October 2, 2022

TRADE DRESS

By: Trisha Duggal. The concept of Trade Dress was first recognized by the US

Introduction

Trade Dress is a type of Trademark Law that extends to the configuration of the product. It is the visual image of any product used in its promotion or sales that is composed of the non-functional elements of its design, packaging, or labeling. It helps the consumers to identify the product and distinguish it from other products. It also helps an illiterate consumer to differentiate the product based on the visual packing of the product. Trade dress is protected under ‘Trademark Law’ and consists of elements that are not operational like product packaging or the décor. With growing competition trade dress provides a new forum to secure the untouched aspects of business of distinctiveness.

The concept of Trade Dress was first recognized by the US. In India, The Trade Marks Act 1999 came into force in September 2003 and is largely based on the English Trademark Act, 1994 which recognized the concept of trade dress. Indian Trademarks Act, 1999 also did not mention separately anywhere in the Act, about the concept of trade dress, but if we go by generic meaning of the term trade dress, we found that there are few references about trade dress in Section 2 clause (m), (q) and (zb)[i] which provides that “a mark includes a device, brand, heading, label, ticket, name, signature,word, letter, numeral, shape of goods, packaging or combination of colours or anycombination thereof”. The definition clause further articulates that a package consists of any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork”.

The law of trade dress serves four purposes. First, the law seeks to protect the economic, cognitive and creative investments made by businesses in their products. Second, the law seeks to preserve the good will and reputation that are often associated with the trade dress of a particular business and its merchandise. Third, the law seeks to promote clarity and stability in the marketplace by encouraging consumers to rely on a business’s trade dress when evaluating the quality of a product. Fourth, the law seeks to increase competition by requiring businesses to associate their own trade dress with the value and quality of the goods they sell.

CHARACTERISTICS

Trade Dress has the following features:

  • Distinctive look and feel of a brand in the marketplace,
  • Packaging of a product is likely to be unique.
  • Color of the product also gives a distinct identity.
  • Source indicator of distinguishing the goods and services of one from those of others,
  • The configuration of shapes, designs, colors, or materials that make up the trade dress in question must not serve a utility or   function outside of creating recognition in the consumer’s mind,
  • Requirement for the registration of trade dress is same as that of the registration is word/ logo mark.
  • Non-functional

TRADE DRESS PROTECTION: INDIA

The trade dress protection states the highlights of the visual or sensual appearance of a product that must be protected from being utilized by competitors in connection to their business and administrations. The trademark incorporates their shape (3 dimensional), bundling, shading, visual computerization of the item.

Courts in India have recognized the concept of trade dress and put a stamp on its commercial existence and value. Customers usually buy products that they have developed a liking for. It is mostly the visual appearances that guide many customers in identifying their preferred products.

Even educated customers find it difficult to differentiate two similar looking products sometimes. Only after buying that they may choose to inspect closely to find a different brand name that sounds similar and packed similarly to a better product. Many sellers prefer stocking imitation goods since they offer better profits to them. Thus, it can get difficult for genuine trademarked products to reach all customers who desire to purchase them.  Trade dress should be protected to prevent customers from being misled into purchasing substandard articles and to protect the interests of genuine manufacturers.

TRADE DRESS INFRINGEMENT AND REMIDIES

Trade dress infringement means using similar or ambiguous similar packaging, cover, visual appearance of goods or services of one person by another person; which creates confusion about the source of products or services, in the minds of consumers. Trade Dress infringement is an uncertified use of packaging, label, color combination etc of particular goods or services of a trader, and which leads to confusion, hoax, or misrepresentation about the source of particular goods or services, in the minds of ordinary consumers.

Trade dress rights do not run out as long as the design is used in commerce as a source identifier. Once a design obtains secondary meaning, future products can also benefit if they use the same protected design feature. Furthermore, a competing product infringes when it is deemed close enough to confuse a consumer regarding its source.

The prima facie relief which is available with the registered user of a trade dress; is civil suit for an infringement but in case of unauthorized use of unregistered trade dress, action of passing off, is available with the owner of unregistered trade dress. Other remedies are available like compensatory remedy, monetary relief or reward for damages to the plaintiff. Criminal action can also be taken in case of falsification of trademark or trade dress

DIFFERENCE BETWEEN TRADE DRESS AND TRADEMARK

Trade dress is different from a trademark (also known as Service Mark, or Trade Name) in the following ways:

  • Trademarks offer legal protection for a logo, symbol, phrase, word, ame or design used to show manufacture of a product.  Trade dress protects the overall image of the product
  •  Under state and federal law, it is advantageous for businesses to register their trademarks, service marks, and trade names with the government. Conversely, trade dress has no formal registration requirements and receives legal protection simply by being distinctive and recognizable, etc.
  • Trademark is a source-identifier like the symbol or any phrase associated with the brand and trade dress is also a source identifier but has a vast meaning and is everything that a brand does to present its product to the public.
  • Example- The yellow ‘M’ of Mc. Donald’s is a trademark whereas the overall feel of any restaurant present in any part of the world of Mc. Donald’s including their packaging, décor, etc is trade dress.

RECENT CASE LAWS

  1. Itc Limited vs Whole Leaf Tobacco Venture Pvt[ii]

The petitioner is one of the largest fast moving consumer goods companies in the country with its cigarette business dating back to 1910 and they have acquired immense reputation in relation to its high quality cigarettes and tobacco products marketed under well-known trademarks, some of which are “FLAKE”, “GOLD FLAKE”, “CLASSIC”, “INDIA KINGS”, “INSIGNIA”, “BRISTOL”, “SCISSORS”, “CAPSTAN”, “NAVY CUT” etc. The respondents use of the names “FLANE” and “GOLD FLANE” and “NEXY CUT” which are identical and/or deceptively similar to the petitioner’s trademarks “WILLS FLAKE”, “FLAKE” and “GOLD FLAKE” and “NAVY CUT” in packaging/labels/trade dress.

The petitioner has produced the packets and the packaging materials of its products as well as the infringing packets and/or materials of the respondents before this Court. It appears that the infringing packets in which the products of the respondents are sold are slavish imitation of that of the petitioner. The products placed next to each other on a first look cannot be distinguished. It is bound to create confusion in the mind of unwary consumer of imperfect recollection. The petitioner is able to make out a prima facie case that adoption of the said marks, trade dress and get up of the packets of the respondents have been dishonest and fraudulent and a protective order was passed against the respondents.

  • Dabur India Ltd. Vs Vaidya Nandram Gigraj Chamria[iii]

The plaintiff launched a variant of the Hajmola tablets in pomegranate flavour under the mark Hajmola Anardana which is sold in a distinct container, design and packaging. It is contended that on account of continuous commercial use, the plaintiff’s container, design and packaging have acquired tremendous goodwill and reputation. The plaintiff came to know that the defendant is engaged in manufacture and marketing of Anardana churan and is selling pomegranate flavoured ayurvedic digestive under the mark Karorpati Anardana, in a container, packaging and trade dress which is identical/deceptively similar to the plaintiff’s Hajmola Anardana container design, packaging and trade dress.

The Court stated that the plaintiff proved that the defendant has copied the trademark/packaging/trade dress of the plaintiff and the defendant is using the trademark Karorpati Anardana in an identical/deceptively similar label/packaging/trade dress.

  • Marico Limited vs Mr Jay Kumar Bangeja & Ors[iv]

The Plaintiff have proprietor right on the trademark/labels namely Parachute, Parachute advanced Jamine, Nihar and Nihar Natural Santi Amla but the defendants produced, manufactured, distributed, exported, sold products namely President coconut oil, Pooja Coconut Oil, Pooja Coconut Pouch, Precedent Jasmine, Poja Jasmine, and/or Precedent Shanti Amla, and/or any other product bearing any other mark/label/trade/dress/ packaging deceptively and/or confusingly similar to the Plaintiff s trademarks/labels. The Court held that the trade dress was infringed and both the parties to the case reached to a settlement.

  • Gorbatschow Wodka Kg v. John Distilleries Limited[v]

Gorbatschow Wodka is one of the most premium brands of Vodka in the world. Its bottles have a unique bulbous shape inspired by Russian Architecture. John distilleries, an Indian company launched a product called Salute Vodka with a similarly shaped bottle, but a different trademark and colour of label. Though John distilleries argued that the consumers of Gorbatschow Vodka are affluent and can never get confused by an economic brand like Salute, the Bombay High Court decreed that the shape of the bottle is deceptively similar and that it will tarnish the image of the plaintiff if the defendant is allowed to sell the same. Thus, the defendant, John distilleries was stopped from using the shape of the bottle for selling their products.

  • Cadbury India Limited and Ors. Vs. Neeraj Food Products[vi]

A company by name Neeraj food products launched a food product similar to ‘Gems’, a popular chocolate product by Cadbury. Their product was called ‘James Bond’ and the colour schemes and nature of the foods were similar. This was contested by Cadbury in whose favour there was a decree that restrained Neeraj Food Products from using trademarks and packaging similar to Cadbury.

CONCLUSION

Today for every businessman, it is very important to decide a trade dress for goods or services of his business, like any other financial decision of a business. In order to create healthy competition and fair business practices, each and every businessman should invent or create a unique and distinctive trade dress for his/her products or services. Trade dress is one of the types of trademark and has its’ inevitable place in the growth and expansion of business. In India trade dress is governed by Indian Trademarks Act, 1999 and to some extend principles of common law.

Trade Dress is an important and less talked about topic in today’s world because people are not well aware. The main reason for the same is lack of laws governing it. As stated in this article, there are no direct statutes containing laws for trade dress and therefore people in India are not well aware of this concept. Even if they are aware they are not aware as to how they can proceed with a lawsuit if some other establishment makes use of trade dress. Therefore, the legislation should makes laws especially for trade dress. Also there should be a proper registration for trade dress as it is done in the case of trademark. Implementations as recommended may help the businessmen of our country to protect their identity.

Therefore we can say that Trade Dress is having an indispensable place in business. Trade Dress shall be unique, creative, distinctive and commercially viable, in order to attract customers’ attention, which results into more sales, name, fame, popularity for a particular business.


[i] Colgate Palmolive Company and Anr. V Anchor Health and Beauty Care Private Limited, 2003

[ii] 2019, 77 PTC 589

[iii] 2018, DHC 698

[iv] 2017, Delhi HC

[v] 2011, 47 PTC 100 Bom.

[vi] 2007, DLT 724

Author: Trisha Duggal, Department of Laws, Panjab University Chandigarh
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REFERENCES

WWW.LEXOLOGY.COM

WWW.MONDAQ.COM

http://delhihighcourt.nic.in/judgement.asp

WWW.CORPORATE.FINDLAW.COM

http://indiancourts.nic.in/