Trade dress protection-comparative study of US and Indian position

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Trade dress refers to features of the visual or sensual appearance of a product, it is the commercial image of the product that identifies it and distinguishes it from its competitors or other products, that may also include its packaging, shape, combination of colours 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, colour, graphic design of the product. 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. The illiterate consumers since differentiate the product basing on the packaging. For Ex. Apple Inc. recently secured the registration over the design of its flagship Apple Stores as trade dress. These are different from trademarks in the way that trade mark deals with words, logos, phrases, emblem etc which are affixed on the product in order to identify the product from other, while trade dress is the appearance of the product which is used to identify the producer.


Though the concept of trade dress originated in the U.S., law relating to trade dress can be traced to the common law doctrine prohibiting 'unfair competition'. The Indian law does not have a separate provision for the trade dress under its existing trade mark legislation unlike the US law. The new Trade Marks Act, 1999, which came into force in September 2003 recognized the concept of trade dress and provided statutory basis for protection of trade dress under Indian trade mark regime. The amended Act of 1999 recognizes trade dress through the new definition of trade mark

Indian Scenario

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 new Trade Marks Act, 1999, which came into force in September 2003 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 also consists of the shape of goods, packaging or combination of colors or any combination thereof. Broadly speaking, Section 2 of the Trade Marks Act, 1999.

Defines the following as:

(m) "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;

(q) "package" includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper an cork; Hence the new definition of trade mark under Indian law comprises all the elements of the trade dress as under US law. The Indian courts have been recognizing the concept of trade dress even before 2003. In case of shape of goods registration of the trademark besides other criteria is still subjected to provision of sub section 3 of Section 9 of the Trademarks Act,1999 which reads as follow:(

(3) A mark shalln’t be registered as a trademark if it consists exclusively of

a) The shape of goods which results from the goods itself

b) The shape of goods which results from the nature of goods themselves or

c) The shape of goods which gives substantial value to the goods.

This statutory basis is further reinforced by Section 10 of the Act which provides that a trade mark may be registered with limitations for colour and if a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours. The rationale behind recent emphasis on protection of trade dress under Indian trade mark regime is to avail the modernization of law by recognizing colour combination and packaging of goods as trade- marks, which is intended to prevent a consumer from buying one product under the belief that it is another. The Indian courts have given protection to trade dress even before the new Trade Mark Act came into force through common law remedy of “passing off”. Largely, trade dress protection is governed by the same set of laws that protects unregistered trademarks. The main principle which has been followed by courts in India is that, although there is no monopoly in colour, a defendant who copies the colour scheme or get-up or trade dress which is likely to confuse the customers would be prohibited by injunction.

Indian Courts have given several judgements to resolve this issue which are summarised as follow:-

• 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.

• Colgate Palmolive Co v Anchor Health and Beauty Care Pvt. Ltd- The plaintiff sought an interim injunction against the defendant for use of the trade dress and colour combination of red and white in relation to identical products i.e. tooth powder, when the marks being used by the two parties were completely distinct, being Colgate and Anchor. The court held that It is the overall impression that a consumer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging etc. if an 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.

• Parle Products (P) Ltd. v. J.P. & Co., Mysore- The defendants, J.P & Co., Mysore launched a brand of biscuits similar to Parle G. Both the packets looked virtually the same, with the same colour scheme, similar design and size. The Supreme Court held that in order to ascertain deceptive similarity, both packages need not be placed side by side and compared, but an overall similarity would suffice, and an action was taken against the defendants.

• Vision Sports Inc. v. Melville Corp- draws a distinction as to the protection of trade dress and trademark protection wherein it was held that – In contrast, trade dress involves the total image of a product and may include features such as size, shape, colour combinations, texture, or graphics. Trade dress protection is broader in scope than trademark protection, both because it protects aspects of packaging and product design that cannot be registered for trademark protection and because evaluation of trade dress infringement claims require the court to focus on the plaintiff’s entire selling image, rather than the narrower single facet of trademark.

US Scenario

Under the United States trademark law, trade dress is a legal concept and legal term pertaining to the art used to characterize the visual appearance of a product or its packaging. As a subcategory of trademark and a type of intellectual property, trade dress signifies the source of the product. Because trade dress creates a visual impression that functions similar to a word or symbol used in a trademark, it is sometimes referred to as a visual trademark. The primary purpose of trade dress law is to promote healthy competition in the marketplace by discouraging imitators and protecting consumers from producers who imitate the physical appearance or packaging design of another more popular product, thus preventing the general public from buying one product under the belief that it is another. In other words, trade dress law is another way from discouraging the production and consumption of counterfeit items.

Trade dress in the United States is regulated by both federal and state laws. The Lanham Act, which governs federal trademark law, provides protection for trade dress. On the state level, some statutes offer protection for trade dress, and are usually modeled after the federal Lanham Act. Like trademark, constitutional and statutory laws are the basic legal sources or foundation of trade dress law in the U.S.

United States Constitution: Under Article I, Section 8, Clause 3 of the U.S. Constitution, otherwise known as the Commerce Clause, the U.S. Congress has the power to regulate congress. This serves as the constitutional foundation of trade dress law in the U.S. Trademark Act of 1946: Also known as the Lanham Act, the Trademark Act of 1946 is the primary federal statutory law that governs trademark and trade dress in the U.S.

United States Code: Title 15, Chapter 22 of the U.S. Code codifies and outlines all laws pertaining to trademark in the U.S. It describes the scope and limitations of trademark, the two different trademark registers, the conditions and remedies for patent infringement, and the functions of the U.S. Patent and Trade Office.

Bases for protection include:

a) Common Law" Rights

If the trade dress is unregistered, the basis for protection is section 43(a) of the Lanham Act (15 U.S.C. §1125(a)), which provides protection for "any word, term, name, symbol, or device, or any combination thereof" used "on or in connection with any goods or services, or any container for goods.

b) Registration Rights

Based upon the Lanham Act's definition of a trademark, "any word, name, symbol, or device, or any combination thereof" used "to identify and distinguish [ ] goods or services, including a unique product, from those manufactured or sold by others . . ." (15 U.S.C. § 1127), a trade dress can be registered on either the principal or supplemental register. In case of Two Pesos v Taco Cabana, Two Pesos owned a growing chainof restaurants. The restaurants featured bright colours, paintings, murals, interior dining, patioareas, overhead garage doors to separate the interior areas from the exterior, stepped exterior of the building and neon stripes on the building. Two Pesos was a competing chain thatadopted a similar design. Taco Cabana sued, arguing trade dress infringement. The district court and Fifth Circuit found the Taco Cabana design to be trade dress and to be infringed byTwo Pesos. The court upheld the conclusion of the district court and court of appeals that the restaurant design in question was inherently distinctive and thus required no showing of secondary meaning. The court noted that to require secondary meaning in the case of aninherently distinctive trade dress would penalize persons just starting a business who have notyet developed customer recognition of their mark.

Comparative Analysis

There is not a lot of difference between the laws of trade dress protection in both these countries. One of the major difference is in US trade dress gets registered giving certain conditions while in India the Trade Mark Act does not recognise the term “Trade DressProtection” as a result of which it does not get protection under the act. However certainfeatures of trade dress gets protection such as colour combination, shape, packaging of a product can be registered. In some cases as mentioned above the concept of trade dress has been recognised. US has very strong stand point in case of trade dress protection. However India is also progressing in recognising trade dress protection.