Trade Dress Protection-Comparative Study Of The Global And Indian Position
Arjun Garg and Alfred Aaron Joseph
20 Jan 2022 5:32 AM GMT
Image Source : Legal Zoom
What is a Trade Dress?
Trade Dress refers to a product's visual appearance, such as packaging, form, and colour combination, that competitors can register or protect in terms of their company and services. It aids consumers in recognizing the product and distinguishing it from others; it also aids an illiterate consumer in distinguishing the goods based on their packaging. The United States was the first to recognize this notion. The new Trade Marks Act of 1999, which was primarily based on the English Trademark Act of 1994, which acknowledged the notion of trade dress along the lines of The Lanham Act, went into effect in September 2003.
Essentials of a trade dress
- It covers features such as form, size, colour, texture, and product configuration.
- A product's packaging is likely to be one-of-a-kind.
- The product's colour also offers it a particular identity.
Why should Trade Dress be protected?
Customers purchase goods because they like them. Customers are guided to purchase their favorite goods based on the aesthetic look of the product. Even well-informed shoppers have trouble distinguishing between two similar-looking items. Trade dress should be safeguarded for these reasons. To avoid customer misunderstanding when shopping and to defend the interests of real producers, trade dress should be maintained. In addition, the items should be distinct from others.
Trade Dress protection in India.
The Trademark Act of 1999 in India does not provide a detailed definition of trade dress. However, owing to changes in Intellectual Property Laws, a new Amendment recognized trade dress protection under Section 2 of the Trademark Act through a revised definition of a trademark. Businesses are prohibited from duplicity or imitation under both state and federal laws. According to Section 2 of the Trademark Act, a trademark is a graphical representation and overall look of a product that differentiates one person's products and services from those of others, such as the form of items, their packaging, and colour combinations. The terms "package" and "Mark" are also defined in this section. Any box, container, vessel, bottle, or other container is considered a "package." A "mark" can be a device, a branding, a ticket, a signature, the structure of items, or a colour combination.
The common law of passing off protects trade dress, which includes the shape of items, their packaging, and colour combinations, among other things, as outlined in Section 2 (zb) of the Trademarks Act 1999. To be eligible for protection, the product's entire look or image must be distinctive, either naturally or by the acquisition of distinctiveness. The definition of a trademark under section 2 (zb) states that "trademark" means 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 the shape of goods, their packaging, and combination of colours.
Indian Case laws
In the case of Colgate Palmolive and Company Vs. Anchor Health and Beauty, 2003, the dispute was over the colour combination of red and white. The Court stated that if the colour of two items is the same, the buyer will be confused about the product's origin. It is considered passing off if an uneducated customer purchases another product based on its exterior look.
In the Cadbury India Limited Vs. Neeraj Food Products,2007, There was a trademark conflict over the name JAMES BOND, which was similar to Cadbury's GEMS. The term JAMES BOND is visually similar to Cadbury's registered brand GEMS, according to the Court. The High Court also found that Neeraj Foods' packaging is identical to Cadbury's. The Court stated that the resemblance of trade dress could be phonetic, visual, or in the basic idea of the plaintiff's mark. As a result, Neeraj Foods was forbidden from using such packaging since it resembled Cadbury's.
In the case of Pidilite Industries Limited Vs. Poma-Ex Products, 2017, the issue was in an Infringement of the Plaintiff's mark "FEVIKWIK" by the Defendant's mark "KWIKHEAL" The Court agreed with the Plaintiff that the Defendant's product packaging was likely to create public misunderstanding because both the items' packaging was identical.
In Christian LouboutinSas Vs Mr. Pawan Kumar &Ors, 2016, the Delhi High Court deemed the designer's 'Red sole' a well-known trademark, addressing the issue of infringement of trademark "Red Sole" belonging to high-end luxury shoe brand Christian Louboutin. It was also the first time that a court in India has recognized a trade dress.
Trade Dress Protection in the European nations
In the EU, "trade dress" is primarily comprised of three tools: 3D trademarks, Designs, and Copyright. EU three-dimensional trademarks give the most effective protection since they are renewed for an indefinite amount of time and cover a wider subject matter.
In the United Kingdom, a product's trade dress is typically protected under the common law doctrine of passing off, which requires proof of goodwill, misrepresentation, and loss.
In Russia, trade dress can be protected as a trademark or an industrial design, or both in some situations. There is no precise definition of 'trade dress' in the Russian Civil Code or any legislative rules or official recommendations. The visual appearance or packaging of a product, including labels, can be protected as a trademark or an industrial design in Russia.
Trade Dress Protection in China
According to Chinese laws, trade dress refers to an article's whole appearance, which is commonly referred to as "look and feel." China does not give specific protection for trade dress. China does not provide for the registration of trade dress, but it does allow for enforcement under unfair competition laws. This is different from trademarks, which are recognized under Chinese law and may be registered.
Trade Dress Protection in the US
In the United States, trade dress is protected under the Lanham Act, which states that trade dress is defined as the overall appearance of a product, including size, shape, colour combination, and other factors. Trade dress protection is available for both registered and unregistered trade dresses. The Lanham Act protects anybody who exploits any words or combination of words, terms, title, symbol, or other item connected with another's goods to induce misunderstanding. This legislation does not cover a product's functional features. The two most important criteria for trade dress protection in the United States are distinctiveness and non-functionality. If this requirement is not followed for trade dress protection, then compensation should be offered to the aggrieved party.
The appearance of a product is referred to as trade dress. It differs from a trademark in the way that a trademark deals with words, logos, slogans, emblems, and other symbols that are placed on a product to distinguish it from others. The look of a product to identify the manufacturer is known as trade dress. Trade dress can be protected under common law by passing off, which gives enterprises goodwill.
The colour schemes and product packaging are critical factors in making a final selection about which goods to purchase on the market. Courts have been cautious in attributing the increasing prominence of trademarks and trade dress.With increased market rivalry, trade dress provides a new platform for the protection of goods and services, allowing customers to make more informed decisions while maintaining the producers' goodwill.
About the Authors - Arjun Garg is Co-founding Partner, GSL Chambers. Alfred is 4th year student of law from the School Of Law Christ University and an Intern with GSL Chambers. Views are personal.
1. THE TRADE MARKS ACT, 1999
2. Colgate Palmolive and Company Vs. Anchor Health and Beauty, 2003 SCC OnLine Del 1005
3. Cadbury India Limited Vs. Neeraj Food Products, 2007 SCC OnLine Del 841
4. 2017 SCC OnLineBom 7237
5. 2017 SCC OnLine Del 12173
6. https://www.bugnion.eu/en/trade-dress-in-the-european-union-dealing-with-shapes-and-appearance/
7. https://ink.library.smu.edu.sg/cgi/viewcontent.cgi?article=4581&context=sol_research
8. https://www.chinabusinessreview.com/design-patents-vs-trade-dress-protecting-ip-in-china/
9. https://www.worldtrademarkreview.com/portfolio-management/russia-choosing-the-right-protection
10. https://www.mondaq.com/india/trademark/689348/protection-of-trade-dress-developing-jurisprudence
