TRADE DRESS:

 Trade dress consists of all the various elements that are used to promote a product or service. This
includes, but is not limited to, the color, shape, size, configuration, and packaging of a product.
Trade dress can also apply to decor, architecture, or anything else that makes the presentation of a
product or service distinctive. Trade dress refers to anything that is designed or used to promote a
product or service. This is known as the "total image" or "overall appearance" of the product or
service.1
 The concept of trade dress originated in the US. It was considered as the overall appearance of the
labels, wrappers and containers used in packaging a product. With development of law, various
elements were included in the definition of trade dress which now makes a shape or design of a
product as a trade dress
 In case of Wal-Mart Stores vs. Samara Bros2, trade dress was defined as "a category that
originally included only the packaging, or 'dressing,' of a product, but in recent years has been
expanded by many courts of appeals to encompass the design of a product."

TRADE DRESS UNDER THE LANHAM ACT:

 Under section 43(a) of the Lanham Act, a product's trade dress can be protected without
registration with the USPTO i.e. a trade dress can be protected even if it is unregistered.
However, as trade dress is a trademark, you can register it with the U.S. Patent and Trademark
Office (USPTO) and procedure for application of registration of a trade dress is the same as that
of a trademark.3

Requirements for obtaining Protection:

i. Distinctiveness
Trade dress which is does not have a USPTO registration can be protected by showing that
it is distinctive. The person who asserts trade dress protection has the burden of proving that
the said trade dress is distinctive. A trade dress can either be inherently distinctive or may
acquire distinctiveness through a secondary meaning.

1
https://www.upcounsel.com/trade-dress
2
529 U.S. 205, 120 S. Ct. 1339 (2000)
3
https://www.upcounsel.com/trade-dress
 a) Inherently distinctive: a trade dress is said to be inherently distinctive if it is unusual,
memorable, fanciful, suggestive, arbitrary, separate from the product or service
(separately recognized, for example), or commonly regarded as being associated with the
product or service (i.e. being a designator of the product's source).

In Two Pesos v. Taco Cabana4, the plaintiff, a fast food Mexican restaurant chain had a
specifically designed look or “trade dress”. The Defendant opened a restaurant with a
remarkably similar look. The plaintiff sued the defendant alleging infringement under the
Lanham Act. The jury found that plaintiff’s trade dress was inherently distinctive and
rejected the defendant’s argument that a finding of no secondary meaning necessarily
means the trade dress is not inherently distinctive.

b) Distinctiveness acquired through secondary meaning : if a trade dress is descriptive it

acquires distinctiveness through a secondary meaning by proving customers associate
the trade dress only with your product. This can be proved by showing evidence relating
to number of customers and amount of sales; or manner, length, and exclusivity of the
use.

In Ferrari SPA Esercizio v. Roberts5, the plaintiff accused the defendant of infringing
trademarks claimed in the exterior shapes and features of two of plaintiff’s automobile
models. To establish secondary meaning for the exterior shapes and features the models,
the plaintiff conducted a consumer survey by showing photographs for each vehicle and
the report of the same concluded high level of secondary meaning as the survey
respondents correctly identified the models as the plaintiff’s models.

In Callaway Golf Co. vs. Golf Clean, Inc.6, Callaway contended that the defendant’s
golf clubs infringed its trademarks and trade dress in violation of the Lanham Act. In
evaluating the inherent distinctiveness of Callaway’s trade dress, the following was
considered by the court: - (1) whether it is a common, basic shape or design (2) whether
it is unique or unusual in a particular field (3) whether it is a mere refinement of a
commonly adapted and well known form of ornamentation for a particular class of
4
505 US 763 (1992)
5
739 F.Supp.1138 (E.D.Tenn.1990)
6
915 F.Supp.1206 (M.D.Fla.1995)
 goods viewed by the public as a dress or ornamentation for the goods. It also laid the
factors that a court must consider in assessing secondary meaning:- (1) the length of
time and manner of its use (2) the nature and extent of its use (3) efforts made in the
direction of promoting a conscious connection, the public’s mind, between the mark and
a particular source of origin.

ii. Non-functional: In order to be entitled to protection, the trade dress cannot be primarily
functional. Functional aspects of trade dress cannot be protected under trademark law. In
general terms, trade dress is functional, and cannot serve as a trademark, if a feature of that
trade dress is "essential to the use or purpose of the article or if it affects the cost or quality
of the article7." 8 The appropriate inquiry for the functionality of trade dress is not whether
each individual feature of the trade dress if functional but whether the whole collection of
features, taken together is functional.9 In determining whether trade dress is primarily non-
functional, the test is whether upholding an exclusive right to use the trade dress as a whole
would hinder effective competition by others

Functionality can take two forms:

a) De facto - this is the function that the trade dress was intended to perform. It means
that the design of a product has a function.10

Example: In case of the Coca cola bottle, the de facto function of its famous bottle
is to hold and pour the drink but the trade dress is not concerned to that. The trade
dress concerns the ribbing on the bottle and the shape of the bottle, neither of which
is necessary to hold or pour the drink and so the trade dress is de facto
nonfunctional.11

b) De jure - means that the product has a particular shape ‘because it works better in
this shape. Courts also found de jure functionality if the trade dress “is essential to
the use or purpose of the article or affects the cost or quality of the article”.

7
Qualitex, slip op. at 6; citing Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850-51 (1982)
8
https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e873.html
9
Hartford House v. Hallmark cards, Inc., 846 F.2d 1268 (C.A.10 1988)
10
https://boldip.com/blog/what-is-trade-dress/
11
https://www.upcounsel.com/trade-dress
 Example: in Brunswick Corp. v. British Seagull Ltd.12, Brunswick Corp. filed suit
against British Seagull Ltd. claiming a trade dress infringement for the use of the
color black. However, the court found de jure functionality because the color black
on the outboard motor worked better for most color schemes and the color black
also made the motor look smaller.

TRADE DRESS vs. DESIGN PATENT

Sr. No. Trade dress Design Patent

1. - Trade dress is a type of - A design patents cover visual,
trademark that refers to the non-functional characteristics of
image and overall appearance an article of manufacture.
of a product - They may relate to the
- It consists of all the various configuration or shape of an
elements that are used to promote article, the surface ornamentation
a product or service. applied to an article or a
combination of both.
2. - Trademarks protect brands and - It only protects only the
the goodwill associated with the appearance of the article and not
brand. It protects a particular its structure and functionality.
image of a product that
consumers exclusively associate
with that product.
3. - A trade dress cannot be - A design patent can have some
functional. functionality.

TRADE DRESS UNDER INDIAN LAW

 Indian law does not have a separate provision for trade dress under its existing Trade mark Laws
unlike the US law which recognizes the concept trade dress under Section 43(a) of the Lanham
Act.

12
https://boldip.com/blog/what-is-trade-dress/ || 35 F.3d 1527 (1994)
  However, the amended Act of 1999 recognizes trade dress through the new definition of
“trademark” contained in clause (zb) of Section 1 of the Act 13 . Under this, a product package
(including its colour combination, size, shape etc.) or a product design/ configuration (as shape
mark) cab be registered as a mark Indian law gives statutory and common law protection to
trademark. A trademark can be registered under different classes by a single application.

 In Colgate Palmolive Co v Anchor Health and Beauty Care Pvt. Ltd 14, the plaintiff sought an
interim injunction for use of colour combination of red and white in relation to identical products
i.e. tooth powder, when the marks being 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 getup, it amounts to passing
off.

PURPLE- GSK

1. Glaxo Wellcome UK Ltd and Glaxo Group Ltd vs Sandoz Ltd.

 Trademark:

13
“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
14
2003 (27) PTC 478 Del
 “The trade mark consists of the colour
dark purple (Pantone code 2587C)
applied to a significant proportion of
an inhaler, and the colour light purple
(Pantone code 2567C) applied to the
remainder of the inhaler.”

 This appeal concerns the validity of EU Trade mark and whether it is invalid on the ground that
the subject-matter of the registration is not clear or precise and that it will be perceived
unambiguously and uniformly and contravenes Article 4 of EUTMR.
 The trade mark is registered in respect of inhalers. The certificate bears the INID code 558 i.e. the
mark consists exclusively of one or more colours. In UK, the product is sold by Glaxo under the
brand name Seretide.
 7th Dec, 2015: Glaxo issued proceeding against Sandoz asserting that it had infringed the Trade
Mark by selling a generic version of Seretide called AirFluSal. Sandoz responded in its defense
and counterclaim that the trade mark is invalid because it covered a multitude of different forms
and was not capable of being represented graphically as required by Article 4 of the EUTMR.
 19th Feb, 2016: Sandoz applied for summary Judgment on its claim that the trade mark was
invalid. On 28th June, 2016 Judge Hacon accepted the application and declared the trade mark to
be invalid.
 Judge Hacon’s Judgment:
- He addressed two points of principle: (i) How a trade mark application or registration should
be interpreted where there was no strict congruence between the visual representation of the
sign and description. (ii) Whether a registered trade mark consisting exclusively of one or
more colours might encompass variants of the protected sign.
- He took the view that neither the visual representation nor the description takes precedence
and that the court must do its best to reconcile any difference between the visual
representation and the description. He dismissed the submission made by Glaxo that a trade
name consisting exclusively of one or more colours may include variants of the protected
sign and held that such a trade mark must consist of one and only one sign.
- He held that the visual representation provided considerable guidance as to the subject matter
of the mark but written description was unambiguous as to the shades of dark purple and light
 purple which was cast in very general terms and therefore there was a discrepancy between
the visual representation and the description.
- In his view, anyone looking at the register and trying to understand what the mark consisted
of would be presented with a puzzle to which there were three possible solutions : (i) a mark
with the outline and arrangement of dark and light purple colours shown in the visual
representation, the so called ‘spikes and all’ arrangement. (ii) Mark consisting of dark purple
applied to a significant portion of an inhaler and light purple to the remainder i.e. any
arrangement of colours meeting the written description. (iii) Mark having a pattern of dark
and light purple colouring taking the form of any one of a number of abstractions.

- He concluded by saying that the trade mark did not satisfy Article 4 of the EUTMR as it was
not sufficiently precise and uniform; nor was it sufficiently clear and unambiguous for two
reasons:
a) It set the reader (looking at the register) a puzzle
b) The second and third solutions to the puzzle left the reader uncertain as to the form of
the trade mark.
 Glaxo appealed and contended that the judge failed properly to interpret the Trade Mark and that
the trademark comprises the dark and light purple colours in the specific proportions and the
arrangement as shown in the pictorial representation of the mark on the certificate. Glaxo further
contends that the wording on the certificate merely describes the mark in general terms and
specifies the shades of purple colours which it comprises.
 Summary of the Judgment (Appeal) :
The following was held:
- With regards to Article 415 of the EUTMR, Justice Kitchen states that graphical representation
must be such that the authorities and the public, including the actual and potential
competitors of the proprietor, can identify the sign clearly and precisely. He further states that
the graphical representation encompasses not just the pictorial representation of the sign but
also the description. He states that in case of a sign consisting of one or more colours, the
description is very important.16

15
Article 4 of the EUTMR: An EU trade mark may consist of any signs, in particular words, including personal
names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided
that such signs are capable of: (a) distinguishing the goods or services of one undertaking from those of other
undertakings; and (b) being represented on the Register of European Union trade marks ('the Register'), in a manner
which enables the competent authorities and the public to determine the clear and precise subject matter of the
protection afforded to its proprietor.
16
Para 62 and 63 of the Judgment.
 - He rejects the submissions made by Glaxo that a mark consisting of one or more colours per
se is defined by the pictorial representation showing how the colour or colours are to be
applied. He states that the verbal description of such mark is also important and must be
taken into account together with the pictorial representation. He states that the graphical
representation, comprising both the pictorial representation and the verbal description, must
be considered as a whole.17
- He confirms Judge Hacon’s view that the designation of the Trademark with INID code 558
means that it is and would be understood to be a mark which consists exclusively of one or
more colours i.e. it is a colour per se mark. He states that Judge Hacon was right in describing
this as a puzzle.18
- With reference to the interpretation urged by Glaxo that the sign of which the mark consists is
the precise arrangement of the dark and light purple colours shown in the pictorial
representation, he states that it faces two major difficulties: (i) INID 558 implies that the sign
is not limited to the colours as applied to any particular shape of the inhaler. However, it is
difficult to understand how this particular arrangement of colours could be applied to an
inhaler of different shape. (ii) This interpretation is not consistent with the verbal description
which is put in much more general terms. It does not say that the dark purple and the light
purple colours should be applied to an inhaler of the shape and in the particular manner
illustrated in the pictorial representation. 19
- With reference to the abstract interpretation 20, he states that it would be thought by the public,
including economic operators to be reasonable as it attempts to give some effect to the
particular arrangement of colours shown in the pictorial representation while not limiting the
mark to use in relation to any particular inhaler shape. However, there are three major
problems: (i) what degree of abstraction should be applied to the pictorial representation or
what form the abstraction should take is not clear (ii) the arrangement of the dark and light
purple colours is not the same in each of the abstractions and so they are not representations
of the same sign. (iii) Verbal description is cast in much more general terms.
- With reference to the third interpretation that, that the mark consists of any proportions of the
dark and light colours falling within the terms of the verbal description and that the pictorial
representation is merely an example, he states that the public looking at the certificate of the

17
Para 69 of the Judgment.
18
Para 70 of the Judgment.
19
Para 77 of the Judgment.
20
Para 48 and 78 of the Judgment.
 trade mark on the register would be left in a position of complete uncertainty as to what the
protected sign actually is.21
- He concludes by saying that the Trademark lacks the clarity, intelligibility, precision,
specificity and accessibility that the law demands. He further states that it would not be
perceived unambiguously and uniformly by the public and that it offends against the principle
of fairness because the uncertainty as to what the subject matter of the mark actually is gives
Glaxo an unfair competitive advantage. He states that the all numerous different
combinations of the dark and light purple colours do not exhibit the qualities of precision and
uniformity required by Article 4 of the EUTMR.22

2. Norway Supreme Court:

 GSK owns the drug, which it launched in 1999 as a first of its kind combination drug
formula for asthma and chronic obstructive pulmonary disease. Patients inhale the drug
via a dry-powder inhaler (named Diskus) or an aerosol spray. The patent protecting the
same expired in 2014.
 Danish company Sandoz A/S, who together with Novartis Norge AS ("Sandoz"),
launched the competing asthma and COPD inhaler Airfusal Forspiro on the Norwegian
market in March-April 2014. Forspiro is the name of Sandoz' dry-powder inhaler.
 Diskus and the Forspiro differ in both function and design but both these inhalers were
purple in colour.
 In its appeal to the Supreme Court, GSK revised its acquired distinctiveness claim from
covering the purple color in general, to two specific purple nuances: Pantone 2587C
("dark purple") and Pantone 2573C ("Sandoz purple").
 In its decision, the Supreme Court concludes that Sandoz purple could not have acquired
distinctiveness for GSK, as GSK never had utilized that specific color in its product
range.

21
Para 79 of the Judgment.
22
Para 80 of the Judgment.