John Deere asserts rights over green and yellow colour combination
Deere Group, commonly referred to as 'John Deere' after its founder and chairman John Deere, filed a suit for permanent injunction to prevent trademark infringement and dilution, passing off of trade dress and unfair competition, and for rendition of accounts, delivery up and damages against Surindera Agro Industries and Harcharan Singh (collectively Surindera) before the Delhi High Court based on its use and registration of several colour marks in Class 12 and 28.
John Deere's contentions in support of the case were as follows:
- John Deere, established in 1837, is a Fortune 500 company employing over 55,000 persons in 27 countries worldwide. John Deere claims to be one of the largest agricultural and construction equipment manufacturers in the world, including India.
- John Deere adopted the trademark JOHN DEERE in 1837 and that trademark has been used continuously since then. The John Deere logo, which consists of a ‘leaping deer’ in conjunction with the trademark JOHN DEERE, has been recognised as a well-known mark in the United States:
- In 1910 John Deere started using a combination of the colours green and yellow, as depicted below, in relation to its agricultural implements in a unique and distinct manner, which was further adopted for tractors in 1918:
The manner of use of the combination of colours was as follows - the body of the vehicle was painted green, while the seat and wheels of the vehicle were painted yellow, as depicted below:
- John Deere is the registered proprietor of the green and yellow colour combination and of the John Deere logo in more than 20 countries, including India. The use of the green and yellow colour combination dates back to 1943 in India.
- John Deere maintains websites at 'www.deere.com', 'www.johndeereclassic.com' and 'www.deere.co.in', which are accessible to the public in Delhi and other parts of India, as well as across the world. John Deere’s green and yellow colour combination and logo are displayed extensively on these websites and also form their basic colour scheme.
- John Deere has long sold its products on the Indian agricultural market, with the first sales of equipment in India dating back at least six decades. John Deere entered the Indian market directly in 1997 with the incorporation of its wholly owned subsidiary John Deere India Private Limited, and strengthened its presence in India with the incorporation of John Deere Financial India Private Limited in 2011. John Deere’s network consists of more than 400 authorised dealers across India.
- In October 2014 John Deere noticed that Surindera was manufacturing and selling lookalikes of the John Deere farm equipment, including, but not limited to, tractors, harvesters and combine harvesters under the trade name/mark SURINDERA, with a trade dress which bore a striking resemblance to John Deere’s registered trademarks. Images of John Deere’s and Surindera’s products are represented below:
- John Deere alleged that Surindera had blatantly copied its green and yellow colour combination, for which John Deere owned trademark registrations in India for agricultural equipment. Further, the manner of use of this colour combination by Surindera was deceptively similar to that adopted by John Deere - ie, the body of the vehicle was painted green, while the wheels and seat of the vehicle were painted yellow.
- John Deere sought an ex parte interim injunction at the stage of admission of the lawsuit.
The court first held that John Deere had established a strong prima facie case in its favour. The balance of convenience also lay in favour of John Deere and against Surindera - if interim orders were not issued, John Deere would suffer irreparable loss and injury.
The court further held that, based on the definition of a 'trademark' provided under the Trademarks Act, it appeared that colours or colour combinations can become trademarks if they are distinctive and exclusively associated with a particular trader. Once such marks have been registered, the owners have exclusive rights to use the marks, as well as the right to initiate infringement proceedings or obtain an injunction.
The court proceeded to restrain Surindera from manufacturing, selling, offering for sale and advertising agricultural products and/or any other goods and/or services using John Deere’s word mark JOHN DEERE, the John Deere logo, the registered green and yellow trademark, including John Deere’s trade dress and colour combination, and any other mark deceptively similar thereto, leading to infringement of the word mark JOHN DEERE, the John Deere logo and colour mark, overall colour scheme and trade dress in relation to agricultural equipment and vehicles, and/or from passing off its products as belonging to John Deere by using marks, colour combinations and trade dress identical and/or deceptively similar to John Deere’s word mark, logo, registered colour mark, overall colour scheme and trade dress.
The ruling and observations of the court support the argument that the presentation of a product or its trade dress has become an essential component when it comes to product distinction and brand recall.
Abhishek Nangia, RNA, Intellectual property Attorneys, Gurgaon
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