On September 6, 2016, the Delhi High Court granted Seven Towns Limited., the owner of the world-famous RUBIK’s Cube, an interim injunction against a third-party that was manufacturing and selling puzzles under the name of RANCHO’S Cube.
The Order can be accessed here. The 50-page decision, rendered by J. Manmohan Singh, succinctly sums up the Indian position on the law of trade dress.
The Plaintiff, Seven Towns Ltd., is the proprietor of all rights in the RUBIK’S Cube by virtue of assignment from Erno Rubik, a Hungarian professor, the creator of the cube. Invented in 1974, the cube has been sold extensively and continuously around the world, including in India. The RUBIK’S Cube has been sold in India since 1981. 350 million cubes were sold all over the world until October 8, 2010, the date of filing of the suit.
Notably, at the time of filing of the suit, the Plaintiff had not obtained any trade mark registrations for the three-dimensional RUBIK’s Cube in India. Therefore, the Plaintiff’s suit was based on passing-off, unfair competition and copyright in the cube.
On the other hand, the Defendants, Kiddiland and Cybershop Marketing Pvt. Ltd., manufactured and sold cube based puzzles under the mark RANCHO’s Cube.
In the pleadings, the Plaintiff claimed exclusive rights in the overall look and feel of the cube. It is important to note that the Plaintiff did not claim any exclusivity in the individual features of the cube, but rather the Plaintiff’s claim of exclusivity spanned the features put together. These features include the black border/cage of the cube consisting of lines of a particular width along with each of its six faces covered with nine square stickers with rounded edges, the stickers consist of particular shades of six solid colors namely red, blue, orange, green, white and yellow, along with the whole packaging and label of the cube.
The Court found that, prima facie, the overall look and feel of the RUBIK’S Cube, i.e., the trade dress, of the RUBIK’s cube is protectable. The Court disagreed with the Defendants that the Plaintiff was trying to monopolize functional colors of the puzzle cube. It agreed with the Plaintiff and held that it was not seeking protection in any single feature of the RUBIK’S Cube, but a combination of all these features as described above.
Having decided that, prima facie, the trade dress of the RUBIK’S Cube is protectable, J. Manmohan Singh found that the dissimilarities between the Defendants’ Cube and the RUBIK’S Cube, inter alia, were insufficient to distinguish them. The court held that it is required to pay more attention to the points of similarities, and less to the points of dissimilarities, particularly, in a case like this where the Defendants’ dishonesty was apparent. As a second comer, the burden to show honest use lies on the Defendants. The Defendants had numerous permutations and combinations of designs, colors and graphics to choose from. Yet, they chose to manufacture and sell a cube whose overall look and feel resembled the RUBIK’S Cube. If the Defendants were honest business men, it should not have been very difficult for them to choose a trade dress which causes no confusion between their cube and the RUBIK’S Cube.
The court ordered that trial in the matter be expedited.