Make way for Non-Traditional Trademarks

Most of us are aware that there are several types of trademarks, some traditional marks such as names, words, logos, abbreviations, and some non-traditional marks, such as colour(s), combination of colours, sound, shape of goods, patterns, etc. Recently, the Hon’ble Delhi High Court has granted recognition to ‘pattern marks’ in the case of ‘Levis Strauss v. Imperial Online Services Pvt. Ltd. & Ors’.

Pattern marks are those marks which not only comprise a unique and recognisable design but are also capable of being a source identifier. These marks essentially protect the way a design or set pattern is embossed onto the surface of the goods. These types of marks are commonly found in the fashion industry and have a unique distinctive element which makes identifying a brand easier for customers by just looking at the pattern, even if it doesn’t have any designer name/ trade name or a logo on display. For instance, Louis Vuitton and its famous chequerboard pattern as well as the equally famous Burberry ‘plaid’ pattern.

India is slowly joining the bandwagon of giving recognition to non-traditional marks by not only protecting such marks but at the same time taking deterrent actions against their infringing use by third parties. One such latest ruling is set to become a landmark precedent in India when it comes to the protection of non-traditional marks, is the matter of Levi Strauss & Co. v. Imperial Online Services Pvt. Ltd. & Ors 1.

Background of the Case:

The plaintiff (Levi Strauss & Co., the iconic denim brand,) filed a suit seeking a permanent injunction claiming trademark infringement, copyright infringement, passing off of its pattern mark for its stitching design i.e., , globally known as the “Arcuate Stitching Design” mark before the Hon’ble Delhi High Court. The said mark/ pattern has been in use since 1873 internationally and a registered trademark in India since the year 1999. The said mark is not a name/ wordmark or a logo, but a stitching pattern incorporated on the back pockets of the plaintiff’s products such as jeans, trousers and pants which is a major distinguishing feature of the plaintiff’s products.

The defendant (Imperial Online Services Pvt. Ltd.) was selling denim jeans bearing the said stitching pattern mark, identical to that of the plaintiff’s, through its website, as well as various e-commerce websites such as Amazon, Flipkart, Nykaa Fashion, Myntra and Paytm Mall.

The plaintiff issued legal notices to the defendant for using their “Arcuate Stitching Design” mark on its jeans and selling them on e-commerce websites, therefore passing off its goods as that of the plaintiff’s and infringing the rights of the plaintiff in its prior registered “Arcuate Stitching Design” mark in India. The defendant, in compliance, issued an undertaking to the plaintiff’s legal notices and acknowledged the exclusive rights of the plaintiff in the “Arcuate Stitching Design” mark and stated that within six months from the date of undertaking, i.e., August 15, 2021, all the infringing products will be removed, and no further manufacturing, distribution, or sale of goods shall be undertaken by the defendants with the infringing mark or stitching design/ pattern similar to the plaintiff’s mark.

However, despite furnishing these undertakings, there was non-compliance on part of the defendants as they continued selling denim jeans bearing the plaintiff’s “Arcuate Stitching Design” mark through various e-commerce websites. This led the plaintiff to file a suit before the Hon’ble Delhi High Court seeking a permanent injunction and INR 850,000 in the form of legal cost and damages.

The court stated that the current case reveals clearly that the defendants had adequate notice of the plaintiff’s rights in the mark and prohibited the defendants from infringing the plaintiff’s mark. However, what ultimately turned out to be the deciding factor was the issue of whether the mere appearance of the said stitching pattern would function as a trademark.

This was not a case of a logo/ device mark or a trade dress being infringed by a third party. This was a unique case of a non-traditional mark, a stitching pattern on very specific products. In such a case, the main question was whether a consumer looking at the stitching pattern could identify the jeans, even without any name or a logo, and would they associate it with the plaintiff?

The court ascertained the answer to this question to be in the affirmative, as the stitching pattern of the plaintiff has an ‘acquired meaning’ and ‘distinctiveness’ globally as well as in India. The court took note of the precedent of the United States Court of Appeals, Second Circuit in Lois Sportwear, U.S.A., Inc., v. Levi Strauss & Co. 799 F.2d 867 (1986) wherein it was observed that: “Levi’s arcuate mark is a strong mark that qualifies for a high degree of protection. In addition to its status as an incontestable registered mark, the Levi’s arcuate mark is a fanciful design which has no function other than as a source indicator.”

The court in the instant case recognised the following:

i. That the ‘Arcuate Stitching Design’ mark has been used on jeans, pants, and trousers of the plaintiff since the year 1873 and it serves as a unique identifier in respect of the goods of the plaintiff.
ii. That the ‘Arcuate Stitching Design’ mark, has been in use for 150 years and has achieved the status of a well-known mark. Accordingly, a decree declaring the said mark as a `well-known’ mark was also passed.
iii. Further, the plaintiff’s registered and prior trademark rights in the ‘Arcuate Stitching Design’ mark was recognized, globally as well as in India, and hence the court decreed the suit in favour of the plaintiff, ordering the defendants to pay damages and costs to the tune of INR 400,000 to the plaintiff.

A penny for your thoughts:

In India, there is no definition per se for ‘pattern marks’, however, the Indian courts have been proactive in protecting various non-traditional marks including patterns. Fashion giants like Louis Vuitton and Burberry have both obtained trademark registrations for their famous check patterns in India and these patterns have become considerably recognised in minds of the public and have acquired tremendous distinctiveness over the years.

This decision is a landmark precedent set by the Hon’ble High Court of Delhi in recognising the importance and protection of non-traditional trademarks in India, especially with a rise in unique categories of marks. Giving such recognition to non-traditional marks will help brand owners to rely upon this precedent in future matters pertaining to similar subjects and protect their marks against illegal use, unfair competition, infringement and passing off actions and will also dissuade infringers from wrongfully adopting such patterns or other non-traditional trademarks.

Through this article, Malyashree Sridharan and Vibhuti Sharma interpret the emergence of non-traditional trademarks in India by analysing the recent order passed by the Hon’ble Delhi High Court regarding ‘pattern marks’ in the case of ‘Levis Strauss v. Imperial Online Services Pvt. Ltd. & Ors’.