Concept of Trade Dress in India

Trade dress is understood to constitute as protection awarded to packaging or appearance of a product, it can also include shape, colour scheme protection or anything in appearance that makes the product distinguishable to consumers. This concept has originated from the United States’ Lanham Act of1946under section 43(a) a product’s trade dress can be protected without any kind of formal registration. The definition covers, “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, is liable.”^[1]

The US Courts have in 2000[2] defined “Trade Dress”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.”There are certain essentials that determine a trade dress, such as distinctiveness which helps consumers identify the product, likelihood of confusion with unaware consumers that will result in confusion and finally, the trade dress must constitute an essential part of the product so as to qualify for protection. While the US Act has elaborately illustrated what constitutes trade dress and how its protection can be enforced, we should take a look at what the Indian Trademark Act has to offer.

Indian Trademark Act and Trade Dress Protection

The Trademark Act does not define what a “Trade Dress” is as is expressly given in the Lanham Act. However, the Act recognises trade dress through certain definitions under Section 2. Firstly, Section 2 (zb) states that a “trademark” covers a mark capable of being represented graphically and which is capable of distinguishing goods or services from another. Secondly, Section 2(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 and Section 2(q) “Package” includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper a cork. These three definitions read together have been used to describe what is understood as a Trade Dress.

Definitions aside, this concept has been recognised in a plethora of judgments by the Indian courts. The landmark judgement in this regard is that of Colgate Palmolive Co. v. Anchor Health and Beauty Care where the court while deciding a dispute regarding colours of a toothpaste, addressed the issue by referring to the identity of trade dress and held, “trade dress is the soul for identification of the goods as to its source and origin and as such is liable to cause confusion in the minds of unwary customers, particularly those who have been using the product over a long period. In other words, if the first glance of the article without going into the minute details of the colour combination, getup or lay out appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one’s own goods as those of the other with a view to encash upon the goodwill and reputation of the latter.”

In the case of Cadbury India Limited and Ors. Vs. Neeraj Food Products the High Court of Delhi restrained Neeraj Food Products from using trademarks “JAMES BOND” and packaging that was deemed to be deceptively similar to that of Cadbury’s.

On another occasion in the case of Skechers USA Inc & Others v. Pure Play Sports the Delhi High Court ordered Pure Play Sports from using certain features of footwear that were misleading and caused confusion in the minds of consumers who were not aware of the existence of these two brands as separate entities. In such cases the courts don’t generally rely on evidence of confusion but analysis the potential to cause deceptiveness and confusion in the minds of consumers thereby giving unfair advantage to the other party. The High Court of Delhi in the case of N. Ranga Rao & Sons v. Anil Garg & Ors enumerated certain points that must be taken into consideration to see if there is potential for deceptiveness which include; similarity factor, strength of the trade dress, type of goods and likely degree of purchaser care and defendant’s intent in selecting its trade dress.” Taking a different stance in the case of Cipla Limited v MK Pharmaceutical the court while rejecting the grant of restrain from using oval shaped tablets that were orange in colour in a blistered-shaped packaging held that distinctiveness in medicines is to be measured by its composition and not through its packaging , shape or colour.

Conclusion

The main idea behind granting protection for trade dresses is to prevent counterfeiting and inaccurate affiliation that will lead to exploitation of the original creator. Today’s business world is cut-throat and competition drives companies to adopt strategies that might not always be legally or ethically right. The idea of distinctiveness lies at the core of this issue and intricate features play a major role in identifying products. Majority of the Indian masses fall prey to misrepresentation and deceptive goods as they are simply not aware of reputed brands that put effort into research and quality assurance of their products and services. It is imperative that companies adopt strategies to protect their products under the ambit of a trade dress. While the Indian Trademark Act does not give express protection to trade dress, the definitions as discussed above along with the precedents laid down by the Indian courts covers all aspects that the Lanham Act, under Section 43 explains. While a clearer definition through express provisions for trade dress, will help build a concrete and sound understanding of this subject matter, the present state of affairs and its comprehension is the step in the right direction.

Author: Nimrat Singh – Student of Symbiosis Law School (Noida), in case of any queries please contact/write back to us via email [email protected] or contact us at IIPRD.

References:

[1] 15 U.S.C. § 1125(a)(1) (1988)

[2]Wal-Mart Stores vs. Samara Bros. 529 U.S. 205, 120 S. Ct. 1339 (2000)