I. WHETHER THE USE OF A SIMILAR TRADE DRESS BY WAVE PVT. LTD.

CONSTITUTES TRADEMARK INFRINGEMENT UNDER SECTION 29 OF

It is humbly submitted before this Hon’ble Court that the use of a similar trade dress by Wave
Pvt. Ltd. Does not constitute trademark infringement under Section 29 of the Trademarks Act,
1999. The fundamental objective of trademark law is to protect a proprietor’s mark from
being used in a deceptive manner that causes confusion among consumers. However, for
infringement to be established, the elements of deceptive similarity, consumer confusion, and
wrongful association must be conclusively proven. In the present case, ABC Pvt. Ltd. Has
failed to establish these essential elements, as the mere similarity in packaging does not, in
itself, constitute infringement unless it leads to actual or potential consumer deception. The
Trial Court correctly held that Wave Pvt. Ltd. Operates in a distinct market segment with a
different pricing strategy, branding approach, and product composition, making ABC’s claims
untenable in law.

1. No Deceptive Similarity Between the Trade Dresses

It is pertinent to mention that the Section 29(2) of the Trademarks Act, 1999, provides that a
registered trademark is infringed if another party uses an identical or deceptively similar
mark in relation to identical or similar goods or services, causing confusion among the public.
However, deceptive similarity must be evaluated holistically, considering the overall impact
of the marks, including font, design, packaging layout, and product differentiation.

In Colgate Palmolive v. Anchor Health & Beauty Care (2008) 1, the Delhi High Court held
that mere color similarity in packaging does not amount to infringement if the overall
presentation, including the brand name and font, is distinct. In the present case, while both
ABC Pvt. Ltd. And Wave Pvt. Ltd. Use a one-third red and two-thirds white packaging, the
following distinctions exist:

 Wave Pvt. Ltd. Uses a black font, whereas ABC Pvt. Ltd. Uses white.
 The brand name “Wave” is distinct from “ABC,” making consumer confusion
unlikely.
 Wave Pvt. Ltd. Sells dental cream products in herbal and anti-cavity variations, unlike
ABC Pvt. Ltd., which has a broader range of oral care products.

1
Colgate Palmolive v. Anchor Health & Beauty Care (2008) 38 PTC 269 (Del)
Considering these factors, the minor resemblance in packaging is insufficient to establish
deceptive similarity, as held in Perry v. Truefitt (1842) 2, where the court ruled that minor
similarities in product presentation do not automatically amount to passing off unless
consumer deception is proven.

2. Trade Dress Cannot Be Monopolized Without Acquired Distinctiveness

The trade dress protection under Section 29 of the Trademarks Act, 1999 is granted only
when a particular packaging or color scheme has acquired secondary meaning in the minds of
consumers. In ITC Ltd. V. Nestle India Ltd. (2020) 3, the Delhi High Court held that color
combinations alone do not qualify as distinctive trade dress unless proven to have acquired
secondary meaning.

ABC Pvt. Ltd. Has failed to provide conclusive consumer surveys, marketing studies, or
brand recognition reports to establish that its red and white color scheme has acquired
secondary meaning. Moreover, red and white packaging is widely used in the toothpaste
industry, making it a generic trade dress element that cannot be exclusively claimed by ABC
Pvt. Ltd.

Furthermore, in Amritdhara Pharmacy v. Satya Deo Gupta (1963) 4, the Hon’ble Supreme
Court of India held that the overall impression of the mark must be considered, and minor
similarities do not constitute infringement if the brand names are distinct. The present case
follows this principle, as Wave Pvt. Ltd.’s name, font style, and pricing structure are
sufficiently different from ABC Pvt. Ltd., mitigating any likelihood of confusion.

3. The Absence of Actual or Potential Consumer Confusion

For a claim of trademark infringement under Section 29(2) to succeed, ABC Pvt. Ltd. Must
demonstrate that consumers are actually misled or are likely to be misled into purchasing
Wave Pvt. Ltd.’s product, believing it to be associated with ABC Pvt. Ltd. In Cadila
Healthcare Ltd. V. Cadila Pharmaceuticals Ltd. (2001) 5, the Supreme Court emphasized that
the likelihood of confusion must be assessed from the perspective of an ordinary consumer
with average intelligence and imperfect recollection.

2
Perry v. Truefitt (1842) 6 Beav 66
3
ITC Ltd. V. Nestle India Ltd. (2020) 81 PTC 121 (Del)
4
Amritdhara Pharmacy v. Satya Deo Gupta (1963) AIR SC 449
5
Cadila Healthcare Ltd. V. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73
 Applying this principle to the present case, the following facts demonstrate the absence of
consumer confusion:

 Wave Pvt. Ltd.’s product is priced significantly lower than ABC Pvt. Ltd., appealing
to a distinct market segment.
 The font, logo placement, and name of the product are different, ensuring clear brand
differentiation.
 The Trial Court found no evidence of consumers mistakenly purchasing Wave Pvt.
Ltd.’s products instead of ABC Pvt. Ltd.’s products.

In Gillette UK Ltd. V. Edenwest Ltd. (1994)6, the court held that mere resemblance in
packaging does not create consumer confusion unless there is evidence of actual
deception or loss of brand distinctiveness. ABC Pvt. Ltd. Has failed to establish any such
loss, and thus, its claim must fail.

4. ABC Pvt. Ltd. Cannot Rely on Market Share Decline as a Ground for Infringement

A decline in sales does not automatically indicate trademark infringement. The Hon’ble
Supreme Court in M/S Lakme Ltd. V. M/S Subhash Trading (1996)7, ruled that a decline in
market share could be caused by several factors, including changing consumer preferences,
pricing strategies, and increased competition.

ABC Pvt. Ltd. Itself admitted in its consumer survey that consumers preferred Wave Pvt. Ltd.
Due to its affordability, not because they were deceived into thinking it was ABC Pvt. Ltd.’s
product. Thus, the decline in ABC Pvt. Ltd.’s market share is a result of fair market
competition, not trademark infringement.

II. WHETHER ABC PVT. LTD. CAN CLAIM EXCLUSIVITY OVER THE RED
AND WHITE COLOR COMBINATION AS A TRADE DRESS.

It is humbly submitted that ABC Pvt. Ltd. Cannot claim exclusivity over the red and white
color combination as a trade dress since colors, in themselves, are not inherently distinctive
unless they have acquired a secondary meaning in the minds of consumers. The Trademarks
Act, 1999, protects trade dress that has become distinctive and indicative of a particular
source. However, in the present case, the red and white combination is commonly used in the
oral care industry, and ABC has failed to establish its exclusivity over the trade dress.

6
Gillette UK Ltd. V. Edenwest Ltd. (1994) RPC 279
7
M/S Lakme Ltd. V. M/S Subhash Trading (1996) PTC 379 (SC)
Furthermore, several judicial pronouncements have established that color combinations are
not inherently protectable unless proven to be strongly associated with a single brand, which
is not the case here.

1. Legal Framework Governing Trade Dress Protection

The Trademarks Act, 1999, under Section 2(zb), includes “trade dress” within the definition
of a trademark. Trade dress refers to the overall appearance and packaging of a product that
signifies its origin. However, mere color combinations cannot be monopolized unless they
have acquired distinctiveness and become capable of identifying the goods of a particular
trader.

Section 9(1)(a) of the Trademarks Act, 1999, prohibits the registration of marks that are
devoid of distinctive character. Similarly, Section 9(1)(b) states that a mark that consists
exclusively of signs or indications that serve in trade to designate the kind, quality, or
intended purpose of goods cannot be registered unless it has acquired a secondary meaning in
consumer perception.

In the present case, the red and white color combination is generic in the toothpaste industry,
widely used by brands like Colgate, Pepsodent, and Sensodyne, and thus, does not possess
the required distinctiveness for exclusive protection.

2. The Red and White Color Combination is Commonly Used in the Industry

The red and white color combination is widely used in the oral care market, making it generic
and incapable of acquiring distinctiveness. Several major toothpaste brands, including:

Colgate (Red and White)

Pepsodent (White and Blue)

Sensodyne (White and Red)

Utilize similar color schemes. The widespread use of red and white in the industry indicates
that no single company can claim monopoly over it.

In Cadbury UK Ltd. V. The Comptroller General of Patents, Designs and Trade Marks,
[2013]8, the UK Court of Appeal rejected Cadbury’s claim to trademark the color purple,

8
Cadbury UK Ltd. V. The Comptroller General of Patents, Designs and Trade Marks, [2013]
EWCA Civ 1174
 stating: “A single color does not inherently serve as a badge of origin unless the applicant
proves strong consumer recognition.”

Applying this rationale, ABC Pvt. Ltd. Must provide strong evidence proving that consumers
associate the red and white color combination solely with its brand, which it has failed to do.

3. The Global Perspective on Trade Dress Protection for Color Combinations

Internationally, courts have upheld the principle that a color combination must be inherently
distinctive or acquire secondary meaning to be protected as a trade dress.

In Qualitex Co. v. Jacobson Products Co. (1995)9, the US Supreme Court held that: A color
can be protected under trademark law only if it has acquired distinctiveness and acts as a
source identifier.

However, in the present case, ABC Pvt. Ltd. Has not produced any market surveys or
consumer perception studies proving that the red and white color combination is exclusively
associated with its brand. Therefore, its claim must be rejected.

4. The Implications of Granting Exclusive Rights Over the Color Combination

Granting exclusivity over a commonly used color combination would create an anti-
competitive market, preventing new entrants from using industry-standard packaging. This
would violate Section 3 of the Competition Act, 2002, which prohibits monopolistic and
restrictive trade practices.

In Tobacco Institute of India v. ITC Ltd. 2005 10, the Supreme Court held that: Overbroad
trademark claims must be rejected to prevent anti-competitive monopolization of industry-
standard features.

Applying this reasoning, ABC Pvt. Ltd. Cannot monopolize an industry-wide practice, and its
claim must be dismissed.

III. WHETHER THE SHAPE OF THE TOOTHPASTE TUBE USED BY ABC PVT.
LTD. CAN BE PROTECTED UNDER INTELLECTUAL PROPERTY LAWS?

It is humbly submitted that the shape of the toothpaste tube used by ABC Pvt. Ltd. Cannot be
protected under intellectual property laws as it lacks distinctiveness and has not been
registered under the applicable laws. The protection of product shape falls under the domain
9
Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995)
10
Tobacco Institute of India v. ITC Ltd., 2005 (30) PTC 1 (SC)
of trademark law, design law, and patent law, each of which has specific requirements that
must be fulfilled for enforceability. The tube shape used by ABC Pvt. Ltd. Is a functional and
commonly used design, which cannot be monopolized unless it has acquired secondary
meaning or has been legally registered under the Designs Act, 2000.

In the present case, ABC Pvt. Ltd. Has not registered the shape of its toothpaste tube under
the Designs Act, 2000, and it does not meet the criteria for trademark protection under
Section 2(m) of the Trade Marks Act, 1999. Further, the shape does not demonstrate any
novelty or inventive step to be eligible for a patent under the Patents Act, 1970. Therefore,
ABC Pvt. Ltd. Cannot claim exclusivity over the shape of the toothpaste tube, and its
allegations against Wave Pvt. Ltd. Are legally unsustainable.

1. Lack of Protection Under The Trade Marks Act, 1999

The Trade Marks Act, 1999, allows for the registration of the shape of goods as a trademark
under Section 2(m) and 2(zb), provided that it serves as a source identifier and has acquired
distinctiveness. However, functional or commonly used shapes cannot be protected as
trademarks.

In Philips Electronics NV v. Remington Consumer Products Ltd.(2006) 11, the court held that
functional shapes cannot be granted trademark protection, as doing so would provide an
unfair monopoly over a commonly used design.

In the present case, the toothpaste tube shape is a standard cylindrical structure, widely used
in the industry. ABC Pvt. Ltd. Has failed to establish distinctiveness or secondary meaning,
and consumers do not associate the shape exclusively with ABC’s products. Hence, the claim
of trademark infringement over the tube shape is not legally tenable.

2. No Protection Under The Designs Act, 2000

The Designs Act, 2000, protects industrial designs that are new, original, and not functional.
Section 2(d) of the Act defines a “design” as the features of shape, configuration, pattern, or
composition of lines or colors applied to any article that are judged solely by the eye.
However, functional designs are excluded from protection under Section 2(d).

11
Philips Electronics NV v. Remington Consumer Products Ltd., (2006) EWHC 989 (Pat)
 In Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd. (2008) 12, the Delhi
High Court held that common industry packaging designs cannot be monopolized unless they
are registered under the Designs Act and are distinctive. The court ruled that a toothpaste tube
is a standard design and cannot be monopolized by one company.

Further, in Gopal Glass Works Ltd. V. Assistant Controller of Patents & Designs (2010) 13, the
Calcutta High Court clarified that design protection is only available for non-functional,
aesthetic aspects of a product.

In the present case, ABC Pvt. Ltd. Has not registered the shape of its toothpaste tube under
the Designs Act, 2000. The cylindrical tube shape is industry standard, used by multiple
brands, and serves a functional purpose—dispensing toothpaste efficiently. Since the design
is functional and commonly used, it is not eligible for protection under the Designs Act.

3. No Protection Under The Patents Act, 1970

Patent protection under the Patents Act, 1970 is granted to novel and inventive products or
processes that demonstrate an inventive step and industrial applicability. However, product
shapes or packaging are generally not patentable unless they incorporate a novel functional
feature.

In Reckitt Benckiser v. Wyeth Ltd. (2013) 14, the Delhi High Court held that mere aesthetic
modifications of a commonly used product cannot be granted patent protection unless they
serve a functional and inventive purpose.

The shape of a toothpaste tube is a standard industry design, used by several companies
across the world. ABC Pvt. Ltd. has neither demonstrated novelty nor inventive step, and
thus, cannot seek patent protection over its tube shape. The absence of a patent eliminates any
claim of exclusivity over the shape of the container.

IV. WHETHER WAVE PVT. LTD.’S PRODUCT CREATES CONSUMER

12
Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd., 2008 (36) PTC
194 (Del)
13
Gopal Glass Works Ltd. V. Assistant Controller of Patents & Designs, (2010) 43 PTC 164
(Cal)
14
Reckitt Benckiser v. Wyeth Ltd., 2013 (54) PTC 90 (Del)
It is humbly submitted that the claim of consumer confusion made by the Appellant is
unfounded, as the Respondent’s product does not create any misleading association with the
Appellant’s brand. The mere presence of a similar color scheme in the trade dress is not
sufficient to establish confusion unless there is substantial similarity in the overall impression
of the product. The Hon’ble Supreme Court, in Cadila Healthcare Ltd. V. Cadila
Pharmaceuticals Ltd. (2001)15, emphasized that likelihood of confusion must be assessed
based on a combination of factors, including the distinctiveness of the packaging, product
composition, and consumer perception. In the present case, Wave Pvt. Ltd. Has taken
significant steps to differentiate its brand from ABC Pvt. Ltd., including differences in font,
product name color, and the nature of the toothpaste itself.

Further, it is submitted that consumer confusion must be actual and not speculative. Courts
have consistently held that minor similarities in packaging do not lead to deception if the
products have clear branding distinctions. The Hon’ble Supreme Court in Parle Products (P)
Ltd. V. J.P. & Co., Mysore 197216, held that the test for deceptive similarity must be based on
the first impression of an ordinary purchaser with imperfect recollection. However, in the
present case, the Respondent’s product is clearly distinguishable, with different textual
elements, a different name, and distinct pricing strategies, thereby eliminating the risk of
unfair competition.

1. The Principle of Consumer Perception: No Substantial Similarity Exists

The determination of consumer confusion should be based on how an average consumer

Moreover, as stated in ITC Ltd. V. Britannia Industries Ltd. (2016) 18, when trade dress is
evaluated for deceptive similarity, the entire get-up of the product must be compared
holistically. The difference in Wave Pvt. Ltd.’s logo, font style, and product naming strategy
15
Cadila Healthcare Ltd. V. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73
16
Parle Products (P) Ltd. V. J.P. & Co., Mysore, AIR 1972 SC 1359
17
Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd., 2003 (27) PTC
478 (Del.)
18
ITC Ltd. V. Britannia Industries Ltd., 2016 (65) PTC 15 (Del.)
ensures that a discerning consumer would not mistake it for ABC Pvt. Ltd.’s product. The
fundamental principles of distinctive branding and product differentiation, which are the core
of modern trademark law, suggest that no confusion arises merely from color similarities if
other distinguishing elements exist.

2. Different Target Market and Pricing Strategy

The consumer preference and economic considerations also play a role in determining the
likelihood of confusion. The Respondent’s product is positioned in a different price segment,
targeting budget-conscious consumers who are unlikely to be misled into purchasing it
believing it to be an ABC product. The Hon’ble Supreme Court in M/S S.M. Dyechem Ltd.
V. Cadbury (India) Ltd. (2000), held that the likelihood of confusion must be judged based on
the target consumer base and the purchasing behavior of an ordinary buyer.

In the present case, the Respondent’s product is marketed primarily in the regions of Pearl
and Harvy, where consumers prioritize affordability over brand loyalty. The price
differentiation between ABC Pvt. Ltd. And Wave Pvt. Ltd. Reinforces the fact that consumers
knowingly purchase Wave products due to economic preference, rather than being misled by
its trade dress. The claim that consumers are purchasing Wave’s product due to confusion,
rather than an Informed choice, is baseless and speculative.

3. The Trial Court’s Finding Against Consumer Confusion is Justified

The Hon’ble Trial Court correctly ruled that Wave Pvt. Ltd. Did not create consumer
confusion leading to unfair competition. The findings were based on substantial differences in
product composition, branding, and target audience, which clearly distinguish Wave from
ABC. Mere similarity in packaging colors does not establish deception, as per the ruling in
Three-N-Products Pvt. Ltd. V. Kairali Exports (2020) 19, where the Delhi High Court
emphasized that color combinations, unless inherently distinctive, cannot be monopolized by
a single entity.

Further, the distinctive marketing strategy adopted by Wave Pvt. Ltd. Ensures that its product
is perceived as a separate entity in the market. The Hon’ble Supreme Court in Hindustan
Unilever Ltd. V. Gujarat Cooperative Milk Marketing Federation Ltd., (2017) 20, held that

19
Three-N-Products Pvt. Ltd. v. Kairali Exports, 2020 (81) PTC 432 (Del.)
20
Hindustan Unilever Ltd. V. Gujarat Cooperative Milk Marketing Federation Ltd., (2017) 9
SCC 406
market perception, branding, and consumer intent play a critical role in determining unfair
competition, and mere resemblance in packaging is insufficient to prove malafide intent.