India: Protection Of Trade Dress – Developing Jurisprudence

Last Updated: 5 April 2018
Article by Gautam Kumar

Product packaging and visual impression of any product which is to be launched in the market, has become one of the most decisive factors regarding how well the product will attract the attention of the prospective consumers. Over decades there has been a transformational shift in the choices of the consumer; today along with the quality, the overall packaging of the product has also significantly affected the buying choices of the consumer. Packaging, color pattern, color combination,  shape of the product, texture, design, graphics and illustration which we call as trade dress are protected from being misused by the other parties who intends to imitate the overall look of a product in order to take advantage of its established goodwill and reputation. In India there is no separate provision for protection of trade dress, however, the common law of passing off provides protection of trade dress consisting of shape of goods their packaging and combination of colors etc. which is elucidated in Section 2 (zb) of the Trademarks Act 1999. In order to qualify for protection, the overall appearance or image of the product has to be distinctive either having inherent distinctiveness or acquired distinctiveness. While extending protection to the right holders in order to protect their trade dress, the Courts have taken into account various factors rather than simply applying the conventional methods of looking into a dispute through the prism of trade mark infringement only. In 2017 the High Court of Delhi and Bombay High Court have delivered orders/judgments which would add on to the earlier cases defining common law pertaining to protection of trade dresses.

In one of the cases pronounced by the Division Bench of Delhi High Court where the dispute in the suit related to rights claimed by ITC in the yellow and blue packaging of Sunfeast Farmlite Digestive All Good Biscuits and contested that, Britannia have copied a similar color trades dress for its product Nutri Choice Digestive Zero Biscuits. The Single Judge while ruling in favor of the ITC observed that within the short span of time, the product of ITC has acquired popularity which was very evident from the sales of the product.

Aggrieved by the said order Britannia filed an appeal before Division Bench  who subsequently reversed the order of Single Judge by making the following observations: a) the get-up of the yellow and blue combination of the packaging did not attain distinction and therefore was not exclusively and distinctively associated with the ITC; b) ITC mainly relied on its trade mark and trade name in their advertisements; c) the court did not agreed with the Single Judge's view that within such short span of time, the yellow-blue packaging of ITC biscuits had become so associated with ITC so as to enable it to prevent its use by its competitors; d) Court further opined that distinctiveness is acquired in get-up when it is not only novel but also possesses some striking feature. In the present case, the get-up and specifically the yellow-blue combination of packaging of ITC did not fall into that category of distinctiveness. The matter is still pending before the Supreme Court and has been adjourned sine-die for exploring settlement.

Another proceeding where the issue of trade dress was discussed last year was the case of Pidilite Industries Limited Vs Poma-Ex Products before Bombay High Court. Although, the core issue dealt by the court was the infringement of the Plaintiff's mark "FEVIKWIK" by the Defendant's mark "KWIKHEAL", but the question of trade dress also played a significant role in reaching the conclusion.

The Plaintiff argued that they have a registered and distinctive packaging of their product which was created in-house by an employee of the plaintiff during the course of employment and constitutes an original artistic work in which copyrights subsist. Defendant on the other hand has not been using its own trade mark packaging as registered but has been using the packaging which is similar to that of Plaintiff's. The Plaintiff contention was that the Defendant has used every singly feature of its product packaging in its minutest details therefore the Plaintiff has a clear cut case of infringement and passing off and if goodwill and reputation of the Plaintiff's product is not protected, it will result into irreparable damage. The Court while agreeing with the Plaintiff held that the packaging of the Defendant's product was likely to cause confusion among the public as the packaging of the two products were identical.

The issue of infringement of trade mark "Red Sole" pertaining to high end luxury shoe brand of famous designer Christian Louboutin was in question in Christian Louboutin Sas Vs Mr. Pawan Kumar & Ors.- CS (Comm.) 714 of 2016 in which the Delhi High Court declared the designer's 'Red sole' a well-known trademark. In this case it was argued by the Plaintiff that the shoe with red sole clearly identifies Plaintiff's product distinguishing it from others. The 'RED SOLE' trademark has thus become the signature of the plaintiff. The trade mark "Red Sole" has registrations in different jurisdictions including India and simentianously it enjoys a trans-border reputation by virtue of various factors. It has also got spilled over reputation in India from various other countries as the consumer across the globe are well aware of the goodwill and reputation of the mark even before it was formally launched in India. The Defendants in the suit were local shoe dealers manufacturing and selling the shoes with the red sole thereby infringing the trade mark of the Plaintiff. The Court, thus after looking into the material evidence led by the Plaintiff permanently injuncted the Defendants from manufacturing, selling or in any way dealing with the footwear bearing the Plaintiff's registered trade mark for "Red Sole" and simultaneously awarded damages in favour of the Plaintiff. This is also the first instance in India where any Court has declared a trade dresses as a well-known status.

Early this year, in M/s Castrol Limited & Anr. Vs Iqbal Singh Chawla & Anr.- CS (OS) 4 of 2011, the Castrol Limited sued the Defendants who were involved in selling 4T oil under the trade mark "Lumax Active" who were said to have infringing the trade mark "Castrol Active" which was separately registered in the name of Castrol Limited. Castrol Limited, the Plaintiffs here claimed relief in relation to its trade dress, copyright in packaging, including the shape of the container of the bottle. The Plaintiffs' case was that the Defendants have copied the exact trade dress, shape of the bottle, label lay-out and colour scheme of the Plaintiffs which amounts to infringement of trade mark, copyright as well as makes a case of passing off. The Court opined that if there is a comparison between trademarks "Castrol Active" of the Plaintiff and "Lumax Active" of the Defendant, there does not appear to be any deceptive similarity between the marks if it is seen in isolation of the trade dress, colour scheme, packaging, design, layout, shape and configuration. Thus, the moment when the rival trademarks are examined in conjunction with the trade dress, colour scheme, packaging, design, layout, shape and configuration, it becomes evidentially clear that adoption of the trade mark "Active" by the Defendants is clearly a dishonest adoption to encash upon the goodwill and reputation of the Plaintiffs. In this said case though the Court found that the rival marks were different the dishonesty of the Defendants lied in adopting the exact same trade dress. The Court however added that the said injunction will not affect the right of the Defendants, if the Defendants use the word "Active" in completely different trade dress, colour scheme, packaging, design, layout, shape and configuration.

Today the market is exploding with the different types of products available in the market, be it retail shops, malls or online shopping forum, where the multiplicity of products makes the choice of the consumers based on recall by memory difficult. For the same reason today, the colour schemes and product packaging play an indispensable part in finally arriving at the decision regarding the choice of the product in the market. Courts have taken due care in attributing the growing importance to not only the trade marks but also to the overall look of the product which is known as trade dress.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Gautam Kumar
Similar Articles
Relevancy Powered by MondaqAI
S.S. Rana & Co. Advocates
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
S.S. Rana & Co. Advocates
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions