Trade dress is overall commercial image of a product that identifies the product and its source and distinguishes it from other products. Might include the shape/design of the product, product leveling and packaging, decor or the environment in which the service is provided, size, shape, colour, texture, product configuration etc. Packaging of every product will be different which is likely to be unique to his trade.

The illiterate consumers will differentiate the product basing on the packaging. The colour of the product also gives the product a distinct identity altogether. These are the elements of the product which makes the product distinct. It basically deals with the physical appearance of the product.

These are different from trade mark in the way that trade mark deals with words, logos, phrases, emblem etc which are affixed on the product in order to identify the product from other and trade dress is the appearance of the product which is used to identify the producer. It is the way in which the product/service is presented to the consumer. This concept was first recognised in U.S. Trade dress should be non functional in order to get protected legally. In this project the law related to trade dress protection will be examined in India and U.S.

Objective
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.

Trade dress can be secured for the shape of the bottle of the soft drinks, shape of the furniture, and now also the lay out 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.

Trade Dress Protection: Position India

In India there is no particular definition of trade dress protection under trademark act 1999. But with the gradual development in intellectual property laws India is now at par with international standards. The new amendment recognizes trade dress protection through the new definition of Trade Mark which comes under Section 2 of the Trade Marks Act[1]: Sec 2 of the Trade Marks Act gives the following definition such as:
(zb) trade mark is defined as 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.

(q) Package includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, and lid, stopper and cork.

(m) 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.

Hence the new definition of trade mark under Indian law comprises all the elements of the trade dress as under U.S. law. The Indian courts have been recognizing the concept of trade dress from even before 2003.

In case of shape of goods registration of the trademark besides other criteria is still subjected to provision of subsection (3) of section 9 of the Trademarks Act, 1999, which reads as follows
(3) A mark shall not be registered as a trademark if it consists exclusively of

• (a) The shape of goods which results from the nature of the goods themselves; or
• (b) The shape of goods which results from the nature of the goods themselves; or
• (c) The shape of goods which gives substantial value to the goods.[2]

This shows that one of the key ideas behind trade dress protection that is functionality is also recognised under Indian Trade Mark law.

In order to determine the issue of confusion of customers, question arises whether it is overall similarity of trade dress which is material or the issue is to be decided by comparing the distinguishing features.

Another related issue is the relevance of type customers and nature of product to decide the issue of confusion on account of similarity/sameness of trade dress. Distinctiveness is one of the key aspects in Indian Trade mark regime so the same applies to trade dress also. A trade dress shall be distinctive i.e. easily recognised by the consumers. Trade mark protection is available to both registered and unregistered trademarks, so the case shall be same with trade dress.

The act provides for passing off action against use of similar trademarks of another which is not registered out which is very popular among the public and there is a clear association of the trademark and the product which the public can easily identify. Indian courts at many times have given their decision basing on the trade dress factor of the product. These cases are discussed thoroughly below.

Cases Supporting The Indian Position

Hon’ble Supreme Court of India laid down the parameters for comparison between two marks in Parle Products (P) Ltd. v. J.P. & Co.[3], Mysore, and 1972 AIR 1359. In this case, the packets of biscuits manufactured by the appellants and respondents were practically of the same size, the color schemes of the two wrappers were almost the same, and the designs on both, though not identical, bore such a close resemblance that one could easily be mistaken for the other.

The Supreme Court lay down that for deciding whether one mark is deceptively similar to another, the broad and essential features of the two have to be considered. They are not to be placed side by side to find out differences in the designs and it would suffice if the mark bears an overall similarity to the other. After all, an ordinary purchaser is not gifted with the powers of observation of Sherlock Holmes.

In Vicco Laboratories vs. Hindustan Rimmer 1979[4], the concept of imitation of trade dress was asserted even when there was no deceptive similarity between the marks. In this case, both expressions ‘trade dress’ and ‘fact get-up’ were used and the court ruled that despite two marks 'Vicco' and 'Cosmo' used by the plaintiffs and defendants respectively were no doubt different and the mark 'Cosmo' by itself was not likely to deceive but the entire get-up and the color scheme of the tube and carton adopted by the plaintiffs and the defendants were identical in every detail and were likely to confuse and deceive the customer easily.

However, later on Division Bench of High Court of Delhi in Kellogg Company v. Pravin Kumar Bhadabhai, 1996[5], rejected the contention of similar get-up or trade dress. The dispute related to the plaintiff's sale of cornflake with cartons having the description inscribed as KELLOGG'S CORNFLAKE. The respondent was selling cornflake using a carton more or less similar in size, but with the title AMIS ARISTO CORN FLAKES written just at the place where the appellant's display the words KELLOG'S CORNFLAKE. The Division Bench came to the conclusion that the principal of fading memory or imperfect recollection should not be pressed too far and the goods in question sold to people belonging to middle class or upper middle class, who are fairly educated, has to be tested accordingly.

The judgment in Kellogg Company's was considered controversial and it was doubted whether it correctly reflected the position of law on this aspect.

This controversy has arisen on account of the fact that the principles laid down in Kellogg Company's case were based on the dictum of Lord Halsbury in Schweppes Ltd.'s case wherein a reference was made to a customer who was so careless that he did not look and treated the label fairly, but took the bottle without sufficient consideration and without reading what was written very plainly. Such a customer was held not a person who would form the basis of a test for passing off.

However, this dictum was a departure from the settled law of the Supreme Court of India in relation to passing off matters that the case of passing off has to be decided on the comparison of broad similarities and the test is always from the point of view of an unwary purchaser.

Thereafter, in S.M. Dyechem Ltd. v. Cadbury (India) Ltd. 2000[6], the dictum of Lord Halsbury was relied upon and it was laid down that in case of an infringement or passing off, the broad dissimilarities need to be compared.

In ITC Limited v Britannia Industries Limited[7], the Delhi High Court considered the issue of unregistered trade dress in relation to biscuit packaging. ITC filed the suit for passing off to safeguard its rights in the yellow and blue packaging of Sun feast Farmlite Digestive – All Good biscuits and restrain Britannia from using a deceptively similar trade dress for its Nutri Choice Digestive Zero biscuit packaging. The court granted the injunction; however, the Division Bench reversed the order on appeal. It held that within a six-month lifespan, the yellow and blue colour combination had not become distinctive of ITC so as to claim exclusivity and prevent competitor use.

In the case of Colgate Palmolive & Co. V Anchor Health and Beauty Care Pvt. Ltd.[8] the combination of the colour red and white was in dispute. It was held that when the colour combination, packaging, shape of container of both the product is same then consumer confusion will be higher with regard to the origin of the both the product. If an illiterate naive customer uses another product basing on the physical appearance of the product he has been using it amount to passing off.

In other words if the first look of the item without going into the infinitesimal details of the colour combination, getup or lay out appearing on the container and packaging gives the inkling o deceive in respect of these ingredients, it is a case of confusion and amounts to passing off one’s own goods as those of the other with a view to encash upon the goodwill and reputation of the latter.

In another case, Cadbury India Limited and Ors. v. Neeraj Food Products[9] 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 the case of United Distillers Plc v. Jagdish Joshi[10] & others the plaintiff was the owner of trademark Johnnie Walker for Scotch whisky. The defendants were manufacturers of Johnnie Walker Gutka. The plaintiffs sued the defendants for infringement of trademark and trade dress. The court held that the trade dress used by the defendant has a similarity with the trade dress of the plaintiff and had infringed the same.

In the case of L’Oreal India Pvt. Ltd. and Anr. Vs. Henkel Marketing India Ltd. and Anr.[11] The packaging of L’Oreal products GARNIER- COLOUR NATURALS and the product of Henkel Marketing India Ltd, Palette-Permanent Natural Colours was alleged to be identical. L’Oreal instituted proceedings for passing-off arguing that it was a substantial reproduction and/or colourable imitation of L’Oreal label/trade dress.

The court emphasized on the deceptive similarity between the trade dresses of the two products which could create confusion in the minds of the consumers. It was held that, since the trademark of both the products was clearly inscribed in the respective trade dresses, there was no chance of confusion among the consumers who are mostly from the middle class or upper middle class. Thus, trade dress infringement was not made out and L’Oreal lost the proceedings.

Trade Dress Protection: U.S. Position

In the US the basis of trade dress protection is enshrined in section 43(a) of the Lanham Act. Now, trade dress is defined as a product’s total image or overall appearance and may include features such as size, shape, colour or colour combinations, texture, graphics or even certain sales techniques. Trade dress is available to both registered and unregistered trade dress. If the trade dress is unregistered, the basis for protection is section 43(a) of the Lanham Act which provides protection for any word, term, name, symbol, or device, or any combination thereof used on or in connection with any goods or services, or any container for goods.

It provides for civil action against any person who uses any word or combination of words, term, name, symbol or device associated with any goods or services belonging to another so as to cause confusion or deception with respect to the origin of the concerned goods or services. It also provides that in a civil action for trade dress infringement for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.

Functional feature of a product is not protected under the act. As regards the element of distinctiveness marks under the US law may be classified as generic, descriptive, suggestive, arbitrary or fanciful marks are entitled to trademark protection, unlike in Indian law, because of their intrinsic nature to identify a particular source of a product.

Generic marks cannot be protected as trademarks because the number of such appropriate terms is limited and all merchants should be equally allowed to use such terms to describe their own goods when competing for customers. Distinctiveness and non functionality are the two main criteria for giving trade dress protection in US. A plaintiff asserting a claim for infringement must plead and prove the below three elements.

1. The plaintiff owns a protectable trade dress in a clearly articulated design or combination of elements that is either inherently distinctive or has acquired distinctiveness through secondary meaning, i.e., buyer association of symbol with source.
2. The accused mark or trade dress creates a likelihood of confusion as to source, or as to sponsorship, affiliation or connection. This element does not rest on whether the defendant’s package or trade dress is identical to plaintiffs; rather, it is the similarity of the total overall impression that is to be tested.
3. If the trade dress is not registered, the plaintiff must prove that the trade dress is not functional. If the trade dress is registered, the registration is presumptive evidence of non-functionality, and the burden of showing functionality is on the defendant. The third prong is interesting, and to satisfy it, the trade dress seeking protection must not functional. That is, the configuration of shapes, designs, colours, or materials that make up the trade dress in question may not serve a purpose or function outside of creating recognition in the consumer’s mind. If the above three elements for trade dress infringement are met, two remedies are available: injunctive relief (a court order restraining one party from infringing on another’s trade dress) and/or money damages (compensation for losses suffered by the injured party).

Cases Supporting Position of The U.S.

In the case of Two Pesos v Taco Cabana[12], Two Pesos owned a growing chain of restaurants. The restaurants featured bright colours, paintings, murals, interior dining, patio areas, and overhead garage doors to separate the interior areas from the exterior, stepped exterior of the building and neon stripes on the building. Two Pesos was a competing chain that adopted a similar design.

Taco Cabana sued, arguing trade dress infringement. The district court and fifth circuit found the Taco Cabana design to be trade dress and to be infringed by Two Pesos. The court upheld the conclusion of the district court and court of appeals that the restaurant design in question was inherently distinctive and thus required no showing of secondary meaning. The court noted that to require secondary meaning in the case of an inherently distinctive trade dress would penalize persons just starting a business who have not yet developed customer recognition of their mark.

In another case Wal-Mart Stores v Samara Bros, Samara[13] produced a line of children’s clothes decorated with appliqués and marketed the clothes in the U.S. through retail department stores. Wal-Mart sent a series of photographs of Samara products to its overseas supplier with instructions to produce copies. The supplier did so, and the copies were sold at Wal-Mart stores. Samara sued Wal-Mart, alleging among other things infringement of unregistered trade dress under Lanham Act, section 43(a). The court made a distinction between product packaging and product design and stated that ambiguous trade dress should be classified as product design requiring a secondary meaning to be entitled to trade dress protection. Thus, the court was in favour of Wal-Mart.

In the case of Traffix Devices v. Marketing Displays[14], Marketing Displays held a patent on a traffic sign with two springs that would not blow over in the wind. In the claims, the springs were far apart. During the term of the patent, a competitor introduced a sign where the springs were close together. Marketing Displays won the patent infringement action under the doctrine of equivalents. Subsequently, Marketing Displays marketed signs with two springs close together.

The patent expired and Traffix introduced a competing sign. Marketing Displays sued Traffix and argued trade dress protection as the product design has acquired secondary meaning. The lower court held that since the design was functional it could not be given trade dress protection.

However, the US Supreme Court observed that a particular design/shape is said to be functional only when by denying it to the competitors, they are placed at a disadvantageous position. The court further said that where the expired patent claimed the feature in questions, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional; for instance, by showing that it is merely ornamental, incidental, or arbitrary aspect of the device. Thus, it reversed the order of the lower court.


Conclusion
There is not a lot of difference between the laws of trade dress protection in both these countries.

One of the major difference is in US trade dress gets registered giving certain conditions while in India the Trade Mark Act does not recognise the term Trade dress Protection as a result of which it does not get protection under the act. However certain features of trade dress gets protection such as colour combination, shape, and packaging of a product can be registered.
In some cases as mentioned above the concept of trade dress has been recognised. U.S. has a very strong stand point in case of trade dress protection. However India is also progressing in recognizing trade dress protection.


End-Notes:

1. The Trade Marks Act, 1999, s. 2.
2. The Trade Marks Act, 1999, s. 9.
3. Parle Products (P) Ltd. v. J.P. & Co 1972 AIR 1359 1972 SCR (3) 289 1972 SCC (1) 618
4. Vicco Laboratories vs. Hindustan Rimmer AIR 1979 Del 114
5. Kellogg Company v. Pravin Kumar Bhadabhai, 1996 PTC (16) 187
6. S.M. Dyechem Ltd. v. Cadbury (India) Ltd. AIR 2000 SC 2114
7. ITC Limited v Britannia Industries Limited IA No.10139/2016
8. Colgate Palmolive & Co. V Anchor Health and Beauty Care Pvt. Ltd. 2009 (40) PTC 653 (Mad.).
9. Cadbury India Limited and Ors. V. Neeraj Food Products, 142 (2007) DLT 724.
10. United Distillers Plc v. Jagdish Joshi, 2000(88) DLT 142.
11. L’Oreal India Pvt. Ltd. and Anr. Vs. Henkel Marketing India Ltd. and Anr. 2005 (6) BomCR 77.
12. Two Pesos v Taco Cabana, 505 U.S. 763 (1992).
13. Wal-Mart Stores v Samara Bros., 529 U.S. 205 (2000).
14. Traffix Devices v. Marketing Displays, 532 U.S. 23 (2001).