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Written by Aashlin Maria Alex, Legal intern and verified by Sunil Jose, Managing Attorney, Suns Legal.
In the recent copyright infringement case of R.C. Plasto Tanks and Pipes Pvt. Ltd. v. Ganesh Gouri Industries & Anr, CM Nos. 39/2023, the appellant sought the removal of the respondent’s copyright registration for “Gauri Aqua Plast,” claiming it was deceptively similar to its label “Plasto” and violated a prior settlement agreement. The appellant contended that the “safe distance rule” for trademarks had been violated. However, the court did not agree to apply the rule in this particular case, holding that it was inapplicable to the circumstances at hand.
What is “Safe Distance Rule”?
The safe distance rule, though a significant doctrine, has limited judicial application within Indian jurisprudence and remains an unexplored area of law. The safe distance rule in trademarks is a judicial principle that requires an infringing party to maintain a “safe distance” between their mark and that of the other party. This rule protects plaintiffs from future infringements and prevents defendants from benefiting from past infringements.
The application of this rule begins with the filing of an infringement suit by the affected party, followed by an agreement between both parties upon the direction of the court. This agreement establishes a “zone of safety” around the victimized trademark holder, requiring the infringer to adopt a new mark that is non-infringing and sufficiently distinct from the original mark. This ensures that the public can differentiate between the two marks and will not associate them with each other.
The court would examine whether the infringer has tried to circumvent this zone by imitating the mark with minor modifications. This equitable principle gives discretionary power to the courts to closely monitor the infringer’s compliance with the agreement. The courts view this rule as a mechanism to prevent revisiting the entire dispute. By applying this rule, courts focus on whether the altered mark differs considerably from the original mark rather than conducting a comprehensive likelihood-of-confusion analysis for each change. This approach requires less time, thus enhancing judicial efficiency.
Historical Overview Of ‘Safe Distance Rule’
The evolution of the safe distance rule in intellectual property proceedings began in American jurisprudence. Initially, it was used in constitutional, labor or employment, and antitrust matters. The rule was widely known as a means to ensure fair competition in the market. From there, US courts started to adopt it in intellectual property matters, mainly concerning trademarks and trade dress.
The rule was explicitly applied first in the case of Innovation Ventures, LLC v. N2G Distributing, Inc., Nos. 12–1635, where the Sixth Circuit used the safe distance rule against defendants for repeated infringement of 5-hour Energy’s trademark and trade dress by using 6-hour Energy. Despite a permanent injunction, they marketed modified products that remained confusingly similar. Applying this rule, the court examined the modification without separate litigation.
The rule was applied recently in Mahindra & Mahindra, Ltd. v. FCA US, LLC, No. 21-2605 (6th Cir. 2022). In this case, the Jeep manufacturer FCA successfully countersued the Indian manufacturer Mahindra (American unit) for making an off-road vehicle, ROXOR, which was closely similar to the trade dress of JEEP, including a boxy shape, flat grille, and round headlights, among others. The court applied the safe distance rule and introduced a zone of safety against Mahindra to ensure there was no confusion in the minds of the public between the two vehicles.
Safe distance rule in Indian Jurisprudence
Coming to the Indian context, as mentioned earlier, the rule had only limited usage. This is because the rule is not a codified procedural law that must be strictly complied with. However, recently, there has been a surge in its usage by Indian courts, particularly in trade dress violations. The courts have applied the underlying principles of this rule without explicitly referencing it.
In the case of Pidilite Industries Ltd. vs. Raghunath Chemicals & Ors. (Contempt Petition (L) No. 30589 of 2021), the safe distance rule was used extensively by the Bombay High Court. Pidilite and the defendants had agreed upon consent terms in the suit, where the defendants agreed not to use Pidilite’s “DDL” trademark for their products. However, Pidilite later discovered that the defendants were using a mark “DDI,” which Pidilite argued was deceptively similar to their mark. Pidilite claimed this was a deliberate violation of the court’s order, leading to the contempt petition. The court ruled that the variations made by the defendants were minor and insignificant, amounting to a continuation of the infringement. Thus, the court applied the safe distance rule by prohibiting the defendants from using any mark, label, or packaging similar to the “DDL” mark, ensuring that they maintained a clear separation.
Recently, in the case of K L F Nirmal Industries Pvt Ltd vs. Marico Limited (COMIP(L) 22293.2023), the court issued a warning against KLF for imitating the trade dress of Marico’s Parachute oil, stating that such infringement cannot be ignored under the veil of the ‘de minimis’ rule.
Challenges and Conclusion
The safe distance rule, although less used, is a robust legal tool that ensures fair competition and the protection of intellectual property rights. Through this rule, the court can avoid new litigation on a matter that was previously settled, thereby enhancing the efficiency of the judicial process. It protects the original holder of the trademark or trade dress from close imitation of their mark with slight changes to avoid the cause of action for infringement. It also aids consumers by ensuring they are not misled by confusingly similar marks adopted by infringers. Therefore, it is high time that courts use their equitable jurisdiction to create new tools to monitor infringement and prevent prolonged legal disputes.