By Nikitaa Rana
Trade Dress- Meaning
Trade dress of a product refers to its appearance in its entirety and the design of the product. It includes the visual representation its packaging portrays, as well as its size, shape, colour combination and textures or graphics and distinctive sales techniques – which helps the consumer identify and distinguish the product from other products even if one is illiterate or has imperfect recollection of the said product. This concept of protecting the non-functional packaging of the product, which often becomes synonymous to the brand itself, first originated in the US.
The objective of having legal protection for trade dress is to prevent consumers from getting confused between visually comparable, packaged and designed goods or services and its producer’s origin. Trade dress protection ensures that the design and packaging as well as the colour, shape and size of the product or services is protected from being copied, thus further ensuring the distinctiveness of the goods or service from others.
Trade Dress Law in India
The Trademark Act, 1999 does not render any specific definition of the term “Trade dress” however, the definition of “mark” under Section 2 (m) of the Trade Marks Act, 1999
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 an cork; identical to the US laws on what constitutes as a trade dress.
Hence, the definition of a “mark” includes within its purview “trade dress” in the form of label, shape of goods, packaging, combination of colours.
The essential elements that constitute a trade dress are as follows:
- The labels, wrappers and/ or containers used in the product’s packaging which has a shape, size, colour combination, product design, texture, etc. providing a distinct identity to the product and its brand in the market.
- The packaging of the product is also distinct in nature, and becomes synonymous to the identity of the product/brand itself.
- The shape, design, colour combination or material of the product must be non-functional apart from being the trade dress of the product to create a unique identity of the good in the consumer’s mind so that the consumer believes that the trade dress is a distinguishing factor from other goods. E.g. the distinct shape of the Coca Cola bottle is so well known by now as the trade dress of Coca Cola the brand.
- A generic idea or concept is not a trade dress. Trade dress rights cannot be claimed in an ordinary or common place designs that are shared by many competitors.
- A trade dress must also be capable of being represented graphically and of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colour.
Trade Dress Protection and Remedies- India
Just as registered trademarks can avail the remedy of trademark infringement, unregistered marks can avail the remedy of passing off for protecting their unregistered marks. Passing off is similar to trademark infringement and can be applied in a variety of situations to protect the trade dress of the product. In passing off, the primary issue is of misrepresentation of the origin of the product, and if someone gains off of the goodwill of the Plaintiff’s reputation and leads consumers to believe that his product is connected with the original producer, then the Plaintiff can avail the remedy of passing off for his trade dress and unregistered marks. Thus it protects the goodwill of the plaintiff’s business and helps curb unfair trade practices of other parties selling their products under a misleading name or design similar to that of the Plaintiff’s.
In order to avail this remedy, the burden of proof lies on the Plaintiff to prove that:
- The trade dress of the Plaintiff’s product has by now gained a distinctive identity, good reputation and goodwill which built over time to help differentiate that product from those of its competitors.
- The third party’s trade dress is deceptively similar to that of the Plaintiff’s and the third party used did such an act in a malicious manner in order to ride on the goodwill of the Plaintiff’s product.
- There is a possibility of confusion stemming in the minds of the consumers due to similar visual appearance of the two products.
Trade Dress Cases- India
In Colgate Palmolive Co v Anchor Health and Beauty Care Pvt Ltd (2003, Delhi High Court), the Plaintiff (Colgate) filed an interim injunction against Anchor Health for copying their colour combination of red and white (trade dress) for the same good in the market (toothpaste/powder) even though both parties had entirely different trademarks being ‘Colgate’ and ‘Anchor’.
The Delhi High Court remarked that it is in fact the overall trade dress that has a lasting impression on the consumer as the source of origin of the good which the consumer visually derives from a combination of the shape and design of the container and wrapper and the colour combination of the given product thus also recognizing the concept of trade dress.
The Hon’ble High Court of Delhi further iterated the Doctrine of Imperfect Recollection- where an average consumer who is reasonably observant, may get confused between the origin of two products having similar product container design, shape and colour combination, where it then amounts of passing off.
Here, the judgement took into consideration the acquired, decades long reputation of Colgate’s iconic red and white colour combination as its trade dress and kept in mind the abysmally low literacy rate in a country like India where the common man would not be able to distinguish between the trademarks ‘Colgate’ and ‘Anchor’ as they are written in English, but as Colgate was there first in the market (since 1951) it had acquired public recognition for its distinct colour combination, container shape as well as texture, thus, this red and white colour combination was seen as an inseparable part of Colgate’s identity and goodwill in the market to the common man. Therefore, from the first impression of both companies’ products, due to similar goods and packaging, it was established that Anchor, as Colgate’s competitor employed an element of unfair competition and ride on the goodwill of Colgate, and hence are the infringing party.
This case took into account the acquired uniqueness via secondary meaning in order to prove the reputation and goodwill due to long term existence in the market by the Plaintiff to avail the remedy of passing off.
In another case of Christian Louboutin Sas Vs Mr Pawan Kumar & Ors. (2017, Delhi High Court), it was the first instance in India where the Court gave a status similar to that of a trademark to a trade dress. Here, Christian Louboutin put forth his argument stating that his brand is unique from other footwear brands because of its trademark red sole, which clearly identifies their heels from third parties. This red sole has become a unique element which has also been registered as a trademark in numerous jurisdictions including in India, thus enjoying a trans-border reputation with consumers across the globe who recognise the infamous red sole as Louboutin and are aware of the Plaintiff’s goodwill and reputation in the international market. The Defendants were local Indian shoe manufacturers and sellers who were wrongly selling red soled shoes thus infringing the Louboutin trademark of the Plaintiff. After looking into the material evidence provided, the Delhi High Court stated that the red sole is a well-known trademark of Louboutin and is associated with the Plaintiff’s brand image and gave a permanent injunction to the Defendants, prohibiting them from manufacturing, selling or in any way dealing with the footwear bearing the Plaintiff’s registered trade mark for “Red Sole” and simultaneously awarded damages in favour of the Plaintiff.
Trade dress deals with the aesthetic visual appearance of the product which helps in identifying the origin of the product, whereas trademark deals with the logos, words, phrases and symbols on the product. Protection for trade dress helps prevent consumers from buying cheap knock off versions of original products and from third party infringers profiting off the goodwill of well-known brands by copying the packaging, colour combination, product shape, size, container, wrapper, etc. Among growing competition, trade dress protection helps provide a new forum for the producer to protect his uniqueness in the market in such a manner that even the average citizen would be able to differentiate between goods based solely on the colour and packaging design of the product which create a visually distinct identity of the good.
- Section 29(4), Trade Marks Act, 1999
- Section 2(m), Trade Marks Act, 1999
- Section 2(q), Trade Marks Act, 1999
- Section 2(zg), Trade Marks Act, 1999