated December 17, 2019, has held that a merely decorative and aesthetic feature without any source identifying role cannot be protected under trade dress law, thereby dismissing the Plaintiff’s interim injunction application.

The dispute arose after termination of a Franchise Agreement between the parties, whereunder the Plaintiff had franchised a confectionery store under its brand ‘Merwans’ to the Defendants. The Plaintiff claimed that it had provided drawings of the precise layout (including furniture and fixtures, colour scheme, etc.) of the outlet to the Defendants at the time of entering into the Franchise Agreement. The Plaintiff claimed that the distinctive décor of all its outlets is exclusively associated with it and forms the trade dress of its shops. It was alleged that the Defendants continued to use the said trade dress in the décor, layout and design of the shop even after termination of the franchise agreement.

The Defendants submitted that none of the equipment, cool-cabinets, counters, etc. were uniquely or proprietarily designed by the Plaintiff. The Defendants argued that they have not been using any of the proprietary/promotional/identifiable materials belonging to the Applicant. The Defendants further submitted that they have already removed or stopped using the labels, uniforms, tiles, software, etc. which formed part of the franchise agreement.

The Court made a prima facie finding that the Defendants were not using the Plaintiff’s trade dress after termination of the Franchise Agreement. The interim injunction application was accordingly dismissed and it was held that “…a product feature whose only impact is decorative and aesthetic with no source identifying role cannot be given exclusive rights under trade dress law. It is the likelihood of confusion with the total overall trade dress that is the test…The test is whether there is likelihood of confusion or deceptiveness in the minds of unwary customers irrespective of dissimilarities in the trade name.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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