Trade Dress – Understanding The Concept
Trade Dress refers to the external features of goods, such as packaging, form, and colour scheme that rivals may register or secure in order to distinguish their goods and services from those of other competitors. It helps customers recognise the merchandise and set it apart from competitors’ products. It also helps an uninformed customer distinguish a product based on its wrapping. It essentially refers to the overall appearance of labels, wrappers, and containers used in product packaging.
The elements comprising the trade dress must have been used in such a manner as to denote a product source. If the only impact of the product feature is decorative and aesthetic with no source identifying role it will not be given exclusive rights under the trade dress law.
Examples of Trade dress are Coca-Cola bottle, Haig & Haig Scotch whiskey bottle, shape of Hershey’s Kiss Chocolates.
The idea of trade dress originated in the United States of America. US law which recognizes the concept trade dress under Section 43(a) of the Lanham Act. The Trademark Act of 1999 contains no definition of the term “trade dress.” In light of modifications to intellectual property rules, a new Amendment recognised trade dress protection under Section 2 of the Trademark Act. A trademark, as defined by Section 2 of the Trademark Act, is a graphic depiction and general appearance of a good that distinguishes one person’s goods and services from those of others, such as the shape of objects, their packaging, and colour scheme. The definitions of “package” and “Mark” are also included in this Act.
The definitions are mentioned as follows –
“mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.
“Package” includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper, or a cork.
This means that the idea of a trade dress is covered by a trademark in India, even though it isn’t specifically mentioned. This is because these definitions cover almost all of the things that the US law says a trade dress is.
Trade dress is an expansive concept and has been held to include the following[i]:-
(1) The cover of a book.
(2) A magazine cover design.
(3) The layout and appearance of a mail order catalogue.
(4) The registration process for a trade fair.
(5) The method of displaying wine bottles in a retail wine shop
(6) The design of a door knob.
(7) The shape of a flashlight.
In the Indian Trademark Act of 1999, “Trade Dress” is afforded protection under the common law of passing off.
Typically, the following questions are to be posed when determining if an item is protected by trade dress law:
- Is the product designed or formed in a way that is commonly employed?
- Is the product notably unique in its industry?
- Is it merely a refinement of a common type of ornamentation for a specific category of products?
- Is it able to generate a commercial impression on its own?
If a competitor imitates one’s trade dress, it can damage the brand by causing consumer confusion and resulting in a loss of sales.
Protecting trade dress aims to ensure that the brand will be safe from infringement and competition.
The development of rules pertaining to trade dress and the provision of protection for the same are both substantially influenced and assisted by the judicial system. The issue that was brought before the court in Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd.[ii], in 2003 was regarding the red and white color combination that was being used for the purposes of packaging the products, which was likely to deceive the consumers. This case is considered to be one of the very first cases that provided protection to trade dress. In this case, the court emphasized the importance of taking into consideration not the dissimilarities between the product packaging designs but rather the general similarity between the two designs when determining whether or not an infringement has occurred. It was also determined that a presence of any actual confusion is not essential in order to proceed with the action of passing off; rather, the mere likelihood of confusion is sufficient for moving forward with the action. This lawsuit was instrumental in establishing the framework for the protection of trade dress in India.
In the case of Ferrero Spa & Nr v. M/S Ruchi International & Another[iii], the respondent was importing chocolates from China and selling them under the brand name ‘Golden Passion.’ These chocolates were the subject of the lawsuit. However, the matter that was brought up in front of the judge was the fact that the packaging of these chocolates was nearly identical to the packaging of the “Ferrero Rocher” chocolates, which are extremely well known in the industry. In this particular case, Justice Khanna highlighted the fact that the defendant, by using a packaging design that was extremely similar to or identical to the petitioner’s, had caused significant harm to the petitioner’s trade dress and mark. As a result, the petitioners were granted a perpetual injunction by the Delhi High Court, and the court also awarded them a total of ten lakh Rupees in damages for the infringement of their trade dress.
The proprietor of a luxury shoe brand was the petitioner in the famous case of Christian Louboutin Sas v. Mr. Pawan Kumar and Ors.[iv], and the case involved his line of shoes, which were well-known in the market for having red soles. Furthermore, Christian Louboutin was already the owner of the trademark “RED SOLE.” In this instance, the defendant was a small-town shoemaker who also made shoes with red soles. For the first time, the Delhi High Court in this case determined that the trade dress had the same legal standing as a well-known mark as a real trademark. But later, in the case of Christian Louboutin Sas v. Abudekar and Ors.[v], the court denied the grant of a trademark for the red-colored soles of the heels on the grounds that any mark consisting of a single color is ineligible for the motive of registration as a mark because the Trademark Act, 1999, necessitate the existence of a combination of colors as per the requirements of section 2(m).
Furthermore, it must be known that the presence of a likelihood of confusion is regarded as essential for the purposes of establishing trade dress infringement. According to the Bombay High Court’s opinion in case of Merwans Confectioners Pvt Ltd v. M/s Sugar Street & Ors.[vi], the court stated that the test that is used to determine whether there has been any Trade Dress infringement focuses on the likelihood of misunderstanding, deception, or any other kind of confusion that could influence the final consumers’ purchasing decisions.
In India, the idea of trade dress is still being developed, and the courts have been instrumental in shaping the rules governing trade dress. Trade dress protection is available for showroom designs, bottle shapes etc. Protecting trade dress is essential because it helps give goods in the market a distinguishing feature that enables the end user to recognize them and separate them from the other goods in a marketplace.
Along with the traits of a trademark, which require it to have a unique characteristic and it should be capable of visual representation, the important components of the trade dress include the shape, size, color scheme, overall packaging of the product, etc. Trade dress protection focuses on the complete brand image of the product in addition to protecting the product’s packaging and design elements that are not registrable under trademark law.
[i] Law of Trademarks and Passing Off, Author – P. Nayaran
[ii] 2003 VIII AD Delhi 228, 108 (2003) DLT 51, 2003 (27) PTC 478 Del, 2004 (1) RAJ 214
[iii] CS(COMM) 76/2018 2 April, 2018 in HC of Delhi
[iv] Delhi High Court (Single Judge) CS(COMM), 714 of 2016, Judgment Date: Dec 12, 2017
[v] 2018 (7) AD (DEL) 376
[vi] C.S. (L) No. 1100/2019
- Law of Trademarks and passing off by P. Narayanan, 6th Edition, 2017