Trade dress refers to features of the visual or sensual appearance of a product that may also include its packaging, shape, combination of colors which may be registered and protected from being used by competitors in relation to their business and services. The characteristic includes their shape (3 dimensional), packaging, color, graphic design of the product.
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
1. Anything that creates the overall look and feel of a brand in the marketplace could be a trade dress.
2. Consumer really believes that the trade dress is a source indicator of distinguishing the goods and services of one from those of others.
3. 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.
4. The statutory requirement for the registration of trade dress is same as that of the registration is word/ logo mark.
Source of Legislation
The concept of Trade dress has originated from the US legislation commonly known as The Lanham Act1. Under section 43(a) of the Lanham Act, a product's trade dress can be protected without formal registration with the PTO. In relevant part, section 43(a) states the following:
"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, which
(A) is likely to cause confusion, or to cause mistake, or to deceive [...] as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act."
In case of Wal-Mart Stores vs. Samara Bros. 529 U.S. 205, 120 S. Ct. 1339 (2000)2, trade dress was defined 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."
Concept of Trade Dress in India
The Indian law does not have a separate provision for the trade dress under its existing Trade mark legislation unlike the US law which recognizes the concept trade dress under Section 43(a) of the Lanham Act.
The new Trade Marks Act, 1999, which came into force in September 2003 is largely based on the English Trade mark Act, 1994 recognized the concept of trade dress on the lines of The Lanham Act. The amended Act of 1999 recognizes trade dress through the new definition of Trade mark also consists of the shape of goods, packaging or combination of colors or any combination thereof. Broadly speaking, Section 2 of the Trade Marks Act, 1999.
Defines the following as:
(m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof;
(q) "package" includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper an cork; Hence the new definition of trade mark under Indian law comprises all the elements of the trade dress as under US law. The Indian courts have been recognizing the concept of trade dress even before 2003.
In Cadbury India Limited and Ors. Vs. Neeraj Food Products3, the 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 another recent case of Gorbatschow Wodka v. John Distilleries4, the Plaintiff, Gorbatschow Wodka, filed an infringement action before the Bombay High Court alleging that the Defendant has invaded its intellectual property rights by adopting a deceptive variation of the shape of the bottles of the Plaintiff.
Trade dress can be secured for the shape of the bottle of the soft drinks, shape of the furniture, and now also the lay our 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.
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.