In the present era, trade dress has continued to remain the focus of passing off actions in India. Trade dress every so often argued, is the mere look and impression of a product. It is quite significant for the whole identity of a commercial product and its market. Trade dress is a method for distinguishing and separating the result of a seller by visual and sporadically audible. Based on the USA law of Trademarks, the Trademark Act 1999 has attempted to codify the law on trade dress in India by bringing it within the ambit of a trademark by recognizing a mark as including design and the packaging and combination of the color for a product. This gives the users of the trade dress both a statutory and a common law remedy for the unauthorized use of such a get up of their product.
Trade dress continues to be one of the most imperative matters in societies and this paper makes an effort to further study the ambit of the law of trade dress with admiration to use of colors with reference to the recent judicial trends in India and the United State of America.
Introduction:
“Product packaging” or the sheer look of an invention at present has become just as essential as the product itself. A trade dress is the graphic appearance of an article or its bundling which frames a significant segment as the basis of the product and is different from the conventional brand name law that secures words or logo, trade dress law ensures the complete package and design of the product.
By definition, it denotes how brand owners pick to dress their final product before it hits the market by controlling design elements like their product’s size, shape, and color. A great deal of thought goes into conceptualizing these components since brands have understood that it assists purchasers with recognizing and perceive their number one brands between an unending determination of practically indistinguishable items. For example; while browsing for a shampoo, very often you’d be able to visually categorize what you’re looking for by its shape, size, and color.
Trade Dress and Design Patents
Design Patents secure novel decorative highlights of an article of production and not its utilitarian attributes. They cover visual, non-practical highlights in an item, stretching out to the state of the item, surface ornamentation, or the mix of both. Configuration patent assurance stretches out just to the presence of the item, and not its usefulness. If the design is necessary for the product to operate or work or work, it is considered functional and therefore ineligible for protection. On the other hand, Trade Dress is a type of trademark. Similarly, as with all types of brand names, exchange dress is utilized to distinguish a wellspring of a decent or potentially administration, just as it is related to that source. Trade dress alludes to the general appearance and picture of an item. Configuration patent and exchange dress insurance can be utilized on a similar item plan for covering timeframes. For instance, when another item configuration is created, the trade dress isn’t accessible as it is impossible to set up that it has obtained optional importance. Be that as it may, to secure the new plan, a planned patent can be recorded. And keeping in mind that the plan patent will in the end lapse following 15 years, the plan patent gives a sizable amount of time to the item configuration to get the auxiliary significance expected to get qualified for exchange dress assurance.
Trademark and Trade Dress
Trade dress is different from a trademark. A trademark protects a word, phrase, symbol, or design that identifies and distinguishes the source of the goods of one party from those of others. Trademark is placed on a product itself or its packaging whereas the trade dress is the overall look of the product, not just a name or logo. A trademark also affords protection that trade dress doesn’t, for example, the ability to prevent importation of confusingly similar goods, constructive notice of ownership, incontestable status, and prima facie evidence of validity and ownership.
A trade dress claim can likewise take into account treble damages, upon tracking down that the offending mark was intentionally used as a counterfeit, i.e., “a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.” In addition, a preliminary injunction might be accessible if the moving party can demonstrate irreparable harm.
We allude to the ‘red sole’ as notorious not just on the grounds that it delegated Louboutin as the principal shoe-creator in history to change a visual component into worldwide style culture yet in addition because of the limitless discussions it has started inside the worldwide IP people group. It all started in 1990 when renowned fashion house Yves Saint- Laurent released a shoe line that was similar to Louboutin’s design. It is currently protected to say that YSL’s shoe line left the shop’s showcase to retire sooner than the period they were expected to remain for. Another enormous and well-known illustration of trade dress is that of Apple Retail Stores. Apple has gone through extraordinary lengths to guarantee its image character is predictable (and ensured) and that goes past its real line of items. Next time you end up in an Apple Store, pay special mind to the nicely planned insides that incorporate protected structural glass boards and drifting glass-like flights of stairs.
It can be seen through the stainless-steel exteriors and the light-birch-colored tables under which the MacBook and iPhones sit. On the grounds of trade dress infringement, Apple has successfully shut down numerous stores belonging to rival brands. Converse’s Chuck Taylors also present itself as a classic trade dress example. To date, Chuck Taylors remain the highest-selling basketball shoe in history. It would be an uncommon sighting to catch a basketball player wearing them on the courts, but Chuck’s have undeniably played a huge impact on the shoe industry as a whole. Regardless of its shaky ability to maintain a solid fanbase over the years, chuck’s has consistently been around and is probably here to stay. The mark ‘toe cap’ combined with striped rubber sole trade dress has effectively gone against younger brands, trying to monetize converse’s ageless popularity.
When we talk about ketchup, Heinz is a name known by everyone all over the world, thus making it a very prominent trade dress example. Making an annual revenue of USD 3 Billion from primarily selling ketchup and getting USD 23 billion the consolidation offers from Warren Buffet are obvious indicators that you are making it but a business. Heinz was ingeniously able to take their client’s dissatisfaction at the trouble of getting ketchup out of a bottle and turned it into instant success through a well-engineered bottle shape that was inherently distinctive. Protecting this shape as a trade dress is the primary reason why rival attempts to copy the Heinz bottle design have been unsuccessful, to date.
Indian Position on Trade Dress
The trademark law in India has undergone drastic reform resulting in the repeal of the Trade and Merchandise Act, 1958 by the Trademarks Act, 1999. This Act came into force in September 2003. The new Indian Trademarks Act, 1999 makes the Indian Law at par with international standards. The new Act recognizes service marks. It has done away with the system of maintaining the registration of trademark in part A and part B with different legal rights, and provide only a single register with simplified procedure for registration and with equal rights and provide only single register with simplified procedure for registration and with equal rights. The requirements for trade dress registration of a product are;
- It must be graphically represented.
- It must be distinct from others.
- It must be used in relation to goods or services from others.
- It must be in printed form.
In the case of the shape of goods registration of the trademark besides other criteria is still subjected to the provision of Section 9(3) of the Trademarks Act, 1999. Trade dress according to Blacklaw’s dictionary is an overall appearance and image in the marketplace of a product or a commercial enterprise. For a product trade dress ordinarily comprises packaging and labeling, whereas, for an enterprise, it typically comprises design and décor. If a trade dress is distinctive and non-functional, it may be protected under trademark law. It involves the total image of a product and may include features such as size, shape, color or color combinations, textures, graphics, or even particular sales techniques. A trade dress shall be distinctive i.e., easily recognized by the consumers. Trademark protection is accessible to both registered and unregistered trademarks, so the case will be the same with trade dress.
Another related issue is the relevance of type customers and nature of the product to decide the issue of confusion on account of similarity/ sameness of trade dress. Distinctiveness is one of the key aspects of the Indian trademark regime so the same applies to trade dress also. A trade dress shall be distinctive i.e., easily recognized by the consumers. Trademark protection is available to both registered and unregistered trademarks, so the case shall be the same as the trade dress. Trade dress can be protected as getup under the law of passing off in India. Passing off is a common law remedy for protecting unregistered Trademark. Viably it looks to secure the privileges of an individual or business, by shielding the altruism of that business from unfair trading by different gatherings. It keeps different gatherings from carrying on business or selling their items under a name, imprint, or depiction, which could delude the general population by confounding them to accept that the business/goods in question are those of the plaintiff. Fundamentally, passing off is associated with securing unregistered Trademarks. Getup, bundling, business procedure, showcasing methods, commercial topics, and so forth can likewise be secured under passing off. The demonstration accommodates passing off against utilization of comparative brand names of another which isn’t enrolled out which is exceptionally well known among the general population and there is a reasonable relationship of the Trademark and the item which people in general can without much of a stretch distinguish. Indian courts commonly have given their choice basing on the exchange dress factor of the item. These cases are talked about completely beneath.
This shows that one of the key ideas behind trade dress protection that is functional is also recognized under the Indian Trademark law. To decide the issue of the disarray of clients, the question emerges whether it is by and large similitude of exchange dress which is material or the issue is to be decided by comparing the distinguishing features.
Another issue related is the relevance of type customers and nature of the product to decide the issues of confusion on account of similarity/ sameness of trade dress. A trade dress shall be distinctive i.e., easily recognized by the consumers. Trademark protection is available to both registered and unregistered trademarks, so the case shall be the same with trade dress. The demonstration accommodates passing off activity against the utilization of comparative brand names of another which isn’t enrolled out which is extremely well known among general society and there is a clear association of the trademark and the product which the public can easily identify.
Before 2003, Indian Courts started recognizing the concept of trade dress. As an idea, trade dress may incorporate the plan of a cover page of a magazine, the visual appearance of a light, the plan of sports shoes, and so on that it may be a nonexclusive thought and an imaginative idea can’t be treated as an exchange dress. Indian Courts have offered insurance to exchange dress through precedent-based law cure “passing off”. ‘Package’incorporates any case, box, compartment, covering, organizer, container, vessel, coffin, bottle, ticket, reel, outline, case, cap lid.Hence the new definition of a trademark 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. It is interesting to note that the new Trademark Law 1999 has been expanded to include shape marks and color combinations as marks. Under this, a product package (including its color combination, size, shape, etc.) or a product design/ configuration (as shape mark) may be registrable as a mark. Nevertheless, passing off may give a decent option for protecting unregistered trade dress and the initiative has already started with the Colgate Palmolive Case[1].
In this case, the dispute was regarding the combination of the colors red and white. The Delhi High Court held that if the color of both the products would be the same then it will create confusion in the minds of the consumer with regards to the origin of the product. In the event that an ignorant shopper utilizes another item dependent on the actual appearance of the item then it adds up to making which is viewed as look like another gathering’s product, including registered or unregistered trademark.
The Delhi High Court in the case of Cadbury India Limited and Ors. v. Neeraj Food Products[2] held that the trademark “JAMES BOND” was physically and phonetically similar to the registered trademark “GEMS” of the Cadbury. The court further held the packaging of Neeraj food product to be similar to that of Cadbury and eventually Neeraj Foods was restrained from using said trademarks as the packaging to that of Cadbury. The plea was opposed on the grounds that Plaintiff has no trademark registration in the word “GEMS” nor can claim exclusive right in part or registered trademark. It was also stated that an action based on passing-off is a common law remedy which in essence is an action for deceit.
In the case of Parle Products(P) Limited v. J.P and Company[3], the respondent (J.P) launched a brand of biscuits similar to Parle G. Both the packings of the company’s product looked like having the same color, similar design, and size. So, the court’s order was against the Respondent which restrained them from using the same color, design, and size.
In another case known as Gorbatshow Vodka Kg v. John Distilleries Limited,[4] both plaintiff and defendant were Vodka Companies. defendant i.e., John made the same shaped bottle like plaintiff i.e., Gorbatshow which has a unique bulbous shape inspired by Russian architecture. The court held that this shape has a deceptive similarity which can cause confusion in the minds of the consumers, therefore the defendant was stopped from using the shapes of the bottle for selling the products.
US Position on Trade Dress
The Lanham Act protects trade dress in the US under Section 43(a), which states that artifice includes size, shape, color combination, and even substance. It is possible to register a trademark for a registered product as well as for an unregistered product. A trademark can be both a registered product, a word, or a combination of words, and another product, a word, or a combination of words that are not registered. Protecting trade dress is only allowed if it is exclusive, uncommon, or widely recognized.
A person violates section 43(a) of the Lanham Act if they use a word or combination of words or names, symbols, or other characteristics associated with the name of another, thereby creating confusion. Efficient feature of the product is not as per this act.
US distinctness is classified into generic, descriptive, suggestive, arbitrary, and fanciful categories. The standard trademark laws cannot protect generic terms since all vendors describe their products with generic terms. A major function of trade dress is to control unfair trade practices in addition to halting unfair practices.
To secure trade dress protection in the US, two essential criteria are “distinctiveness” and “non-functionality.”. A trade dress must be protected by following this criterion, or else compensation should be paid. If a Plaintiff claims for the infringement, it must prove below the three elements:
- The plaintiff possesses a protectable trade dress in a seamless design or amalgamation of idiosyncratic elements;
- The respondent trade dress generates misperception;
- If the respondent’s trade dress is not registered or enumerated, then the plaintiff must prove that the trade dress is not functional. If it is registered then the burden of showing functionally lies on the defendant.
The last point mentioned above is fascinating and to gratify it, the trade dress for safety must not be practical. the formation of shapes, designs, colors does not create any question in the minds of the customers. If the above three fundamentals for the trade dress are met, then two remedies are available-
- “Injunctive relief”
- “Money Damages”
Under section 43(a) of the Lanham Act, the ultimate test is whether the public is likely to be deceived or confused by the similarity of the marks. A possibility of misunderstanding scrutiny is, therefore, necessary for all section 42(a) infringement claims. Most circuits have developed some variation of the following factors in order to determine the possibility of misunderstanding:
- strength of the plaintiff’s mark;
- degree of similarity between the plaintiff’s and the defendant’s marks;
- the proximity of the products or services;
- the likelihood that the plaintiff will bridge the gap;
- evidence of actual confusion;
- defendant’s good faith in adopting the mark
- quality of the defendant’s product or service; and
- the sophistication of the buyers.”
Section 43(a) offers many types of analyses for determining the “likelihood of confusions”. Congress, through the “Trademark Law Revision Act of 1988”, substantially amended section 43(a) of the “Lanham Act of 1946” to read in pertinent part:
“(a) 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 is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin sponsorship or approval of his or her goods, services, or commercial activities by another person they shall be liable in a civil action by any person who believes that he or she is or likely to be damaged by such act.”
Under this amended statute, Congress’ intent for civil actions against any person, who acts to create misunderstanding between them in regard to goods or services, constitutes mercantile approval by another person and thereby damages a person that believes he is likely to be endangered by such an act. Plaintiffs, therefore, do not have to show that consumers are confused about the producer of the item, but rather that consumers recognize an association (joint venture) between a plaintiff and a defendant; or that the plaintiff approves of the defendant’s copy of the trademark.
A “reverse confusion” may be occurring where the defendant is pretending to be the owner of goods provided by the plaintiff. Section 43(a) provides the authority to pursue this activity. Accordingly, unless a plaintiff can establish that, based upon the total images of the plaintiff’s and defendant’s products, buyers will misunderstand an association or approval between the plaintiff and the defendant, then the plaintiff’s trade dress is infringed.
In the case of Wal-Mart Stores v. Samara Bros Inc.[5], as part of its advertising campaign in the U.S., Samara Bros had attire that included appliques for children. Wal-Mart, the defendant in the lawsuit, took pictures of those Samara products and ordered his suppliers to replicate them. As a result, he ordered his suppliers to produce Samara products. As a result, Samara sued Wal-Mart on the grounds that it violated section 43(a) of the Lanham Act since it had seized the unregistered trade dress.
For trade dress protection, the court found that packaging and design could have a secondary meaning. Therefore, Wal-Mart won the case because it proved that there are three essentials that the affected party must show in order to be able to recover for trade dress infringement:
- The trade dress must obtain secondary meaning (potential consumers);
- The trade dress of the two products is similar and confusing;
- The features of the trade dress are primarily non-functional”.
The trade dress infringement relating to passing off has been highlighted by various courts in the U.S. If the mark and packaging are more distinctive then it will be better to claim protection to trade dress.
In the case of Two Pesos v. Taco Cabana[6], the owner of a chain of restaurants, Two Pesos, brought this lawsuit. A bright color scheme, picturesque paintings, murals, plenty of patio areas, overhead garage doors, a stepped exterior with neon stripes, and colorful interiors teamed together to create the atmosphere of the eateries. Two Pesos, another competitor, used a similar interior design style. Taco Cabana was indicted, claiming infringement of trade dress.
Two Pesos infringed the trade dress of Taco Cabana by using its interior, as determined by the district court and the fifth circuit. This court upheld the decision of the district court and the court of appeals that the eateries in interrogation were intrinsically idiosyncratic, and no secondary meaning could be displayed. Generally, a court has noted that trying to impose secondary meaning upon intrinsically idiosyncratic trade dress would discourage individuals who are just starting a business and have not yet industrialized client recognition of the mark.
In another case known as Traffix Devices v. Marketing Displays[7], Marketing Displays, the respondent, filed a patent for a traffic sign that would not blow over in a gust of wind. The springs in the claims were far apart. There was a competitor who designed a sign with springs that were close to each other during the patent period. Under the doctrine of equivalents, Marketing Displays won the patent infringement action.
Consequently, Marketing Displays created a sign with two springs near each other. To prevent another trademark infringement, Traffix launched a competing sign. Traffix was sued by Marketing Displays, claiming the design had taken on a secondary meaning. Due to its functional aspects, the lower court ruled that the design was not protected by trade dress.
It was observed by the U.S. Supreme Court that a design or shape was functional only if denying it to competitors put them at a disadvantage. Furthermore, the court emphasized that when the patent covering the feature in question has expired, the party seeking trade dress protection must show that the feature in question is not functional. For example, showing that the feature is simply an ornamental element or a function-related feature of the device. In consequence, the lower court’s order was reversed.
The US v. India
There aren’t many differences between laws governing trade dress in these two countries. For example, in the United States, a trade dress has to be registered under a certain set of conditions, while in India trade dress has to be registered directly by the owner as it doesn’t get protection under the Trademarks Act. In India however, it is possible to register certain features of a product, such as the combination of colors, shape, etc. Meanwhile, the trade dress protection system in the United States is well established, whereas in India the trade dress protection isn’t yet recognized. The common law doctrine that prohibits ‘unfair compensation’ can be traced back to both countries’ trade dress protection. Although trade dress originates from the U.S., similar laws exist in other countries.
Like U.S. law, Indian law does not include a separate section dealing with trade dress under its trademark legislation. It was enacted in September 2003 that the Trademarks Act of 1999 recognized the concept of trade dress and provided the statutory foundation for trade dress to be protected under Indian trademark legislation. Trade dress is recognized by the amended Trademarks Act, 1999 under Section 2(1)(ZB), which provides that trademarks can include the shape, packaging, coloration, and other features of a product.
Additionally, Section 2(1)(m) of the Act defines what a mark is as including a device, style, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colors. According to Section 2(1)(q) of the Act, the term “package” includes any case, box, container, covering, folder, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, lid, stopper, and cork.
As to Seven Towns Ltd v. Kiddiland[8], the owners of Seven Towns Ltd are the worldwide owners of the trademark RUBIK as well as the trade dress associated with Rubik’s Cube. Trade dress for sale of cubes was alleged to infringe the plaintiff’s legal rights In the plaintiff’s ‘artistic work,’ alleged copyright infringement is misplaced. If two products are to be compared for trade dress considerations, the general look, appearance, and general idea or impression left in the minds of the consumers must be considered. Prima facie, the plaintiffs made a compelling case. Likewise, the plaintiffs are in the best position from a convenience standpoint.
For approximately five years and nine months, interim orders have been in place against the defendant’s operation. Plaintiffs would have suffered irreparable harm if the interim order was not passed. Various elements of goodwill a commercial organization must take into account when passing off include trade dress and get up, packaging, label, etc. Plaintiffs could establish a strong case of passing off as there is no justification given by defendants as to how similar trade dress hit upon them. It is evident that on the date of adoption they must be aware of the game of placing trace of plaintiffs. Otherwise, no one could have a similar trade dress/color combination and layout. Plaintiffs are therefore entitled to infringement as prayed for the trade dress.
According to the plaintiff’s claim in Claudio De Simone v. Actical Pharmaceutical[9], De Simone Formulation is a patented product, which the defendants are alleged to have passed off. Despite this, De Simone Formulation is being alleged to have held patents in India that are not recognized by the court system as patents granted to De Simone Formulation under U.S.A. law. Patents have no common law rights as plaintiffs claim De Simone Formulation does. Instead, only by statute (Patents Act 1970), the rights in an invention are granted, but unlike trademarks, more or less for a limited period of time.
The asserted right of working patent separated from the patent was not found to be valid. Plaintiff no. 1 did not possess any right in the De Simone Formulation without obtaining a patent with respect to that formula, so the issue of plaintiffs being able to interfere with the development of the formula or from claiming their product to be the same as theirs does not arise. Due to this, plaintiffs’ claim that defendants caused harm to the public by misrepresenting the facts is in the public interest and without any personal rights. The plaintiffs are not individuals and derive no personal benefits from the proceedings; however, they are entitled to operate as public interest litigants and may file a Public Interest Litigation.
Permanent measures like injunctions are governed by the Specific Relief Act, 1963, and therefore do not need to be ruled as general remedies, since the specific relief law governs specific measures. As of the day when the suit was brought before the court, plaintiffs have not been able to clear any doubts as to its validity. There were no grounds for relief claimed in the lawsuit, so it was dismissed.
Conclusion
The purpose of this study was to differentiate the comparative study of trade dress protection in India and the United States, based on the beginning of the project. It does not appear that there are any significant differences between the laws of trade dress protection. One of the pertinent reasons is that in the USA, trade dress gets registered with certain conditions, however, in India, the Trademark Act does not recognize Trade dressed as a trademark, hence it does not get protected. Trade dress, however, has certain aspects that are protected, such as color combinations, shapes, and packaging.
Previously, trade dress was acknowledged in some cases. As far as trade dress protection is concerned, the United States has a very strong position. Additionally, the recognition of trade dress in India is also advancing. As the name suggests, it relates to the product’s appearance. In contrast, trademarks deal with words, logos, phrases, emblems, and the like, which are placed on products to distinguish them. This appearance identifies the manufacturer of the product. Using passing off as a means of protecting trade dress gives businesses goodwill. To ensure that the untouched aspects of distinctiveness remain intact in the face of growing competition, trade dress provides a new forum.
References:
[1] Colgate Palmolive and Company vs. Anchor Health and Beauty, ‘2003 SCC Online Del 1005’
[2] 2007 SCC Online Del 841
[3] 1972 1 SCC, 618
[4] 2011 SCC Online Bom 557
[5] 529 U.S. 205 (2000)
[6] 505 U.S. 763, 112 S. Ct. 2753 (1992)
[7] 532 U.S. 23
[8] (2016) SCC Online Del 5168
[9] (2020) SCC Online Del 476
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