With the growth in the number of e-commerce ventures, the need for protecting intellectual property rights in respect of websites and related technologies has received considerable attention from founders, investors and other stakeholders involved in the growth and development of the e-commerce industry.
The website of a company serves as a powerful tool through which a company tends to build its brand image and create a consumer base in different jurisdictions across the world. Companies therefore tend to spend considerable resources to create a unique 'look and feel' to their websites in order to differentiate them from competitors.
But what happens when distinctive features of a website are copied by other websites? Does this lead to an intellectual property infringement?
Can companies operating websites with distinctive features take measures to protect the overall look and appearance of its website?
This type of protection is known in the industry as 'trade dress'. Despite being of recent origin, the concept of 'trade dress' under trademark law protects the basic 'look and feel' of a product or service and ensures protection from infringement and passing off.
2. Concept of trade dress
Traditionally the concept of 'trade dress' was limited to protecting the distinctive shape, size and overall appearance of products but now includes the protection of designs and other forms of intellectual property.
The inclusion of websites under the concept of 'trade dress' is a relatively new legal concept in India and other countries lacking a uniform principal for its application by the courts.
The origin of the concept of 'trade dress' can be traced to the United States, Lanham Act. In simple terms, 'trade dress' means the aspects of a product that are recognized by their general set up or appearance.1
The United States Supreme Court in Walmart Stores Inc. v. Samara brothers Inc.2 held that 'trade dress' is a concept that originally included packaging and dressing of a product but in recent years have extended its ambit to include a product's design.3
Further, in Vision Sports, Inc. v. Melville Corp.4 the courts held that 'trade dress' involved the total image of a product.
In India, there is no specific legislation governing the concept of 'trade dress' and the law relating to 'trade dress' is nascent. However, the Trade Marks Act, 1999 provides a wide definition of a 'trade mark' which includes packaging, shape and appearance of the products. Therefore 'trade dress' in India is regulated under the Trade Marks Act, 1999.
Colgate Palmolive Co v Anchor Health and Beauty Care Pvt. Ltd5 is a landmark case in India that widely recognized the concept of 'trade dress'. In that case, the court held that the overall impression that a customer gets about the source and origin of goods from its visual representations, may confuse him about the source and origin of such goods and this amounts to what is known as 'passing off'.
Applying the principles of 'passing off', to protect the overall appearance of a product or website, it is necessary that such product or website is distinctive in nature so that it can be distinguished from a competitor's products or website.
3. Trade dress protection of websites
The protection of the overall appearance of websites has recently gained considerable attention. Today's e-commerce companies are investing in expensive processes to design and build web pages in a manner that attracts visitors who become long-term potential customers.
Courts in United States have passed a number of judgments that affirm the fact that a website's 'trade dress' can be protected.
For example, in Blue Nile, Inc. v. Ice.com6, Inc., the plaintiff sued the defendant for copying the overall "look and feel" of the plaintiff's websites. Although the court required more facts to be presented before it could arrive at a decision, it did rule that it was possible for the look and feel of websites to have 'trade dress' protection under existing trade mark law.
Similarly in Ingrid & Isabel, LLC v. Baby Be Mine, LLC7, the United States District Court for the Northern District of California was presented with a case where the plaintiff had alleged amongst other things that the defendant was infringing its intellectual property rights by copying phrases displayed on its website and also copying the overall appearance of its website.
The court in this case held that the 'trade dress' of a website is capable of protection by intellectual property laws. The court determined that the 'look and feel' of the defendant's website had the potential for creating confusion when compared to the plaintiff's website.
In India, except for a few cases, the courts have mainly restricted the ambit of 'trade dress' protection to products. The contents on a website and its arrangement are generally covered under the Copyright Act.8 It only provides for the protection of literary materials on a website and does not protect the overall design and look of the website. In such cases, the defaulting party can continue to create confusion in minds of the visitors of the website, which is tantamount to 'passing off'.
In the case of Pfizer Products Inc. vs. B..L. & Company & Ors9 the plaintiff, a multinational company, had filed a suit against the defendants for an injunction and damages for 'passing of' and unfair competition.
The plaintiff claimed that the defendants had copied the 'trade dress' of its product (which was a capsule that had acquired substantial good will) and had also created a website with several similar features to that of the plaintiff's website.
The Delhi High Court in this case took a restrictive view of the concept of 'trade dress' and limited it to the color and shape of the tablets. With respect to 'trade dress' the court stated:
"In so far as the question of similarity in trade dress is concerned one need not deal with the arguments on either side inasmuch as the defendants have changed the color of their tablet to pink. The defendant's tablet is also not exactly diamond shape but resembles more an ellipse. Therefore there exists a marked difference as of today."
Although the Delhi High Court had ordered the defendant to discontinue its website, the plaintiff's website was not accorded protection under trade mark law.
The 'The Himalaya Drug Company v. Sumit10 is one of the few cases where the Delhi High Court decided a case (with respect to an order for permanent injunction) for restraining the defendant for infringing the 'trade-dress' rights of a database on the plaintiff's website.
In that case, the plaintiff was engaged in the manufacture and sale of ayurvedic medicines and owned a domain name 'www.thehimalayadrugco.com' and website under this name. The most important feature of the website was the section titled "Himalayan herbs" which contained details of medicinal herbs.
The plaintiff advertised this website extensively in leading newspapers and journals and it had gained significant popularity. In the website created by the defendants, the defendants copied all the information contained in the plaintiff's website and therefore, infringed the copyright of the plaintiff and violated the 'trade dress' rights that existed in respect of the plaintiff's herbal database. The court held "The plaintiff has also been able to demonstrate that the defendants have attempted to pass off its herbal database as and for that of the plaintiff's and have also violated the "trade dress" rights that exist in respect of the plaintiff's herbal database. The reason being that the plaintiff's herbal database is unique and, therefore, any similar herbal database that appears on a different website is bound to create confusion by causing a consumer to associate the website with that of the plaintiff's. If any further evidence of the defendants' conduct in attempting to pass off its website as that of the plaintiff's were needed, it is clear from Exhibit P15 wherein the metatag of the source code of the defendants website includes the plaintiff's trademark " Himalaya Drug Co."
Therefore, trade dress protection was provided to protect the website as the database belonging to the plaintiff was unique and distinctive and if the same appeared elsewhere, it would lead to confusion in the minds of the consumers.
4. Conclusion and Recommendations
1. Kerly, 'Law of Trade Marks' (12 Ed, 1986 16.67)
2. 529 U.S. 205
4. 12 USPQ 1740
5. 2003 (27) PTC 478
6. 478 F. Supp. 2d 1240 (W.D. Wash. 2007)
7. WL 4954656 (N.D. Cal. 2014),
8. Burlington Home Shopping Pvt Ltd v Rajnish Chibber
9. 2002 (25) PTC 262 Del
10. 2006 (32) PTC 112 Del
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