Introduction
Trade dress refers to features of the visual or sensual appearance of a product that may also include its packaging, shape, combination of colors which may be registered and protected from being used by competitors in relation to their business and services. The characteristic includes their shape (3 dimensional), packaging, color, graphic design of the product.
This is something that helps general consumers identify the products in a single glance and differentiate the product with other products.
In common parlance, we can say that Trade dress can be secured for any uniqueness to your business or branding, which can be in any form such as visionary, sound, smell, displaying layout or others. For instance, Trade dress for your product or brand can be the shape of the bottle of the soft drinks, shape of the furniture, layout or the design of a show room.
Some of the famous trade dress is:- shape of coco cola bottle, front grill on the Rolls Royce. With growing competition trade dress provides a new forum to secure the untouched aspects of business of distinctiveness.
The concept was first recognised by US. In India, after new legislation of Trademark Act 1999 which came in effect in 2003.
Objective
Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products; to prevent a consumer from buying one product under the belief that it is another. For Ex. Apple Inc. secured the registration over the design of its flagship Apple Stores as trade dress in 2013 for which it was persuing since May 2010.
After being rejected twice by the U.S. Patent and Trademark Office, which claimed the store design was not “inherently distinctive,” Apple submitted additional materials and drawings, and gained the trademark on its mall-centric, rectangular store layouts.[1]
Essentials of Trade Dress
1. Anything that creates the overall look and feel of a brand in the marketplace could be a trade dress.
2. Consumer really believes that the trade dress is a source indicator of distinguishing the goods and services of one from those of others.
3. 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.
4. The statutory requirement for the registration of trade dress is same as that of the registration is word/ logo mark.
Source of Legislation
The concept of Trade dress has originated from the US legislation commonly known as The Lanham Act. Under section 43(a) of the Lanham Act, a product’s trade dress can be protected without formal registration with the PTO. In relevant part, section 43(a) states the following:
“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which
(A) is likely to cause confusion, or to cause mistake, or to deceive […] as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act.”
In case of Wal-Mart Stores vs. Samara Bros. 529 U.S. 205, 120 S. Ct. 1339 (2000), trade dress was defined as “a category that originally included only the packaging, or ‘dressing,’ of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product.”
Concept of Trade Dress in India
The Indian law does not have a separate provision for the trade dress under its existing Trade mark legislation unlike the US law which recognizes the concept trade dress under Section 43(a) of the Lanham Act.
The Trade Marks Act, 1999, is largely based on the English Trade mark Act, 1994 recognized the concept of trade dress on the lines of The Lanham Act. The amended Act of 1999 recognizes trade dress through the new definition of Trade mark by incorporating words like, the shape of goods, packaging or combination of colors or any combination thereof under Section 2 of the Trade Marks Act, 1999.
The Indian courts have been recognizing the concept of trade dress even before 2003.
In the United Kingdom, common law remedy of ‘passing off’ is granted in cases of infringement. Evolving with time to match the international standards of the Intellectual Property Laws, Indian Laws have found its basis in Triple Identity Test which was established in Jiff Lemon Case.
i. Whether or not there exists a Goodwill/ Reputation of the goods and service in question?
ii. Whether or not there is a misrepresentation by the new product to defraud the customers?
iii. Whether or not there is/will be any damage to that Goodwill due to Misrepresentation?
If all these parameters are met with then Trade Dress Infringement may be concluded. These tests have been applied time and again to prove such infringement in Indian judicial pronouncements.
In Cadbury India Limited and Ors. Vs. Neeraj Food Products, the Delhi High Court held the trademark “JAMES BOND” as physically and phonetically similar to the registered trademark “GEMS” of the Cadbury. The High Court further held the packaging of Neeraj food product to be similar to that of Cadbury and eventfully Neeraj Foods was restrained from using said trademarks as well as the packaging similar to that of Cadbury.
In another recent case of Gorbatschow Wodka v. John Distilleries, the Plaintiff, Gorbatschow Wodka, filed an infringement action before the Bombay High Court alleging that the Defendant has invaded its intellectual property rights by adopting a deceptive variation of the shape of the bottles of the Plaintiff.
Relevant Judgements
Colgate Palmolive Company and Anr. v. Anchor Health and Beauty Care Pvt. Ltd.–In this case, the High Court of Delhi while recognizing the concept of Trade Dress noted that it is the overall impression that customer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging etc. If illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, colour combination and getup, it amounts to passing off.
William Grant & Sons Ltd. V. Mcdowell & Compay Ltd. – The Plaintiff, a Scottish company which distils Scotch whisky and other selected categories of spirits. The Plaintiff company is one of the largest producer of Scotch Whisky in the world.
The Court granted relief to the Plaintiff based upon following grounds:
- The Court has appreciated the artistic work employed by the Plaintiff on its packaging and has accordingly granted it protection.
- Principle of – trans- border reputation of a good for establishing significance of trade dress. Based upon this, the Court has established the proposition that even if the Plaintiff’s product is not substantially copied and only few features are similar, the same would be protected on account of its goodwill and reputation.
However, it was noticed that side by side comparison of both the impugned products does not reveal any striking similarity. Further, The Court also noted that the Plaintiff’s product is an expensive one, thus the consumers who purchase Plaintiff’s product would go by the name of the Plaintiff and not by the appearance of the tube in which the bottle is stored.
In the case of Kellogg Company Vs Pravin Kumar Bhadabhai , the Court also deliberated upon the principle of failing memory of a customer, the Court made reference to the Halsbury’s Laws of England (4th Ed.) (Vol. 48, para 139) which says that- the Tribunal must bear in mind that the marks will not normally be seen side by side and guard against the danger that a person seeing the new mark may think that it is the same as one he has seen before, or even that it is a new or associated mark of the proprietor of the formal mark. However, the doctrine of imperfect recollection must not be pressed too far.
[1] https://www.wired.com/2013/01/apple-store-trademark/
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