This article is written by Arijit Mishra, from KIIT School of Law, Odisha. This article talks about the Trade Dress Protection in India and the US and how goods and services get Trade Dress Protection.

Introduction

Trade Dress refers to a visual appearance of products which includes packaging, shape and combination of colours which can be registered or protected by the competitors in terms of their business and services. 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 packing of the product. This concept was first recognised by the US. The new 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 on the lines of The Lanham Act.

Objective 

Trade Dress protection is meant to protect consumers from packings or appearance of the product that are designed to take other products. It prevents consumers from buying a product with the belief that it belongs to others. The main objective is also to protect the goods and services from copying. It should be distinct from others. It should not create confusion among the minds of the consumers so that there should not be any unfair use of that product.

Essentials of Trade Dress

The essentials of trade dress are-

• It includes shape, size, colour, texture, product configuration etc.
• Packaging of a product is likely to be unique.
• The colour of the product also gives a distinct identity.

Requirements for Trade Dress Registration

The requirements for trade dress Registration of a product are as follows:-

• It must be graphically represented.
• It must be distinct from others.
• It must be used in relation to goods or services from others.
• It must be in a printed form.

Why protect Trade Dress?

Customers buy products because they like them. It is the visual appearance of the product that guides the customers to buy their preferred product. Even educated customers find difficulties in differentiating two similar looking products. Because of these reasons trade dress should be protected. Trade dress should be protected to prevent customers from confusion while they are shopping and also to protect the interests of genuine manufacturers. And the Products should be unique and distinct from other products. 

Trade Dress Protection in India

In India, there is no specific definition of trade dress under Trademark Act 1999. But due to the development in Intellectual Property Laws, a new Amendment recognised trade dress protection through a new definition of a trademark under Section 2 of the Trademark Act. Trade dress is regulated by the laws of unfair competition. Both State and Federal Laws prohibit businesses from duplicity or imitation.

Section 2 of the Trademark Act states that a graphical representation and the overall appearance of a product which distinguishes the goods and services of one person from other persons like the shape of goods, their packaging and combination of colours. 

This section also defines the term “package” and “Mark”.

“Package” includes any box, container, vessel, bottle etc. “Mark” includes a device, brand, ticket, signature etc, shape of goods, the combination of colours.

Before 2003, Indian Courts started recognising the concept of trade dress. The new definition of a trademark under Indian Law consists of all the elements of the trade dress under the U.S law. As a concept, trade dress may include the design of a cover page of a magazine, the visual appearance of a lamp, design of sports shoes, etc. However, a generic idea and a creative concept cannot be treated as a trade dress. Indian Courts have given protection to trade dress through common law remedy- “passing off” (enforcement against an unauthorised use). 

The shape of goods registration of the trademark is stated in the provision of Section 9(3) of the Trademarks Act 1999.

Section 9(3) of the Trademark Act 1999 states that- A mark shall only be registered if it does not consist of:

• A shape of goods which comes from nature.
• A shape which gives substantial value to the goods.

This shows about the Doctrine of Functionality (it prevents a party from obtaining trade dress in the functional feature of a product) which is recognised under Indian Trademark Law. Distinctiveness is also a key aspect under Trademark and Trade Dress as well, which means a trade dress must be distinctive i.e easily recognised by the consumers. Trademark protection is given for both registered and unregistered trademark, this is also same as to trade dress.

Many of the times Courts have given their decisions based on the trade dress factor of a product. The precedents of Indian Judiciary have also established trade dress as an essential aspect of Intellectual Property Protection. Indian Judiciary has recognised features like the shape of the product, combination of colours and packaging of the product as trade dress.

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Case laws

Colgate Palmolive and Company Vs. Anchor Health and Beauty, 2003

In this case, the dispute was regarding the combination of colour- red and white. The Court held that if the colour of both the products would be same then it will create confusion in the minds of the consumer with regards to the origin of the product. If an illiterate consumer uses another product based on the physical appearance of the product then it amounts to passing off (which is considered as similar to another party’s product, including registered or unregistered trademark).

Cadbury India Limited Vs. Neeraj Food Products,2007

In this case, there was a dispute in the name of JAMES BOND which was similar to GEMS of the Cadbury. The Court held that the word JAMES BOND is physically similar to the registered trademark GEMS of Cadbury. The High Court further held that the packing of Neeraj Foods is also similar to the Cadbury. So Neeraj Foods are restrained from using such packing because it was similar to Cadbury.

Gorbatschow Wodka Kg Vs. John Distilleries Limited, 2011

In this case, both of these were vodka companies. John made the same shaped bottle like Gorbatschow which has a unique bulbous shape inspired by Russian Architecture. The Court held that this shape has a deceptive similarity which can cause confusion in the minds of the consumers. John Distilleries was stopped from using the shape of the bottle for selling their products. 

Parle Products(P) Limited Vs. J.P and Company,1972 

In this case, J.P launched a brand of biscuits which was similar to ParleG. Both the packings of the company’s product looked like having the same colour, similar design and size. The Court held that it has deceptive or misleading similarity, both the packages cannot be kept side by side and cannot be compared. It creates confusion in the minds of the consumers and is not distinct from others. So, the Court’s order was against the J.P and Company which restrained them from using the same colour, design and size.

Steps to Register Trade Dress

• Trade dress can be registered with the USPTO(the United States Patent and Trademark Office) through State registration to get the trademark. 
• You have to show that it is non-functional and it is inherently distinctive. This can be achieved by advertising to promote the product.

Trade Dress Protection in the U.S

In the U.S trade dress protection is stated under Section 43(a) of the Lanham Act which says that trade dress is defined as the overall appearance of the product which may include size, shape, colour combination etc. it is available for both registered and unregistered trade dress (the symbol, word etc. used by the company which is registered under the Trademarks Act 1999 is known as registered trademark and any symbol, word etc. used by the company but is not registered is know as unregistered trademark). For the protection of the trade dress, it should be unique, unusual or widely recognised by the public.

Section 43(a) of Lanham Act provides civil aviation against any person who uses any word or combination of words, term, name, symbol etc. associated with any goods belonging to another which cause confusion. Functional feature of a product is not provided under this act.

Distinctiveness under the U.S law can be classified as- generic, descriptive, suggestive, arbitrary, fanciful. Generic marks cannot be protected under trademark because all the merchants should be equally allowed to use such terms to describe their goods while competing with the customers. Trade Dress is important because it stops the companies from using unfair practices.

Distinctiveness and Non-functionality are the two important criteria for the protection of trade dress in the U.S. It is necessary to follow this criterion for the trade Dress protection, if not compensation should be given to the affected party.

If a plaintiff claims for the infringement, it must prove below the three elements-

• The plaintiff owns a protectable trade dress in a perfect design or combination of elements that is distinctive.
• The accused trade dress creates confusion.
• If the defendant’s trade dress is not registered, then the plaintiff must prove that the trade dress is not functional. If it is registered then the burden of showing functionality lies on the defendant.

The third point mentioned above is interesting and to satisfy it, the trade dress for protection must not be functional. The configuration of shapes, designs, colours does not create any question in the minds of the customers.

If the above three elements for the trade dress are met, then two remedies are available-

• Injunctive relief (the Courts order to stop one party from infringing trade dress of another party)
• Money Damages (compensation for loss suffered by the injured party)

Wal-Mart Stores Vs. Samara Bros Inc, 2000

In this case, Samara had some children’s clothes decorated with appliques and marketed those clothes in the U.S. Wal-Mart and took pictures of that Samara products and also told his suppliers to produce the same. Samara sued Walmart alleging that Walmart had infringed the unregistered trade dress under Section 43(a) of  Lanham Act.

The Court made distinction between packaging and design and also stated that trade dress should be classified as a product design which had a secondary meaning to be entitled for trade dress protection. So, the Court was in favour of Walmart.

The affected party must prove three essentials to recover from trade dress infringements-

1. The trade dress must obtain secondary meaning (potential consumers).
2. The trade dress of the two product are similar and confusing
3. The features of the trade dress are primarily non-functional.

The trade dress infringement relating to passing off has been highlighted by various Courts in the U.S. If the mark and packaging are more distinctive then it will be better to claim protection to trade dress.

Comparative Study of India and the U.S

There is not a lot of difference between the laws of trade dress protection in both of these countries. One of the differences between the U.S trade dress and Indian trade dress is, in the U.S, trade dress gets registered by providing certain conditions, while in India the Trademarks Act does not recognise the term trade dress for which it doesn’t get protection. Certain features like a combination of colours, shape, etc. of the product can be registered. The U.S has an established trade dress protection, but while in India it is still progressing in recognising trade dress protection. But in both countries, they have similar trade dress protection.

Conclusion

Trade Dress protection can also be provided to the shape of the bottle of soft drinks, the shape of the furniture or design of the showroom. Some of the famous trade dress are the shape of a coca-cola bottle, grills of the Rolls Royce car. With growing competitors, trade dress provides a new forum to secure the aspect of distinctiveness. The illiterate consumers can even differentiate the product based on the packaging. The colour of the product also gives a product a distinct identity.

It basically deals with the appearance of the product. It is different from a trademark in a way that trademark deals with words, logos, phrases, emblem etc, which are fixed on that product in order to identify that product from another. Trade Dress is the appearance of the product to identify the producer. Under common law, trade dress may be protected using passing off which provides businesses goodwill.

References

• http://www.mondaq.com/india/x/262928/Trademark/Trade+Dress+Concept+And+Indian+Practice 
• https://legaldesk.com/business/trade-dress-protection-in-india 
• https://www.prometheusip.com/blog/trademarks/trade-dress-an-indian-perspective 
• https://www.upcounsel.com/trade-dress 
• http://www.legalserviceindia.com/legal/article-1239-trade-dress-protection-position-in-u-s-and-india-an-analysis.html 
• https://en.wikipedia.org/wiki/Trade_dress 
• https://corporate.findlaw.com/intellectual-property/trade-dress-the-forgotten-trademark-right.html 
• https://legal-dictionary.thefreedictionary.com/Trade+Dress