Can Looks Influence Choices: Trade Dress Law

Author : Drivya jain

Bygones are  the days of wrapping or packaging the item in a newspaper. 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. It has been observed that visual representations are more likely to create long lasting impressions in the human mind as compared to other modes of representations. Nowadays, businesses pay equal attention to the wrapper , quality of paper used in packaging , the colours used, the font style for mentioning the details of the product, the shape of container etc as they pay to the quality of the product. There are instances where we bought the new product based on its unique packaging, colourful design or different appearance irrespective of whether we need it or not.  It is the visual appearance of the product that guides the customers to buy their preferred product. This entire get up of the product is known as Trade Dress.

{The Article elaborates on the line - trade dress, trade dress meaning, trade dress intellectual property, trade dress protection, trade dress law}. 

In this competitive era , where the brand name carries high stakes, trade dress plays a vital role in gaining market share for the product and therefore chances are that product may be pirated, duplicated or counterfeited resulting in spoiled brand image of the manufacturer. Considering the fact that exterior looks of the product can leave an impression on the consumers and has the potential of increasing business, the importance was felt to accord protection to appearance of the product so that no competitor can be unjustly enriched. Therefore the concept of trade dress was recognised. This article will discuss the meaning and essentials of trade dress, reasons for enhanced scope and  the steps to register trade dress in India.  

{The Article elaborates on the line - trade dress, trade dress meaning, trade dress intellectual property, trade dress protection, trade dress law}. 

Trademark is that form of Intellectual property right which affords protection to the unique design , logos , name , sign , pictorial representation, combination of colours etc which has given a separate identity to the product in the market. For Example Right mark of Nike, M of mcdonalds are all the registered trademarks. Trade dress is that branch of trademark which specifically covers the visual appearance of the product which includes the product shape, packaging or any colour combinations which has rendered a distinctive feature to the product. In other words, the trade dress is ‘Get Up’ of the product which helps in creating a unique identity in the minds of consumers. For instance, the purple wrapper packaging used by Cadbury is its registered trade dress. The entire skincare and hair care range under the brand ‘Biotique’ is packed in green containers which represents the product relativity with nature. Infact companies these days often choose the packaging which can provide the gist of the ingredients used in the product. The red sole of Christian Louboutin, the coca cola bottle, the tin shape of Rajnigandha tobacco are some of the examples of registered trade dress 

{The Article elaborates on the line - trade dress, trade dress meaning, trade dress intellectual property, trade dress protection, trade dress law}. 

The concept of trade dress first originated in the United states. Like Trademarks, trade dress is protected by the Lanham Act in the US . Section 43(a) of the act specifically states that, if any person uses 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 in respect or any goods , service or packaging, which is likely to create confusion, mistake or deception as to the origin of the product, such person shall be liable in a civil action. The person whose trade dress right has been infringed can file for infringement in the court of law. In India, the trade dress is not accorded any special protection which means there is absence of separate law relating to the trade dress infringement. The trade dress has been covered under the meaning of trademark as prescribed in Trade Mark Act 1999. “Trade mark 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 shape of goods, their packaging and combination of colours”. "Package" includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork.  Mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. The jurisprudence of trade dress in India has been devised by the High courts of the states through their unprecedented decisions. Trade dress infringement is not similar to trade mark infringement. {The Article elaborates on the line - trade dress, trade dress meaning, trade dress intellectual property, trade dress protection, trade dress law}.  

Let’s have a quick look at popular decisions of the Hon'ble Courts providing a common law remedy of passing off the plaintiff .

 “In the case of Cadbury India Limited and Ors. V. Neeraj Food Products, the Hon’ble High Court of Delhi explained the difference between passing off action and an action for trade mark infringement  as “infringement is statutory remedy while passing of is common law remedy which has wider scope. The use of the trademark of the plaintiff, by the defendant, is also a prerequisite in the case of an action for infringement while it is not a necessity of an action for passing off .In case of passing off of trade mark, the defendant may escape liability if he can show that the material added by him is sufficient to distinguish his goods from that of the plaintiff's goods passing off doctrine operates on the general principle that no person is entitled to represent his or her business as the business of another person. The said action of deceit is maintainable for diverse reasons other than that of registered rights which are allocated rights under the Act” 

“In the case of “Gorbatschow Wodka v. John Distilleries, one of the premium brands of vodka which has a unique bulbous shape bottle which has acquired unique distinctiveness and goodwill over the years sued John Distillers, an Indian company who presented a product called “Salute Vodka” with an identical shape as that of Goratschow Wodka. The Court agreed that the shape of the bottle presented by John Distilleries in the market is deceptively similar and that it would harm the goodwill of Goratschow Wodka. The court held that “the distinctive shapes of products and their packaging can be accorded trademark protection and registered as trademarks”.

“In Colgate Palmolive and Company Vs. Anchor Health and Beauty, 2003, colgate files infringement suit against anchor as the defendant is using the red and whte colour for packaging of its product which was used by colgate since 1951. The defendant contended that colgate is using white and red for tooth powder only and not for all its products therefore this is not infringement.The Court held that if the colour of both the products would be same then it will create confusion in the minds of the consumer with regards to the origin of the product. If an illiterate consumer uses another product based on the physical appearance of the product then it amounts to passing off”

“In Parle Products(P) Limited Vs. J.P and Company,1972, J.P launched a brand of biscuits which was similar to ParleG. Both the packings of the company’s product looked like having the same colour, similar design and size. The Court held that it has deceptive or misleading similarity, both the packages cannot be kept side by side and cannot be compared. It creates confusion in the minds of the consumers and is not distinct from others”.

The trade dress has been obtained by restaurants for the atmosphere created by its decor and  novel way it provided a buffet service.( Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). The Coca-Cola bottle as well as the Haig & Haig Scotch whiskey bottle obtained trade dress for the bottle design. Toy models of the Ferrari 365 GTB/4 – the design of such toys is protected by trade dress. (Ferrari SpA v. McBurnie). 

Thus we can say that the purpose of protection of  trade dress is twofold which is as follows:
1) To safeguard the interest of consumers and buyers from getting delusioned  from  packaging or appearance of products that are designed  to imitate other products. If two products have similar packaging and belong to a similar category then there are chances that consumers may end up buying the fake product and this can spoil the original  brand name and reputation.
2) To protect the interest of business and avoid duplicacy of products.

The courts through various judgements have held that in order to qualify for trade dress protection, the appearance should be unique and not used by anyone in the past. It should not in any way create confusion in the mind of buyers about the identity of the product. The overall appearance of the product shall not be discriminatory to any section of the society and shall be in consonance with the uses of the product. Most importantly it should be non functional and shall be able to indicate the source of the product. The law does not prescribe a separate procedure to register the trade dress. The application as made for trade mark registration, shall be used for trade dress also. However , try avoiding the mistakes that are being made by most of the businesses intent to get a trade dress register which include the haste decision making. Give some time to the product to make its way in the heart and mind of the consumers and become consistent in their shopping bags, only then go for its registration. Be sure about the distinctive look.

Over decades there have been many debates over the protection of designs under IPR. Often a question arises that when there is specific law for design protection then why we have covered it under trade dress. Though designs act and trade dress is perceived to overlap but there are some lines where these two areas differ. Design patents provide a limited term of protection for the visual, non-functional characteristics of a product. Design patents can cover a shape, color, and pattern of an entire product or only a portion of a product. Design patents are usually granted for a limited period of time whereas trade dress has no time limit. Design patents are obtained before the product is introduced to the public in comparison to trade dress protection which can only be claimed once the product has reached the public and created its own identity which becomes directly proportional to the economic stability of the product. Trade dress protection can only be obtained for non-functional designs. In case of “Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (7th Cir. 2010), the plaintiff tried to claim protection for round shape of beach towel , which court declined on the grounds that it is functional aspect and not promotional and therefore cannot be protected” the functionality of the product is an important factor that court considers in trade dress claims. Functionality seeks to determine whether a trade dress is primarily used to make the product or service unique and easy to identify, or whether it is connected with customer demands or expectations of the product.

It takes years and sometimes a  lifetime to build the goodwill and reputation of the brand and producer.  Whether the manufacturer is known through its product or product is known through its manufacturer, is still debatable. However, after exploring the trade dress from all sides, we can conclude that indeed trade dress is playing a crucial role in product marketing, branding and increasing goodwill . If two products have similar outlook, then this will create confusion in the mind of manufacturers. Have you ever just picked a yellow packet of noodles assuming it to be Nestle Maggie and realising later that it belongs to some other manufacturer. This big a role, an outlook plays in product image. Indian laws are vague on trade dress laws and do not provide a complete guide to deal with infringement. This is the reason that free riders openly sell duplicate products of almost all big brands, however only a few manufacturers could take action. An attempt shall be made to make the laws more stringent, clearer and outreached, only then the purpose could be achieved. Therefore it is important for the judiciary to lay down guidelines for trade dress infringement which can be used as precedent. 

{The Article elaborates on the line - trade dress, trade dress meaning, trade dress intellectual property, trade dress protection, trade dress law}.