ISSUE VI : Trade dress: Protection in India and US

INTRODUCTION

Trademark rights have gained considerable importance in today’s world and riding on another’s reputation and goodwill attached with a trademark is a crime. Therefore, intellectual property rights law, worldwide, has provided for infringement and passing-off action against such a crime. Various courts of the world, while deciding in an infringement/passing-off action, have established that when colours are involved in a particular mark, regard must be had to the other features of the mark as well which constitute the overall appearance of the product since that allows customers to buy a product in their best judgement1. This overall appearance of a product is termed as “trade dress”.

“Trade dress” though originated in the US, law relating to it can be traced to the common law doctrine prohibiting unfair competition. The meaning and connotation of “trade dress” is growing. The scope of its definition has also been expanded to include hotel design, virtual trade dress etc.

The present bulletin revolves around the concept of “trade dress” in the Indian context, the need for its protection and its comparison with the US law.

1. What is a trade dress?

Simply put, “trade dress” is the arrangement of identifying characteristics or decorations connected with a product, whether by packaging or otherwise, intended to make the source of the product distinguishable from another and to promote its sale. In essence, “trade dress” is a company’s image within the marketplace. For instance, the packaging of a Mc Donald burger, the shape of a Coca-Cola bottle, cover design of a magazine, design of a door knob, appearance of a water meter or a lamp, design of a sports shoe, distinctive performing style of a rock music group, etc. form a part of “trade dress.” Even the theme of a restaurant has been held to be a “trade dress” by the US Supreme Court.2

The appearance of a product is dependent on the nature of the trade. Accordingly, “trade dress” can include the various characteristics of the product traded, the techniques of sale and host of other things which form the entire business of the trader. Characteristics of a product may include the following:

  • Packaging: Every trader has a different way of packing his goods/products which is unique to his trade. This adds to the reputation of the products and the illiterate consumers often identify the product through its packaging.
  • Logo used on the packet or on the product: This is an essential feature of a product which refers to its source and authenticity. The creation of a logo involves profuse skill and is a subject matter of copyright protection. It is capable of creating a sharp impression on the minds of the consumers of all classes.
  • Slogans used with the logo: Slogans are a combination of words, a phrase which is used for advertising the products of a particular trade. A logo is often accompanied by a slogan to make a mark more distinctive.
  • Shape of the product: The shape of the Coca-Cola bottle says it all. This unique shape is recognised world over. It has added to the growing reputation of the brand. Protection of the same, is therefore, very important both for the traders as well as the general public.
  • Colours/combination of colours used on the packets or on the products: Colours often appeal to the eye more than words. Recognition of a particular product through its colour or combination of colours is common among the consumers.

2. Trade dress in Indian context

Copying of features constituting trade dress of well-known products has been a continuous practice and it calls for the protection of these features so that the infringers can be booked under the law. It plays an important role in creating a brand value for the product. This makes the protection of trade dress very crucial. Keeping in view the requirements contained in Trade Related aspects of Intellectual Property Rights (“TRIPS”) and the stipulations of World Intellectual Property Organization (“WIPO”), the Trade Marks Act, 1999 has incorporated a remarkable expansion in the protection of trademark rights. Protection is now provided even to shape, design and packaging of a product which forms the overall appearance of the product and the trade.

2.1 Legal provisions

Trademark 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.3 Package has been defined to include any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork.4 However, registration of a shape mark is prohibited if it consists exclusively of the shape of goods which results from the nature of goods themselves, shape of goods which is necessary to obtain a technical result or the shape of goods which gives substantial value to the goods.5 Therefore, in order for a shape to be registered as a trademark under the Act, it is necessary for the shape to be non-functional. A feature may be functional when it is essential to the use or purpose of the device. This proves to be an essential corollary because the moment a feature becomes functional, it forms a subject matter of the Patents Act.

Regarding registration of colour trademarks, the Act provides that a trademark may be limited wholly or in part to any combination of colours and that if a trademark is registered without limitation of colour, it shall be deemed to be registered for all colours.6

“Distinctiveness” whether inherent or acquired is the key word in Indian trademark law and the same also applies to a “trade dress”. A “trade dress” is particular to a product. To be a “trade dress” it has to be distinctive, i.e, identifiable to the consumer. Trade dress protection is broader in scope than trademark. A “trade dress” which acquires distinctiveness through extensive usage, sales and promotion, can seek protection under the Act. It should be noted that trademark protection is available to both registered as well as non-registered trademarks. Similar should be the case with trade dress protection. The Act provides for passing-off action against use of similar trademarks of another which is not registered but 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. This provision has been extensively applied to “trade dress” by the courts in India.

Thus, it can be said that “trade dress” per se cannot be registered under the Act but features like colour combinations, shape, packaging etc of a particular product can be registered. If a particular feature of “trade dress” related to a particular product conforms to the requirements of distinctiveness and the other conditions given for registration of shape and colour marks, it can be registered under the Act. Infringement of the registered features of trade dress gives a right to the affected party to institute proceedings against the infringer and claim damages from him. With regard to other features of trade dress which cannot be squarely protected under the Act, an affected party has the remedy of a passing-off action. The scope of protection of trade dress in India can be well illustrated by the case-law discussed in the subsequent section 2.2.

2.2 Case-law

Given the fact that major portion of the population of India is illiterate, trade dress protection in India must be strengthened. But, it is unfortunate that the Indian law on trade dress is still at a nascent stage. However, the decisions of the courts in passing-off actions have witnessed the significance of the concept of “trade dress,” as can be inferred from the cases discussed below:

Colgate Palmolive Co v. Anchor Health and Beauty Care Pvt. Ltd7

Colgate Palmolive sought an interim injunction against Anchor Health and Beauty Care Pvt Ltd. for use of the “trade dress” and colour combination of red and white in relation to identical products i.e. tooth powder. However, the marks used by the two parties were completely distinct, being Colgate and Anchor. The court held that it is the overall impression that a consumer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging etc. If an illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, colour combination and get-up, it amounts to passing-off.

To establish an action of passing-off, the similarities and not the dissimilarities, should be taken into account. Therefore, the words “Colgate” and “Anchor” being distinct, the ingredients of trade dress, get up, colour combination, and lay out of the container or packing become important for determining the offence of passing-off. Similarities of “trade dress” being substantial from the look of the two goods, it comes within the mischief of passing-off.

United Distillers Plc v. Jagdish Joshi & others (2000)

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.

L’oreal India Pvt. Ltd. and Anr. Vs. Henkel Marketing India Ltd. and Anr.8

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 colorable 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.

N. Ranga Rao and Sons Vs. Anil Garg and Ors.9

N.Ranga Rao and Sons was a partnership firm engaged in the manufacture of incense sticks under the trade name “LIA”. Anil Garg started selling his products under a similar trade name “DIA” and adopted packaging similar to that of the partnership firm. An amalgam of colour combinations, names and logos which creates a total identification with products was alleged to be copied. The Court laid down that to establish infringement the “trade dress” has to be seen as a whole and not in parts. Copying of the packaging of incense sticks and the colour scheme as well as trade name of a well-known product of the same range constitutes infringement and the suit for permanent injunction of the plaintiff in the case was successful.

Thus, the Indian position of trade dress protection is that one should rely on the following factors before alleging infringement:

  • The infringed mark should be distinctive.
  • There should be deceptive similarity with the infringed mark so as to create confusion in the minds of the consumers.
  • The class of consumers targeted should be the same for the products of both the parties.

3. US Law on trade dress

3.1 Legal Provisions

In the US the basis of trade dress protection is enshrined in section 43(a) of the Lanham Act. 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.

Thus, as per the section, a functional feature of a product will not be protected as a trade dress under the Act. The cases discussed in the next section throw some light on this situation and explain better.

As regards the element of “distinctiveness,” marks under the US law may be classified as generic, descriptive, suggestive, arbitrary or fanciful10. Suggestive, arbitrary, and 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 are those that refer to the genus of which the particular product is a species. These 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. Lastly, marks that serve only a descriptive function in relation to a product may be protected under trademark law as inherently distinctive, which is again unlike the Indian position.

3.2 US Case-law

Two Pesos v Taco Cabana11

Two Pesos owned a growing chain of restaurants. The restaurants featured bright colors, paintings, murals, interior dining, patio areas, overhead garage doors to separate the interior areas from the exterior, stepped exterior of the building and neon stripes on the building. Taco Cabana was a competing chain that adopted a similar design. Two Pesos alleged trade dress infringement. Two Pesos design was found to be a trade dress and to be infringed by Taco Cabana. The Court held that the restaurant design in question was inherently distinctive.

Wal-Mart Stores v Samara Bros.12

Samara produced a line of children’s clothes decorated with appliques 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.

Traffix Devices v Marketing Displays13

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.

In Grey et. al vs. Meijer, Inc., the Court stated that to recover from trade dress infringement, the affected party must prove by preponderance of evidence the following:

  • That its trade dress has obtained “secondary meaning” in the marketplace;
  • That the trade dress of the two competing products is confusingly similar; and
  • That the appropriated features of the trade dress are primarily non-functional.

The scope of trade dress infringement with respect to passing-off has, thus, been highlighted by various courts in the US. Under the US laws, one must be always aware of the need to market effectively and to retain evidence of marketing. This is how evidence of “secondary meaning” can be gathered. The more distinctive the marks and product packaging design are, the better will be the opportunities to claim protectable rights to the marks and trade dress.

CONCLUSION

US and Indian laws on trade dress are very close. Though protection under US law is much stronger as there are specific provisions in its domestic laws14, the requirement of acquiring a secondary meaning makes it little difficult to claim damages in case of infringement. In India, trade dress protection was recognized and granted only in some cases, like Colgate Palmolive, United Distilleries and N. Rangarao and Sons. The law on the issue needs to be strengthened so as to curb the unauthorized and illegal copying of the image of other products and thus restrain others from riding on the reputation and goodwill of another.

1American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1141 (3rd Cir. 1986), Colgate Palmolive Co. V Anchor Health and Beauty Pvt. Ltd. 2003 (27) PTC 478 (Del).

2Two Pesos v Taco Cabana 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992).

3 Section 2(zb) of the Act

4 Section 2(q) of the Act

5 Section 9 of the Act

6 Section 10 of the Act

7 2003 (27) PTC 478 (Del).

8 2005 (6) Bom CR 77.

9 2006 (32) PTC 15 (Del).

10 Section 2 of Lanham (Trade mark) Act (15 U.S.C) as updated till October 2005; www.bitlaw.com.

11 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992).

12 529 U.S. 205, 120 S.Ct. 1339 (2000).

13 121 S.Ct 1255 (2001).

14 Section 43(a) of the Lanham (Trade mark) Act (15 U.S.C.).

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