TRADE DRESS

By

Dayal Legal Associates

Corporate office Litigation Office

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 EDITORIAL TEAM

EDITOR IN CHIEF

Mr. Deepak Dayal

MANAGING PARTNER, DAYAL LEGAL ASSOCIATES

EDITOR

Pushpit Singh

LEGAL RESEARCH HEAD, SOCIETY FOR LEGAL RESEARCH AND EDUCATION

AUTHOR

Trisha Duggal

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 ABOUT US

DAYAL LEGAL ASSOCIATES’ ROOTS WAS FOUNDED BY MR. BISHAMBER

DAYAL IN 1919, IT WAS SET UP IN INDIA BY A GROUP OF EMINENT AND
HIGHLY EXPERIENCED LAWYERS, RENOWNED IN THE LEGAL FRATERNITY.
THE FIRM STARTED WITH THE AXIOM OF GETTING THE BEST OF EXPERIENCE
AND KNOWLEDGE UNDER ONE ROOF. COUPLED WITH SOME VETERAN
PROFESSIONALS, THE FIRM FOCUSES ON PROVIDING UNSURPASSED SERVICES
WITH A DEFINITIVE FOCUS ON THE CLIENT NEEDS. WE PROVIDE AN ARRAY
OF SERVICES BOTH IN THE NATURE OF LEGAL AND ADVISORY. WITH ON THE
PANEL CIVIL AND CRIMINAL LAWYERS, CHARTERED ACCOUNTANTS AND
COMPANY SECRETARIES, DAYAL LEGAL ASSOCIATES IS READY TO PROVIDE
ANY LEGAL OR ADVISORY PREDICAMENT.

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 INDEX
SR. NO CONTENTS PAGE NO

1 Cover Page 1-4

2 Index 5

3 Introduction 6

4 Characteristics 6

5 Trade Dress Protection: India 6

6 Trade Dress Infringement and Remedies 7

7 Difference between Trade Dress and Trademark 7

8 Recent Case Laws 7-8

9 Conclusion and Recommendations 8-9

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INTRODUCTION

Trade Dress is a type of Trademark Law that extends to the configuration of the product. It is the visual image of any product used in its
promotion or sales that is composed of the non-functional elements of its design, packaging, or labeling. It helps the consumers to identify
the product and distinguish it from other products. It also helps an illiterate consumer to differentiate the product based on the packing of the
product. Trade dress is protected under trademark law and consists of elements that are not operational like product packaging or the décor.
With growing competition trade dress provides a new forum to secure the untouched aspects of business of distinctiveness.

The concept of Trade Dress was first recognised by the US. The Trade Marks Act 1999 in India came into force in September 2003 and is
largely based on the English Trademark Act, 1994 which recognized the concept of trade dress. Indian Trademarks Act, 1999 also did not
mention separately anywhere in the Act, about the concept of trade dress, but if we go by generic meaning of the term trade dress, we found
that there are few references about trade dress in Section 2 clause (m), (q) and (zb) i which provides that “a mark includes a device, brand,
heading, label, ticket, name, signature,word, letter, numeral, shape of goods, packaging or combination of colours or anycombination
thereof”. The definition clause further articulates that a package consists of any case, box, container, covering, folder, receptacle, vessel,
casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork”.

The law of trade dress serves four purposes. First, the law seeks to protect the economic, cognitive and creative investments made by
businesses in their products. Second, the law seeks to preserve the good will and reputation that are often associated with the trade dress of a
particular business and its merchandise. Third, the law seeks to promote clarity and stability in the marketplace by encouraging consumers
to rely on a business's trade dress when evaluating the quality of a product. Fourth, the law seeks to increase competition by requiring
businesses to associate their own trade dress with the value and quality of the goods they sell.

CHARACTERISTICS

Trade Dress has the following features:

 distinctive look and feel of a brand in the marketplace,

 packaging of a product is likely to be unique.

 color of the product also gives a distinct identity.

 source indicator of distinguishing the goods and services of one from those of others,

 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,

 requirement for the registration of trade dress is same as that of the registration is word/ logo mark.

 non-functional

TRADE DRESS PROTECTION: INDIA

The trade dress protection states the highlights of the visual or sensual appearance of a product that must be protected from being utilized by
competitors in connection to their business and administrations. The trademark incorporates their shape (3 dimensional), bundling, shading,
visual computerization of the item.

Courts in India have recognized the concept of trade dress and put a stamp on its commercial existence and value. Customers usually buy
products that they have developed a liking for. It is mostly the visual appearances that guide many customers in identifying their preferred

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products. Even educated customers find it difficult to differentiate two similar looking products sometimes. Only after buying that they may
choose to inspect closely to find a different brand name that sounds similar and packed similarly to a better product. Many sellers prefer
stocking imitation goods since they offer better profits to them. Thus, it can get difficult for genuine trademarked products to reach all
customers who desire to purchase them.  Trade dress should be protected to prevent customers from being misled into purchasing
substandard articles and to protect the interests of genuine manufacturers.

TRADE DRESS INFRINGEMENT AND REMIDIES

Trade dress infringement means using similar or ambiguous similar packaging, cover, visual appearance of goods or services of one person
by another person; which creates confusion about the source of products or services, in the minds of consumers. Trade Dress infringement is
an uncertified use of packaging, label, color combination etc of particular goods or services of a trader, and which leads to confusion, hoax,
or misrepresentation about the source of particular goods or services, in the minds of ordinary consumers. Trade dress rights do not run out
as long as the design is used in commerce as a source identifier. Once a design obtains secondary meaning, future products can also benefit
if they use the same protected design feature. Furthermore, a competing product infringes when it is deemed close enough to confuse a
consumer regarding its source.

The prima facie relief which is available with the registered user of a trade dress; is civil suit for an infringement but in case of unauthorized
use of unregistered trade dress, action of passing off, is available with the owner of unregistered trade dress. Other remedies are available
like compensatory remedy, monetary relief or reward for damages to the plaintiff. Criminal action can also be taken in case of falsification
of trademark or trade dress

DIFFERENCE BETWEEN TRADE DRESS AND TRADEMARK

Trade dress is different from a trademark (also known as Service Mark, or Trade Name) in the following ways:

 Trademarks offer legal protection for a logo, symbol, phrase, word, ame or design used to show manufacture of a product. Trade
dress protects the overall image of the product

 Under state and federal law, it is advantageous for businesses to register their trademarks, service marks, and trade names with
the government. Conversely, trade dress has no formal registration requirements and receives legal protection simply by being
distinctive and recognizable, etc.

 Trademark is a source-identifier like the symbol or any phrase associated with the brand and trade dress is also a source
identifier but has a vast meaning and is everything that a brand does to present its product to the public.

 Example- The yellow ‘M’ of Mc. Donald’s is a trademark whereas the overall feel of any restaurant present in any part of the
world of Mc. Donald’s including their packaging, décor, etc is trade dress.

RECENT CASE LAWS

1) Itc Limited vs Whole Leaf Tobacco Venture Pvtii

The petitioner is one of the largest fast moving consumer goods companies in the country with its cigarette business dating back
to 1910 and they have acquired immense reputation in relation to its high quality cigarettes and tobacco products marketed under
well-known trademarks, some of which are “FLAKE”, “GOLD FLAKE”, “CLASSIC”, “INDIA KINGS”, “INSIGNIA”,
“BRISTOL”, “SCISSORS”, “CAPSTAN”, “NAVY CUT” etc. The respondents use of the names “FLANE” and “GOLD
FLANE” and “NEXY CUT” which are identical and/or deceptively similar to the petitioner’s trademarks “WILLS FLAKE”,
“FLAKE” and “GOLD FLAKE” and “NAVY CUT” in packaging/labels/trade dress.

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 The petitioner has produced the packets and the packaging materials of its products as well as the infringing packets and/or
materials of the respondents before this Court. It appears that the infringing packets in which the products of the respondents are
sold are slavish imitation of that of the petitioner. The products placed next to each other on a first look cannot be distinguished.
It is bound to create confusion in the mind of unwary consumer of imperfect recollection. The petitioner is able to make out a
prima facie case that adoption of the said marks, trade dress and get up of the packets of the respondents have been dishonest and
fraudulent and a protective order was passed against the respondents.

2) Dabur India Ltd. Vs Vaidya Nandram Gigraj Chamriaiii

The plaintiff launched a variant of the Hajmola tablets in pomegranate flavour under the mark Hajmola Anardana which is sold
in a distinct container, design and packaging. It is contended that on account of continuous commercial use, the plaintiff’s
container, design and packaging have acquired tremendous goodwill and reputation. The plaintiff came to know that the
defendant is engaged in manufacture and marketing of Anardana churan and is selling pomegranate flavoured ayurvedic
digestive under the mark Karorpati Anardana, in a container, packaging and trade dress which is identical/deceptively similar to
the plaintiff’s Hajmola Anardana container design, packaging and trade dress.

The Court stated that the plaintiff proved that the defendant has copied the trademark/packaging/trade dress of the plaintiff and
the defendant is using the trademark Karorpati Anardana in an identical/deceptively similar label/packaging/trade dress.

3) Marico Limited vs Mr Jay Kumar Bangeja & Orsiv

The Plaintiff have proprietor right on the trademark/labels namely Parachute, Parachute advanced Jamine, Nihar and Nihar
Natural Santi Amla but the defendants produced, manufactured, distributed, exported, sold products namely President coconut
oil, Pooja Coconut Oil, Pooja Coconut Pouch, Precedent Jasmine, Poja Jasmine, and/or Precedent Shanti Amla, and/or any other
product bearing any other mark/label/trade/dress/ packaging deceptively and/or confusingly similar to the Plaintiff s
trademarks/labels. The Court held that the trade dress was infringed and both the parties to the case reached to a settlement.

4) Gorbatschow Wodka Kg v. John Distilleries Limitedv

Gorbatschow Wodka is one of the most premium brands of Vodka in the world. Its bottles have a unique bulbous shape inspired
by Russian Architecture. John distilleries, an Indian company launched a product called Salute Vodka with a similarly shaped
bottle, but a different trademark and colour of label. Though John distilleries argued that the consumers of Gorbatschow Vodka
are affluent and can never get confused by an economic brand like Salute, the Bombay High Court decreed that the shape of the
bottle is deceptively similar and that it will tarnish the image of the plaintiff if the defendant is allowed to sell the same. Thus,
the defendant, John distilleries was stopped from using the shape of the bottle for selling their products.

5) Cadbury India Limited and Ors. Vs. Neeraj Food Productsvi

A company by name Neeraj food products launched a food product similar to ‘Gems’, a popular chocolate product by Cadbury.
Their product was called ‘James Bond’ and the colour schemes and nature of the foods were similar. This was contested by
Cadbury in whose favour there was a decree that restrained Neeraj Food Products from using trademarks and packaging similar
to Cadbury.

CONCLUSION

Today for every businessman it is very important to decide a trade dress for goods or services of his business, like any other financial
decision of a business. In order to create healthy competition and fair business practices, each and every businessman should invent or
create a unique and distinctive trade dress for his/her products or services. Trade dress is one of the types of trademark and has its’
inevitable place in the growth and expansion of business. In India trade dress is governed by Indian Trademarks Act, 1999 and to
some extend principles of common law.

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 Therefore we can say that Trade Dress is having an indispensable place in business. Trade Dress shall be unique, creative, distinctive
and commercially viable, in order to attract customers’ attention, which results into more sales, name, fame, popularity for a particular
business.

Trade Dress is an important and less talked about topic in today’s world because people are not well aware about the same. The main
reason for the same is lack of laws governing it. As stated in this note, there are no direct statutes containing laws for trade dress and
therefore people in India are not well aware of this concept. Even if they are aware they are not aware as to how they can proceed with
a lawsuit if some other establishment makes use of trade dress. Therefore the author of this note would recommend that the legislation
should makes laws especially for trade dress. Also there should be a proper registration for trade dress as it is done in the case of
trademark. Implementations as recommended may help the businessmen of our country to prosper.

RESEARCH OBJECTIVE

The objective of this note on trade dress is that the people who actually get to read this note become self aware of the concept. Also various
law precedents have been mentioned in this note so that the concept becomes more clear, and the persons into business could actually get
some idea regarding the actions if there is an breach of trade dress.

RESEARCH GAP

The author of this note feels that the awareness even regarding the literal meaning of ‘Trade Dress’ is not known amongst people of the
country, and the manufacturer has no idea on how they can carry a proceeding for the contravention of the same. Also there is no proper
legislation that rules the concept of trade dress. The author of this note also feel that trade dress is an essential part in law that needs to be
understood but it is rarely talked about.

ENDNOTES

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i
Colgate Palmolive Company and Anr. V Anchor Health and Beauty Care Private Limited, 2003
ii
2019, 77 PTC 589
iii
2018, DHC 698
iv
2017, Delhi HC
v
2011, 47 PTC 100 Bom.
vi
2007, DLT 724

REFERENCES
WWW.LEXOLOGY.COM
WWW.MONDAQ.COM
HTTP://DELHIHIGHCOURT.NIC.IN/JUDGEMENT.ASP
HTTPS://BLOG.IPLEADERS.IN
WWW.CORPORATE.FINDLAW.COM
HTTP://INDIANCOURTS.NIC.IN/