Trade dress is overall commercial image of a product that identifies the product
and its source and distinguishes it from other products. Might include the
shape/design of the product, product leveling and packaging, decor or the
environment in which the service is provided, size, shape, colour, texture,
product configuration etc. Packaging of every product will be different which is
likely to be unique to his trade.
The illiterate consumers will differentiate the product basing on the packaging.
The colour of the product also gives the product a distinct identity altogether.
These are the elements of the product which makes the product distinct. It
basically deals with the physical appearance of the product.
These are different
from trade mark 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 and trade dress is the appearance of the product which is used to
identify the producer. It is the way in which the product/service is presented
to the consumer. This concept was first recognised in U.S. Trade dress should be
non functional in order to get protected legally. In this project the law
related to trade dress protection will be examined in India and U.S.
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. For Ex.
Apple Inc. recently secured the registration over the design of its flagship
Apple Stores as trade dress.
Essentials of Trade Dress
- Anything that creates the overall look and feel of a brand in the
marketplace could be a trade dress.
- Consumer really believes that the trade dress is a source indicator of
distinguishing the goods and services of one from those of others.
- The configuration of shapes, designs, colors, or materials that make up
the trade dress in question must not serve a utility or function outside of
creating recognition in the consumer's mind.
- The statutory requirement for the registration of trade dress is same as
that of the registration is word/ logo mark.
Trade dress can be secured for the shape of the bottle of the soft drinks, shape
of the furniture, and now also the lay out or the design of a show room. Some of
the famous trade dress is: - shape of coco cola bottle, front grill on the Rolls
Royce. With growing competition trade dress provides a new forum to secure the
untouched aspects of business of distinctiveness.
Trade Dress Protection: Position India
In India there is no particular definition of trade dress protection under
trademark act 1999. But with the gradual development in intellectual property
laws India is now at par with international standards. The new amendment
recognizes trade dress protection through the new definition of Trade Mark which
comes under Section 2 of the Trade Marks Act: Sec 2 of the Trade Marks Act
gives the following definition such as:
(zb) trade mark is defined 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
(q) Package includes any case, box, container, covering, folder, receptacle,
vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap,
and lid, stopper and cork.
(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.
Hence the new definition of trade mark under Indian law comprises all the
elements of the trade dress as under U.S. law. The Indian courts have been
recognizing the concept of trade dress from even before 2003.
In case of shape of goods registration of the trademark besides other criteria
is still subjected to provision of subsection (3) of section 9 of the Trademarks
Act, 1999, which reads as follows
(3) A mark shall not be registered as a trademark if it consists exclusively of
- (a) The shape of goods which results from the nature of the goods
- (b) The shape of goods which results from the nature of the goods
- (c) The shape of goods which gives substantial value to the
This shows that one of the key ideas behind trade dress protection that is
functionality is also recognised under Indian Trade Mark law.
In order to determine the issue of confusion of customers, question arises
whether it is overall similarity of trade dress which is material or the issue
is to be decided by comparing the distinguishing features.
Another related issue is the relevance of type customers and nature of product
to decide the issue of confusion on account of similarity/sameness of trade
dress. Distinctiveness is one of the key aspects in Indian Trade mark regime so
the same applies to trade dress also. A trade dress shall be distinctive i.e.
easily recognised by the consumers. Trade mark protection is available to both
registered and unregistered trademarks, so the case shall be same with trade
The act provides for passing off action against use of similar trademarks
of another which is not registered out which is very popular among the public
and there is a clear association of the trademark and the product which the
public can easily identify. Indian courts at many times have given their
decision basing on the trade dress factor of the product. These cases are
discussed thoroughly below.
Cases Supporting The Indian Position
Hon’ble Supreme Court of India laid down the parameters for comparison between
two marks in Parle Products (P) Ltd. v. J.P. & Co., Mysore, and 1972 AIR
1359. In this case, the packets of biscuits manufactured by the appellants and
respondents were practically of the same size, the color schemes of the two
wrappers were almost the same, and the designs on both, though not identical,
bore such a close resemblance that one could easily be mistaken for the other.
The Supreme Court lay down that for deciding whether one mark is deceptively
similar to another, the broad and essential features of the two have to be
considered. They are not to be placed side by side to find out differences in
the designs and it would suffice if the mark bears an overall similarity to the
other. After all, an ordinary purchaser is not gifted with the powers of
observation of Sherlock Holmes.
In Vicco Laboratories vs. Hindustan Rimmer
1979, the concept of imitation of
trade dress was asserted even when there was no deceptive similarity between the
marks. In this case, both expressions ‘trade dress’ and ‘fact get-up’ were used
and the court ruled that despite two marks 'Vicco
' and 'Cosmo
' used by the
plaintiffs and defendants respectively were no doubt different and the mark
'Cosmo' by itself was not likely to deceive but the entire get-up and the color
scheme of the tube and carton adopted by the plaintiffs and the defendants were
identical in every detail and were likely to confuse and deceive the customer
However, later on Division Bench of High Court of Delhi in Kellogg Company v. Pravin
1996, rejected the contention of similar get-up or trade
dress. The dispute related to the plaintiff's sale of cornflake with cartons
having the description inscribed as KELLOGG'S CORNFLAKE. The respondent was
selling cornflake using a carton more or less similar in size, but with the
title AMIS ARISTO CORN FLAKES written just at the place where the appellant's
display the words KELLOG'S CORNFLAKE. The Division Bench came to the conclusion
that the principal of fading memory or imperfect recollection should not be
pressed too far and the goods in question sold to people belonging to middle
class or upper middle class, who are fairly educated, has to be tested
The judgment in Kellogg Company's was considered controversial and it was
doubted whether it correctly reflected the position of law on this aspect.
This controversy has arisen on account of the fact that the principles laid down
in Kellogg Company's case were based on the dictum of Lord Halsbury in Schweppes
Ltd.'s case wherein a reference was made to a customer who was so careless that
he did not look and treated the label fairly, but took the bottle without
sufficient consideration and without reading what was written very plainly. Such
a customer was held not a person who would form the basis of a test for passing
However, this dictum was a departure from the settled law of the Supreme Court
of India in relation to passing off matters that the case of passing off has to
be decided on the comparison of broad similarities and the test is always from
the point of view of an unwary purchaser.
Thereafter, in S.M. Dyechem Ltd. v. Cadbury (India) Ltd. 2000
, the dictum of
Lord Halsbury was relied upon and it was laid down that in case of an
infringement or passing off, the broad dissimilarities need to be compared.
In ITC Limited v Britannia Industries Limited
, the Delhi High Court
considered the issue of unregistered trade dress in relation to biscuit
packaging. ITC filed the suit for passing off to safeguard its rights in the
yellow and blue packaging of Sun feast Farmlite Digestive – All Good biscuits
and restrain Britannia from using a deceptively similar trade dress for its
Nutri Choice Digestive Zero biscuit packaging. The court granted the injunction;
however, the Division Bench reversed the order on appeal. It held that within a
six-month lifespan, the yellow and blue colour combination had not become
distinctive of ITC so as to claim exclusivity and prevent competitor use.
In the case of Colgate Palmolive & Co. V Anchor Health and Beauty Care Pvt.
. the combination of the colour red and white was in dispute. It was held
that when the colour combination, packaging, shape of container of both the
product is same then consumer confusion will be higher with regard to the origin
of the both the product. If an illiterate naive customer uses another product
basing on the physical appearance of the product he has been using it amount to
In other words if the first look of the item without going into the
infinitesimal details of the colour combination, getup or lay out appearing on
the container and packaging gives the inkling o deceive 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 another case, Cadbury India Limited and Ors. v. Neeraj Food Products
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.
In the case of United Distillers Plc v. Jagdish Joshi
 & others the plaintiff
was the owner of trademark Johnnie Walker for Scotch whisky. The defendants were
manufacturers of Johnnie Walker Gutka. The plaintiffs sued the defendants for
infringement of trademark and trade dress
. The court held that the trade dress
used by the defendant has a similarity with the trade dress of the plaintiff and
had infringed the same.
In the case of L’Oreal India Pvt. Ltd. and Anr. Vs. Henkel Marketing India Ltd.
. The packaging of L’Oreal products GARNIER- COLOUR NATURALS and
the product of Henkel Marketing India Ltd, Palette-Permanent Natural Colours
was alleged to be identical. L’Oreal instituted proceedings for passing-off
arguing that it was a substantial reproduction and/or colourable imitation of
L’Oreal label/trade dress.
The court emphasized on the deceptive similarity
between the trade dresses of the two products which could create confusion in
the minds of the consumers. It was held that, since the trademark of both the
products was clearly inscribed in the respective trade dresses, there was no
chance of confusion among the consumers who are mostly from the middle class or
upper middle class. Thus, trade dress infringement was not made out and L’Oreal
lost the proceedings.
Trade Dress Protection: U.S. Position
In the US the basis of trade dress protection is enshrined in section 43(a) of
the Lanham Act. Now, trade dress is defined as a product’s total image or overall appearance and may include features such as size, shape, colour or
colour combinations, texture, graphics or even certain sales techniques. Trade
dress is available to both registered and unregistered trade dress. If the trade
dress is unregistered, the basis for protection is section 43(a) of the Lanham
Act 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.
It provides for civil action against any person who uses any word or combination
of words, term, name, symbol or device associated with any goods or services
belonging to another so as to cause confusion or deception with respect to the
origin of the concerned goods or services. It also provides that in a civil
action for trade dress infringement for trade dress not registered on the
principal register, the person who asserts trade dress protection has the burden
of proving that the matter sought to be protected is not functional.
Functional feature of a product is not protected under the act. As regards the
element of distinctiveness
marks under the US law may be classified as
generic, descriptive, suggestive, arbitrary or fanciful marks are entitled to
trademark protection, unlike in Indian law, because of their intrinsic nature to
identify a particular source of a product.
Generic marks cannot be protected as trademarks because the number of such
appropriate terms is limited and all merchants should be equally allowed to use
such terms to describe their own goods when competing for customers.
Distinctiveness and non functionality are the two main criteria for giving trade
dress protection in US. A plaintiff asserting a claim for infringement must
plead and prove the below three elements.
- The plaintiff owns a protectable trade dress in a clearly articulated
design or combination of elements that is either inherently distinctive or
has acquired distinctiveness through secondary meaning, i.e., buyer
association of symbol with source.
- The accused mark or trade dress creates a likelihood of confusion as to
source, or as to sponsorship, affiliation or connection. This element does
not rest on whether the defendant’s package or trade dress is identical to
plaintiffs; rather, it is the similarity of the total overall impression
that is to be tested.
- If the trade dress is not registered, the plaintiff must prove that the
trade dress is not functional. If the trade dress is registered, the
registration is presumptive evidence of non-functionality, and the burden of
showing functionality is on the defendant. The third prong is interesting,
and to satisfy it, the trade dress seeking protection must not functional.
That is, the configuration of shapes, designs, colours, or materials that
make up the trade dress in question may not serve a purpose or function
outside of creating recognition in the consumer’s mind. If the above three
elements for trade dress infringement are met, two remedies are available:
injunctive relief (a court order restraining one party from infringing on
another’s trade dress) and/or money damages (compensation for losses
suffered by the injured party).
Cases Supporting Position of The U.S.
In the case of Two Pesos v Taco Cabana
, Two Pesos owned a growing chain of
restaurants. The restaurants featured bright colours, paintings, murals,
interior dining, patio areas, and 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 that adopted 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 by
Two 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 an inherently distinctive trade dress would
penalize persons just starting a business who have not yet developed customer
recognition of their mark.
In another case Wal-Mart Stores v Samara Bros, Samara produced a line of
children’s clothes decorated with appliqués and marketed the clothes in the U.S.
through retail department stores. Wal-Mart sent a series of photographs of
Samara products to its overseas supplier with instructions to produce copies.
The supplier did so, and the copies were sold at Wal-Mart stores. Samara sued
Wal-Mart, alleging among other things infringement of unregistered trade dress
under Lanham Act, section 43(a). The court made a distinction between product
packaging and product design and stated that ambiguous trade dress should be
classified as product design requiring a secondary meaning to be entitled to
trade dress protection. Thus, the court was in favour of Wal-Mart.
In the case of Traffix Devices v. Marketing Displays
Displays held a patent on a traffic sign with two springs that would not blow
over in the wind. In the claims, the springs were far apart. During the term of
the patent, a competitor introduced a sign where the springs were close
together. Marketing Displays won the patent infringement action under the
doctrine of equivalents. Subsequently, Marketing Displays marketed signs with
two springs close together.
The patent expired and Traffix introduced a competing sign. Marketing Displays
sued Traffix and argued trade dress protection as the product design has
acquired secondary meaning. The lower court held that since the design was
functional it could not be given trade dress protection.
However, the US Supreme Court observed that a particular design/shape is said
to be functional only when by denying it to the competitors, they are placed at
a disadvantageous position. The court further said that where the expired patent
claimed the feature in questions, one who seeks to establish trade dress
protection must carry the heavy burden of showing that the feature is not
functional; for instance, by showing that it is merely ornamental, incidental,
or arbitrary aspect of the device. Thus, it reversed the order of the lower
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
as a result of which it does not get protection under the
act. However certain features of trade dress gets protection such as colour
combination, shape, and packaging of a product can be registered.
In some cases as mentioned above the concept of trade dress has been recognised.
U.S. has a very strong stand point in case of trade dress protection. However
India is also progressing in recognizing trade dress protection.
- The Trade Marks Act, 1999, s. 2.
- The Trade Marks Act, 1999, s. 9.
- Parle Products (P) Ltd. v. J.P. & Co 1972 AIR 1359 1972 SCR (3) 289 1972
SCC (1) 618
- Vicco Laboratories vs. Hindustan Rimmer AIR 1979 Del 114
- Kellogg Company v. Pravin Kumar Bhadabhai, 1996 PTC (16) 187
- S.M. Dyechem Ltd. v. Cadbury (India) Ltd. AIR 2000 SC 2114
- ITC Limited v Britannia Industries Limited IA No.10139/2016
- Colgate Palmolive & Co. V Anchor Health and Beauty Care Pvt. Ltd. 2009
(40) PTC 653 (Mad.).
- Cadbury India Limited and Ors. V. Neeraj Food Products, 142 (2007) DLT
- United Distillers Plc v. Jagdish Joshi, 2000(88) DLT 142.
- L’Oreal India Pvt. Ltd. and Anr. Vs. Henkel Marketing India Ltd. and Anr. 2005
(6) BomCR 77.
- Two Pesos v Taco Cabana, 505 U.S. 763 (1992).
- Wal-Mart Stores v Samara Bros., 529 U.S. 205 (2000).
- Traffix Devices v. Marketing Displays, 532 U.S. 23 (2001).