Trade Dress – A Concept in India
“Trade Dress” is a visual representation of the goods & services, making it distinctive from other products & services.
The concept is extended to the color, shape, size, configuration, & packaging of a product and also includes anything which adds value to the brand creation and presentation of a product.
Essential elements of a Trade Dress
- A Product is indicating a source in the mind of a consumer.
- The overall appearance establishing Trade Dress.
- The configuration of shapes, designs, colours, or materials of a Trade Dress must justify the consumer’s eyes.
- The statutory requirement for the registration of trademark/logo and Trade Dress is the same.
Trade Dress of a product or service consist number of features which outlines a unique attribute that requires being counted as a whole and viewed in conjunction. It must indicate distinct source to a consumer and ought to dysfunctional in nature to determine it as a Trade Dress.
Position of Trade Dress in India
The Trade Dress concept can be traced in the US legislation, under Section 43(a) Lanham Act. However, Indian legislation does not consist of specific provisions defining Trade Dress; thereby, the Trademarks (TM) Act, 1999 is majorly based on English Trade Mark Act, 1994, influenced by Lanham Act.
The Trade Dress concept can be broadly identified in the definition of TM Act, 1999 under Section 2 (zb) which defines “Trade Mark” as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors.”
The Act also defines ‘Mark’ under Section 2(m), which include a device, brand, heading, label, ticket, name, signature, word, letter, numbers, shape of goods, packaging or combination of colors, or any combination thereof.
Furthermore, the Act provides statutory identification to the packaging, shape of goods and combination of colors under various classes defining symmetries of the goods, thereby makes it likely to fall within the ambit of Trade Dress.
Trade Dress is presumed to be a broader concept than a Trade Mark. It included designs, graphics, packaging, which develop the overall brand value of a product distinguishing it from other products in the market. Therefore, it anchors to being incorporated into a well-recognized concept by law.
In India the law governing Trademark facilitates passing off action against similar/identical products is same for Trade Dress.
In Merwans Confectioners Pvt. Ltd. V. M/s. Sugar Street & Ors., the applicant filed an interim injunction application seeking relief against infringement of the ‘Trade Dress’ by the defendant even after the termination of the Franchise Agreement.
The applicant was engaged in a business of bakery and confectionery articles. In 2015, the applicant entered into a Franchise Agreement with the defendant and terminated the same in 2019.
The Bombay High Court held that, “a product feature with only decorative and aesthetic with no source-identifiable could not be given exclusive rights under the concept of Trade Dress.” Thus, there is no prima facie case for said application and dismissed the suit.
The overall distinctiveness of the product is determined from its source, and thereby it could be instinctive or acquired. The appearance distinguishes a product from that of another’s competing product.
Indeed, in various matters of infringement of Trade Dress, the Courts have manifested various other aspects to protect the rights of the trade dress holder. Trade Dress is a fresh concept in Intellectual Property in India but not unknown to the Courts.
Likewise, in the case of Merwans Confectioners Pvt. Ltd. supra, the Hon’ble Bombay High Court diligently interpreted the Trade Dress concept.
The Court held that;
A product feature whose only impact is decorative and aesthetic with no source identifying role cannot be given exclusive rights under Trade Dress law.
“There is no provision in the Franchise Agreement that after the termination, the defendants would not allow to carry on any business of similar nature by purchasing those products from some other suppliers in the market.
Therefore, to determine the likelihood of confusion/deceptiveness in the minds of unwary customers irrespective of dissimilarities in the trade name rather than finding existence of confusion or deceptiveness”.
The description set out in the issues raised of continuous carrying of the same business at the same place with the same décor, layout, design that conferred Trade Dress, projects to be distinctive, identified and associated with applicant implies a true interpretation drawn by the Court with regards to the Trade Dress.
Besides protecting interest of an original holder of a Trade Dress, the Court have been solicitous about certain other elements showing inclination towards Trade Dress variety than merely rely on conventional approach of trying issues under the umbrella of Trademark Infringement alone.
There are notable precedents where the limbs of Trade Dress have been deliberated upon by different Constitutional Courts, some of which are discussed as under;
a.Britannia Industries Ltd v. ITC limited on 10 March, 2017
In this case, the ITC owns the packaging of biscuits “Sunfeast Farmlite Digestive All Good Biscuits” whereas; Britannia Pvt Ltd. owns “Nutri Choice Digestive Zero biscuits”. ITC files a suit seeking permanent injunction restraining usage before Hon’ble Delhi High Court, Single Bench, alleging passing off its rights through using deceptively/ confusing similar Trade Dress for their product packaging, i.e., “Nutri Choice Digestive Zero” biscuits.
The primary issue before the court was whether the essential elements of passing off are fulfilled or not? The court held that ITC concerned product had acquired well-established goodwill in less time. Thus, on examining both the product’s packaging, i.e., Trade Dress, it seems to be deceptive / confusing to the consumer’s eye regarding the origin of the product.
Therefore, the Court observes that the grounds to grant an interim injunction as to the action of Passing Off were established, hence the passing restraining order in favour of ITC against Britannia product, i.e., “Nutri Choice Digestive Zero” biscuits for using similar packaging/get-up//wrapper/Trade Dress therein.
Thereafter, an appeal was preferred before the division bench of Delhi High Court against the impugned order, wherein the court reversed the order passed by the single bench.
The court opined that;
- The getup/packaging of yellow and blue combination did not achieve distinctiveness.
- The advertisements of ITC were primarily oriented to Trade Name and Trade Mark.
- The Court disagreed with the observations made by a single bench regarding the reputation built up for yellow-blue packaging of ITC, and restrains the usage of similar packaging/getup by another competitor for the same.
- The distinctiveness is not merely relied upon getup but also counts salient characteristics.
The matter is pending before the Hon’ble Supreme court, and the impugned order is set aside.
b. Pidilite industries v. Poma-Ex products & ors, 2017 (72) PTC 1 (Bom)
The principal issues before the Hon’ble Bombay High Court regarded Trademark “FEVIKWIK” infringement against the mark used as “KWIKHEAL”.
However, while examining the case, concerns related to the packaging / Trade Dress were also averted significantly related to whether ” KWIKHEAL ” has infringed the registered distinctive packaging or the trade dress of the Plaintiff’s mark ” FEVIKWIK “? Thus, submitted that the Plaintiff had added original creative values to the product packaging. Therefore, the product is duly registered and holds distinctive packaging and Trade Dress in which copyright subsists.
It was held by the Court that there exists a prima-facie case as the balance of convenience lies in favour of the Plaintiff after comparing the mark “FEVIKWIK” with the mark of the Defendant “KWIKHEAL”, which is prima facie deceptive or misleading.
Therefore, the Court agreed that the Defendant had adopted each feature similar to the plaintiff Trademark; thereby, it will amount to infringement and passing off action.
Meanwhile, the Court observed that the packaging of Defendant’s product was likely to confuse/deception to the consumer’s eyes as the two products’ packaging was closely identical.
c.Christian Louboutin v. Pawan Kumar, CS (COMM) 714/2016
Both Plaintiff and Defendant happen to be engaged in the business of selling shoes. The Plaintiff’s shoes under the brand named Christian Louboutin classified as a well-known brand in various countries, including India. Based on the survey conducted by the Plaintiff, he came across that the defendant had been selling similar featured ‘RED SOLE’ women’s footwear. The ‘RED SOLE’ has been a registered and distinctive product.
The Hon’ble Delhi High Court observed that the plaintiff product is widely known all over the world. Therefore, the ‘RED SOLE’ hold a distinct well-known Trademark value and is generally associated with Christian Louboutin. Whereas, the Court concluded that using similar mark projecting ‘RED SOLE’ dressing would create confusion and deception to the consumer mind. Thus, the court orders to pay damages.
d.Castrol Limited & Anr. Vs Iqbal Singh Chawla & Anr CS (OS) 4 of 2011
The plaintiff happens to be the Trademark owner of ‘Castrol Active’ and, in 2010, found that the defendant, the Trademark owner of “Lumax Active”, has been selling 4T oil under the same name. Therefore in 2011, the plaintiff sued the defendant, alleging the Infringement of Trademark and Trade Dress, including layout, font, shape of the bottle, label and colour scheme, which is separately registered in the name of Castrol Limited.
Furthermore, the Plaintiff claimed to seek relief regarding the infringement and passing off Trade Dress, copyright in packaging including various other appearance aspects of the product.
The Delhi High Court observed comparing both the Trademark, i.e., “Castrol Active” and “Lumax Active” separately based on Trade dress, colour scheme, packaging, design, layout, shape and configuration, the similarity between both the products does not prevail over the other.
However, on examining the features resembling in conjunction with regards to the attributes considered, an apparent adoption of Trademark “Active” and Trade dress can be witnessed by the defendant of the plaintiff’s product. In addition, the Court clears its stance on the further usage of the mark ‘Active’ with different Trade dress, colour scheme; packaging, design, layout, shape, and configuration will not affect defendant rights. Therefore, it amounts to infringement of Trademark, Trade dress and passing off the goodwill of the plaintiff product. Thus, allowing the permanent injunction to restrain the usage of the said product mark.
The Hon’ble Courts has rightly made an inference from consumers’ point of view and identified the Trade Dress concept as an essential feature of the product’s visual appearance considering the product’s source.
Trade Dress concept anchor to being incorporated into a well-recognized concept in Indian laws as well as in other countries.
Thus, the concept is yet evolving in India and will be witnessed in future as a response to the surging competition. Besides, it also lays out a new way to identify the unseen characteristics of a product projecting Trade Dress.
We at AMLEGALS advise that every organisation should focus on market intelligence in trade dress which has been adopted by them in a segment and also should minutely analyse that any new product launched by competitor is not in a copy mode of trade dress or nearing the litmus test where it can result into deceptive practices and influence buying.
Intellectual Property Law in India is yet in its infant stage and waiting to see a huge change. This comprises the importance of Trade Dress to be realized and addressed timely, special in FMCG industries which runs majorly on the appearance and representation of the product.
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