Protection of “Trade Dress” is provided in India in a manner similar as that of an unregistered trademark (TM) as a relief through passing off action against a similar trade dress since there is no explicit mention of a trade dress in Trademark Act, 1999. Nevertheless, Section (2), Section (9) and Section 10 of Trademark Act, 1999 addresses the concept. Further, various judgement now stands as precedents to govern issues around trade dress.
The commercial look and feel of a product/service that identifies and distinguishes the source of the product/service is said to be its trade dress. It is seen as the “total image” presented by the packaging or the product itself. The coca-cola bottle shape, color-code of hard rock café are all examples of a trade dress.
Section 43(a) of the Lanham Act, which is the primary trademark statute in the USA provides for protection of a trade dress against any person using any word, term, name, symbol, device or a combination, or any false designation of origin or any other misleading representation that is likely to cause confusion amongst the public as to origin, sponsorship etc of a particular good/service by making him liable in a civil action.
A trade dress is both
Categories for distinctiveness of a trade dress are similar to a Trademark which include ‘Generic’, ‘Descriptive’ and the inherently distinctive ones such as ‘suggestive’, ‘arbitrary’ and ‘fanciful’. For instance, ‘Apple’ in apple computers is arbitrary and thus inherently distinctive as it has nothing to do with computers. Further, it has grown overtime to become a source indicator through public recognition. If a mark is not inherently distinctive it can get TM protection if it has developed a secondary meaning, that is, the consumers have created an association with the Trade Dress and source of the trade dress.
The trade dress must also be non-functional to receive protection. The functionality doctrine restricts the protection when specific features of a product are functional in nature as ancillary to the main product. The functionality doctrine can branched out as: utilitarian functionality and aesthetic functionality. Utilitarian functionality provides grounds to deny trademark protection to features which do something useful.
Aesthetic functionality provides grounds to deny trademark protection to design features which are included to make the product more aesthetically appealing and commercially desirable. Aesthetic features are either under the purview of copyright or design law.
Trade Dress protection in India
The TMA, 1999 addresses the concept of trade dress under section 2(m) of the act where under the definition of ‘mark’, a trademark can include a device, heading, brand, name, ticket, label, signature, word, numeral, letter, the shape of goods, packaging or combination of colours or any combination of all the above descriptions. Also, Section 2(q) states that “package can include items like box, container, folder, covering, vessel, receptacle, band, label, ticket, frame, reel, cap, capsule, lid, cork and stopper”. Further, section 9 promotes doctrine of functionality and section 10 also protects colour and colour combinations of the product.
Usually, Indian Judiciary recognizes the issues involving trade dress under passing off laws, which in the context of trademark happens when a person represents one’s goods as the ones manufactured by another reputed manufacturer and selling it.
That can be done by selling goods or providing services under visually similar trademarks that make customers confuse about the source. In case of unregistered trademarks in India, the aggrieved party can take passing off action and criminal action under the Trade Marks Act, 1999. (Passing off is different from an action for infringement which is open for registered trademarks only).
In one of the first case laws in India, that accepted the concept of trade dress in India –Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd. it was said “This criterion flows from the concept of action of passing off developed over the years that it is the similarities and not the dissimilarities which go to determine whether the action for passing off is required or not. That is why in trademark cases even the deceptive similarities are considered sufficient for infringement of the trademark. If similarities of trade dress are substantial from the look of the two goods, it comes within the mischief of passing off.” In this case Colgate Palmolive sought an interim injunction against the defendant for the use of a similar trade dress–red and white color combination, even though the trademarks used by parties were completely different.
In the Kellog Co. v. Praveen Kumar Bhadabhai, The court noticed that the purchasers of the products of the parties belong to the middle class or the upper middle class and above who were fairly educated in English and are able to distinguish Kellogs and what is not Kellogs.
The court came to a conclusion that viewed as a whole, the trade dress, that is the packaging of the parties, was different and there was no possibility of confusion amongst the class of purchasers of the cornflakes being sold by the parties. On these principles, the injunction was refused to the plaintiff.
Similarly, in the case of Parle Products (P) Ltd. v. J.P. & Co., Mysore, the defendants, J.P & Co., launched a brand of biscuits similar to Parle G, with the same color scheme, design and size. The Supreme Court said that “in order to ascertain deceptive similarity, both packages need not be placed side by side and compared, but an overall similarity would suffice”. An action was taken against the defendants.
The plaintiff must establish that a trade dress or get up has become by use of distinctive of the plaintiff’s goods. The term distinctive when used for the purpose of deciding the question of passing off must be taken as meaning factually distinctive and not mere assertion on the part of the plaintiff that the products of the plaintiff are inherently distinctive. When the plaintiffs are relying upon trade dress or get up the plaintiffs must, prima facie, establish that the trade dress or get up used by the plaintiffs must also, prima facie show that the trade dress of the defendants is likely to deceive or cause confusion.
Charu Joshi, second year student (recently promoted) law student, from Rajeev Gandhi School of Intellectual Property Law, IIT Kharagpur.