1

CHAPTER-I
INTRODUCTION

1.1 STATEMENT OF PROBLEM :

The concept of Trade Dress is a concept developed under the law relating
to Intellectual Property, especially under Trademark laws. This concept of Trade
Dress entails that the competitors in a given market should not dress or say pack/
shape their product in order to deceive the customer(s) into buying their product.

This concept originated in United S.A. through The Lanham Act. In the “

case of Wal-Mart Stores v. Samara Bros. 529 U.S. 205, 120 S. Ct. 1339 (2000) the
‘Trade Dress’ was defined as a category that originally included only the
packaging or dressing of a product, but in recent times it has expanded by many
courts of appeals to encompass the design of a product.

Under the Indian Legal Services, the concept of Trade Dress does not have
a specific mention under the law. Rather, under the Trade Marks (Amendment)
Act, 1999 the definition of Trade Mark, itself is been broadened to include the
shape of goods, packaging, or combination of colours or any combination thereof
(u/s 2(zb) of Trade Marks Act, 1999).

Product packaging or the look of a product has nowadays become just an

essential as the product itself. A trade dress is the visual appearance of a product
or its packaging which forms an important component as the source of the product
unlike traditional trademark law that protects words or logo, trade dress law
protects the total package and design of a product.

As compared to the United States of America where trade dress has been
given statutory protection under Section 43(a) of the Lanham Act, trade dress is
not mentioned in the Trade Marks Act, 1999 in India. However, the definition of a
trademark under Section 2(zb) of the Trade Marks Act, 1999 includes within its
 2

ambit shape of goods, their packaging and combination of colors. This makes it
clear that trade dress is included within the definition of a trademark. Trade dress
is protected in the same manner as an unregistered trademark.

Trade dress in India does not require any formal registration and is
connected with reputation and goodwill which is built with time. In certain cases
of passing off, the mark per se may not be similar but rather be quite different.
However, the packaging, colour get up or layout can be deceptively similar which
may cause confusion in the minds of the consumers.

1.2 SIGNIFICANCE OF RESEARCH :

The concept of Trade Dress is not very well evolved/settled in the Indian
Legal System, particularly in Intellectual Property Laws. The researcher has
studied the concept of Trade Dress under the Lanham Act and has drawn a
comparison between the Lanham Act and Indian Jurisprudence over the concept
of Trade Dress.

1.3 AIMS AND OBJECTIVE OF RESEARCH :

i. To understand the concept of Trade Dress under t he Intellectual

Property Law regime.

ii. Tracing the origin of the concept of trade dress and its evolution.

iii. Analyzing the incorporation of the concept of Trade Dress in the

Intellectual Property Law regime in the USA.

iv. Analyzing the incorporation of the concept of Trade Dress in the

Intellectual Property Law regime in India.

v. Comparative analysis of the concept of Trade Dress in Intellectual

Property Law regime in India, USA, and International Law Treaties.

vi. Critical analysis of the incorporation of concept of Trade Dress in Indian ”

 3

Legal System.

vii. To either prove or disprove the correctness of research hypothesis.

1.4 SCOPE AND UTILITY OF RESEARCH :

The scope of a research project is limited to draw a comparison between
the concept of Trade Dress given under the Lanham Act vis-à-vis given under
Indian Legal System. The utility of the said project is doctrinal in nature and will
give a clear idea regarding how the concept of Trade Dress is been incorporated in
Indian Legal System and particularly under Intellectual Property Laws regime.

1.5 LIMITATION OF RESEARCH :

The researcher acknowledges that no research can be complete and full in

a strictest academic sense and there are limitations to it. The research involves an
elaborate study on the narrow concept of Trade Dress. Any other study with
respect to other rights under the Trade Mark Law regime would fall outside the
scope of present research. Further, it cannot be denied that the humane elements
such as the consumer’s identification skills are variable and the same cannot be
objectively studied under this research.

1.6 RESEARCH METHOD AND METHODOLOGY :

The researcher has relied on doctrinal type of research while making this
research project. The researcher has referred to secondary sources only which are
commentaries on law, case laws and research articles pertaining to said topic of law.
The researcher has not gathered any primary data or has not been involved in
empirical findings for making this research project. Research methodology is
strictly doctrinal in nature.

1.7 REVIEW OF THE RESEARCH LITERATURE :

 4

There are various books, law journals, articles and websites that
have variety of literature on the concept related to trademarks and the related laws.
Hence it is clear that there is increase in research taking place on the evolving
concept of trade dress. The aspect included in this literature review is related to
the protection given to trademarks under various provisions of law.

The researcher has reviewed the following literature to enlighten the concept of
“

trade dress:

1. Dr. B.L.Wadehra, Law relating to Intellectual Property, Fifth Edition,

Universal Law Publication.

2. Iyengar’s, Commentary on The Trade Marks Act, Fifth Edition, Universal

Law Publication.

3. P. Narayanan, Intellectual Property Law, Third Edition, Eastern Law

House.

4. The researcher has also reviewed websites such as www.mondaq.com and

www.lexology.com.

5. The researcher will review the literature pertaining to Intellectual Property

Law regime of India, USA and various international treaties for further
development in the research.

1.8 FORMATION OF HYPOTHESIS :

The concept of Trade Dress is an evolving concept in India’s Intellectual

Property regime. The common law concept of passing off has been used and
propounded by courts along with the definition of Trade Marks to imbibe and
implement this concept of Trade Dress in the Intellectual Property regime of
India.
 5

1.9 SOURCE OF RESEARCH INFORMATION :

The researcher has relied upon mostly online sources like online articles,
and journals accessed via websites like www.mondaq.com, www.lexology.com,
etc, and has also relied upon online databases like Indian Kanoon. Further, the
researcher has referred to various relevant law commentaries.

1.10 SCHEME OF CHAPTERIZATION:

The following scheme of chapterization is as per the current understanding of the

topic

1. Introduction: Under this chapter the researcher has introduced the

concept of Trade Dress, in general, under the Intellectual Property Law
regime. Further the researcher introduces how the concept of trade dress has
been incorporated under the Intellectual Property Law regime of USA.

2. Historical growth and development of the concept of Trade Dress:

Under this chapter the researcher will analyze how the concept of Trade
Dress has evolved under the Intellectual Property Law regime of USA and
India. The researcher will also analyze how the concept of Trade Dress has
been incorporated under the Intellectual Property Law regime of India.

3. International treaties and conventions to protect trademark with

specific reference to Trade Dress: Under this chapter, the researcher will
study and analyze the various International Treaties pertaining to Trademark
Law and its effect on Intellectual Property Law regime of India, particularly
the concept of Trade Dress.

4. Legal recognition to concept of Trade Dress under Indian Legal

Order: Under this chapter, the researcher will critically analyze the concept
of Trade Dress in the Indian Legal System and the various standards
maintained by the courts across India for the protection of rights of
Trademarks.
 6

5. Comparison between the concept of Trade Dress in India, USA and

Singapore with reference to Trade Dress: Under this chapter the researcher
will comparatively analyze the concept of Trade Dress between the
Intellectual Property Law regime of India, USA and Singapore . ”

6. Findings and Suggestions: Under this chapter the researcher,

according to the legal material available on the subject matter of trade dress
online as well as offline; will provide its findings and suggestions.

7. Conclusion: Under this chapter the researcher will conclude the

study pertaining to the concept of Trade Dress and will declare whether or
not the research hypothesis maintained by the researcher is correct or not.

1.11 LEGAL CONCEPTS AND THEIR DEFINITIONS :

1.11.1 CONCEPT OF TRADEMARK IN INDIA :

The term mark has been defined to include a device, brand, heading, label,
ticket, name, signature, word, letter, numeral, shape of goods, packaging or
combination of colors or any combination thereof; and package includes any case,
box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label,
band, ticket, reel, frame, capsule, cap, lid, stopper and cork.1 Section 2(zb) of the
Act defines a trademark 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, packaging and combination of
colours.2 These provisions ensure that there is protection for product packaging
(including its colour combination, size, shape. etc.) or product design/
configuration (such as a shape mark).

What is the first scene that comes up when a Tom & Jerry episode is about
to begin; the Lion’s Roar. What is the basic difference between Pepsi and Coke;
“

1
http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf Trademarks
Act, 1999
2
Ibid
 7

the taste and shape of the bottle. The moment you enter Starbucks what pleases one
the most; the ambience and the smell of coffee. Traditionally, trademarks are
limited to words, logos or symbols that can be represented graphically in relation
to any goods or services. The definition of a trademark under the Trade Marks
Act, 1999 as per Section 2(zb) is trademark 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.3 However, with the passage of time,
not only logos, symbols or taglines are being associated to goods and services but
also sound, taste, smell, texture, hologram, motion, shape and the ambience of
the goods or services. Thus when a mark goes beyond the realms of the
traditional conventional category of being judged solely by the eye it is known as
Non-Conventional Mark.

The Indian legislation has no specific provisions for Non-Conventional

Marks except for the mention of sound marks. Under Rule 26(5) of the Trade
Marks Rules, 2017 when the application has been made for a Sound Trade mark,
it shall be reproduced in MP3 Format not exceeding a length of 30 seconds,
recorded on a medium that allows for easy and audible replaying quality along
with a graphical representation of its notation.4 However, it is interesting to note
that TRIPS too does not have provisions for Non- Conventional Marks. Article 15
of TRIPS states that Such signs, in particular words including personal names,
letters, numerals, figurative elements and combinations of colours as well as any
combination of such signs, shall be eligible for registration as trademarks . 5 Thus
”

from Article 15, it is clear that only those signs which are capable of
representation are considered as trademarks.

1.11.2 TYPES OF NON-CONVENTIONAL MARKS:

1. Sound Marks

3
Supra Note at 1
4
Rule 26(5) of the Trade Marks Rules, 2017
5
Article 15 of TRIPS
 8

Sounds have a big impact on how consumers perceive a brand. With the
growth of e-media, sounds play a big role in identifying a product or service thus
adding value to the brand. A sound mark is a mark where the sound is used to
perform the function of uniquely identifying the commercial origin of products
and services. Sound marks function as source indicators when they assume a
definitive shape and arrangement and create in the minds of the listener an
association of the sound with a good or service. 6 Yahoo’s Yodel is the first sound
trademark to be registered in India. Some of the famous sound marks registered in
USA are the sound of the famous Tarzan yell, the lion roar of Metro-Goldwyn-
Mayer Corporation, the music consisting of drums, trumpets and strings in the
Twentieth Century Fox Films, the sound of the crowd and the bell of New York
Stock Exchange, McDonald’s Corporation's five-note I'm lovin' it jingle. 7 The first
sound mark to be granted registration by the Trademark Registry was the Yahoo!
Yodel in the year 2008.8 After that, no such marks have come before the registry
for registration.

2. Smell Marks

When the source identifier of goods is a smell, then it is termed as Smell

Mark. Smell Marks are a lot tougher than sound marks to be registered because
they lack any form of representation. While sound marks can be presented in a MP3
“

format, smell marks lack any such characteristics. One of the serious problems with
regard to smell marks is the representation in a visual way. Writing down the
chemical formula for a smell as it is deemed to represent the substance rather
than the smell. Another problem is that the storage with the registry. If the registry
is provided with the sample of the smell, then how long will it be durable without
its smell evaporating over time is a question regarding smell marks. One of the
basic criteria for registering a smell mark is that it should describe the product it

6
file:///C:/Users/Admin/Downloads/Trademark%20Infringement%20and%20Passing%20off%20La
w%20and%20Important%20Judgments.pdf
7
http://respectfortrademarks.org/tricks-of-the-trademark/history-of-trademarks/ (last referred to on
05th Sept 2020)
8
Ibid
 9

has been applied for.9 For example, the smell of a perfume cannot be trademarked
as it would be describing the goods that is the perfume. Some of the examples of
smell marks that are registered by the USPTO are bubble gum scent for sandals,
toothbrush with the smell of strawberry, and lubricants for combustion engines
with the smell of strawberry, cherry, and grape.
In India, no smell marks have been registered to date. 10 The UK's first
smell trademark was granted to Japan's Sumitomo Rubber Co. in 1996 for a
fragrance of roses applied to tyres. The mark was later transferred to Dunlop
Tyres. The same year, Unicorn Products, a London-based maker of sports
equipment, registered a UK trademark for the strong smell of bitter beer to be
applied to darts. In India, no smell mark has been registered till date before the
registry.

3. Hologram Mark

Holography is a photographic technique that records the light scattered from an

object and then presents it in a way that appears three-dimensional. 11 A hologram
is a cross between what happens when you take a photograph and what happens
when you look at something for real. Like a photograph, a hologram is a
permanent record of the light reflected off an object. But a hologram also looks
real and three-dimensional and moves as you look around it, just like a real object.
That happens because of the unique way in which holograms are made. The major
difficulty with regard to Hologram marks is its difficulty to prove as the source
identifier of the product. American Express owns a trademark registration in USA
for a hologram that is applied on the surface of its credit card. India by far hasn’t
received any application for the registration of hologram mark.
”

4. Motion Mark

A motion mark is moving animated object or logo which is used by a

company as a marketing strategy to gain a customer base. A motion mark is made

9
P. Manoj, Yahoo Awarded India’s First Sound Mark; Nokia in Queue LIVE MINT, Aug. 22,
10
Yahoo! Yodels into India’s Trade Mark Registry MANAGING INTELLECTUAL PROPERTY
WEEKLY NEWS, Sep. 1, 2008
11
https://lawtimesjournal.in/non-traditional-trademarks/#_ftn5 last referred to on 04th Sept 2020)
 10

by using computer programs and software along with animation techniques. In

Europe, Sony Ericsson submitted a flipbook depicting of up to 20 images which “

allowed the examiner of the trademark to flick through the pages and see the
motion in the pictures. This application was initially rejected by the examiner but
was then accepted on appeal. A well-known example of a motion mark registered is
Microsoft windows logo which we see once we open the windows PC or laptop.
The opening and closing of Lamborghini doors have been protected under motion
marks by USA. Motion mark as a trademark is rarely registered as they have just
gained importance with technological advancement in this arena 12.

5. Texture Mark

Texture Marks are those which give the feel of the product through touch.
Just like smell marks, these are difficult to be registered as there can be no
representation of the feel of the texture such as fabrics, bottles, etc. They are the
least common Non-Conventional Marks. It should be noted that the texture should
not be attributed to the functional purpose of the product. Thus for example, the
texture of a toothbrush’s hair cannot be trademarked as they are supposed to be
pliable to enable its reach all inside the mouth. On April 29, 2004, the Intellectual
Property Institute of Ecuador (IEPI) issued what is, apparently, the world’s first
registration certificate for a texture trademark. IEPI found that the OLD PARR
SURFACE TEXTURE proposed mark complied with all legal requirements of the
Ecuadorian Intellectual Property Law and the Andean Community of Nations, by
way of Decision 486. 13 In the US, leather texture wrapping around the middle
surface of a bottle of wine is registered as a textured mark. In this case, the
distinctive crinkled (crackle glass) texture of the OLD PARR bottle was
reproduced on the printed page of the Ecuadorian IP Gazette by a dual-printing
process in which the inked portion was printed first, followed by a second raised
impression or embossed printing of the texture mark itself on the same page. No
texture marks have come for registration before the Indian registry.
”

6. Taste mark
12
Ibid
13
Ashley Furniture Industries, Inc. v. SanGiacomo N.A. Ltd 187 F.3d 363 (4th Cir. 1999)
 11

Taste marks are easier to be represented graphically as the written

description of the taste can be used to indicate the taste of the goods. However once
again, the challenge lies in functionality. A trademark for the taste of pizza or
pasta cannot be granted as it inherently performs the function of making the
same- i.e. adding flavour to the dishes. Thus we see thousands of chefs making
“

dishes with the same ingredients and with no or hardly any changes. Any product
meant for human consumption may inherently disqualify for taste protection
under trademark given the functionality doctrine. 14 So, Lays can’t stop
competitors from selling Magic Masala as a flavour of chips unless a maker has
stolen the trade secret of Lays. The question lies when the taste of one product is
applied to another. E.g. mango is usually associated with desserts but what if a
naan is made out of mango? The question is not whether the same would be
consumed or not, it is whether it can be granted a trademark or not. Till date, no
registration has been granted for taste marks in the world. 15 Two notable
applications for registration of taste marks came before the European Union
Intellectual Property Office (EUIPO) and the United States Patent And
Trademark Office (USPTO) but both of them ended up being rejected. Till
date, no application for having a taste mark registered has come before the
registry.

7. Trade Dress

Trade dress is the overall look and appearance of a product or packaging

that signifies the source of the product to the buyer. One of the classic examples
of trade dress is the visual appeal of a Coca-Cola bottle. The shape of the bottle,
the red label along with the red cap all comprise of trade dress. In short, trade dress
is the overall look and feel of the product. Another example of product design
trade dress is the configuration of the iPhone being rectangular with rounded
corners. Thus trade dress goes much beyond the product itself. It is about how
impactful and visually appealing is the product to the consumers. Although the
Trade Marks Act, of 1999 includes most of the aspects of trade dress under the

14
https://lawtimesjournal.in/non-traditional-trademarks/#_ftn5
15
Ashley Furniture Industries, Inc. v. SanGiacomo N.A. Ltd 187 F.3d 363 (4th Cir. 1999)
 12

definition of mark it when the aspect goes beyond the domain of a product and
starts identifying itself with aspects other than just the product. E.g. the overall
look and appeal of a restaurant.

In the case of Colgate v. Anchor16, Delhi High Court gave protection to the
colour combination of one-third red and two-third white on the container of the
plaintiff as a trade dress.

1.11.3 JURISPRUDENCE GOVERNING CONCEPT OF TRADE

DRESS

Trade dress in India is accorded common law protection in the same

manner as that of an unregistered trademark by way of obtaining relief through
passing off action against use of similar trade dress. To obtain relief under passing
off of trade dress it is the duty of the plaintiff to prove that:

 The trade dress of the plaintiff’s product has acquired distinctiveness

coupled with reputation and goodwill which is built over time so that it can
be distinguished from a competitor

 The plaintiff’s trade dress is deceptively similar and is used by a third party
to ride on the goodwill of the plaintiff’s product.

 Creation of confusion in the minds of the consumers due to similar

packaging or look or feel of the two products.17

The jurisprudence around trade dress protection has been developing in

India with various Indian courts protecting trade dress in India by considering
various aspects relating to packaging and the visual appearance of a product. We
take a look at some interesting cases below:

a) Gorbatschow Wodka K.G. v. John Distilleries Limited 18 . (May 2011,

Bombay HC): Gorbatschow Wodka (GW), one of the most premium

16
Colgate Palmolive Co v Anchor Health and Beauty Care Pvt. Ltd. (October 2003, Delhi HC)
17
Apollo Tyres Ltd. v Pioneer Trading Corporation & Ors CS(OS) 2802/2015
18
Gorbatschow Wodka K.G. v. John Distilleries Limited 2011 (47) PTC 100 Bom
 13

brands of vodka in the world have a unique bulbous shape bottle inspired by
Russian architecture which has acquired distinctiveness and goodwill over
the years. John Distilleries, an Indian company launched a product called
Salute Vodka’ with a similar shaped bottle as that of GW. In a suit for
infringement filed by GW before the Bombay High Court, it was alleged
that John Distilleries had adopted a deceptive variation of the shape of the
bottle of GW. The Bombay High Court stated that the shape of the bottle
launched by John Distilleries is deceptively similar and that it would tarnish
the image of GW if John Distilleries is allowed to sell the same. While
stopping the defendant from using the distinctive shape of the bottle on
similar lines as that of the plaintiff for selling their products, the court
held that the distinctive shapes of products and their packaging can be
”

accorded trademark protection and registered as trademarks.19

b) Colgate Palmolive Co v Anchor Health and Beauty Care Pvt. Ltd. 20

(October 2003, Delhi HC): Colgate Palmolive (CP) sought an interim
injunction against Anchor Health for use of a similar trade dress and
colour combination of red and white in relation to an identical product (
tooth powder) when the trademarks being used by the two parties were
completely different. While recognizing the concept of trade dress, the
High Court of Delhi noted that it is the overall impression that a
customer gets as to the source and origin of the goods from the visual
impression of colour combination, shape of the container, and packaging. If
an illiterate, unwary, and gullible customer gets confused as to the
source and origin of the goods which he has been using for a longer
period by way of getting the goods in a container having a particular
shape, color combination, and getup, it amounts to passing off.21

c) Christian Louboutin Sas Vs Mr. Pawan Kumar & Ors. 22 (December 2017,

19
Colgate Palmolive Co v Anchor Health and Beauty Care Pvt. Ltd. (October 2003, Delhi HC)
20
Ibid
21
Christian Louboutin Sas Vs Mr. Pawan Kumar & Ors CS(COMM), 714 of 2016
22
Supra Note at 21
 14

Delhi HC): This landmark case is the first instance in India where a court has
declared a trade dress a well-known status just like a trademark. Christian
Louboutin (CL) argued that its shoe with a red sole clearly identifies its
product distinguishing it from third parties. The ‘red sole’ trademark has
thus become the signature of CL as it has obtained trademark registrations
in different jurisdictions including India and simultaneously enjoys a
trans-border reputation where its customers across the globe are well
aware of the goodwill and reputation of the mark. The defendants were
local shoe dealers manufacturing and selling shoes with a red sole thereby
infringing CL’s trademarks. Looking into the material evidence led by the
plaintiff, the Delhi High Court permanently injuncted the defendants from
manufacturing, selling, or in any way dealing with the footwear bearing
CL’s registered trademark for Red Sole 23.

While the jurisprudence around trade dress is still at a nascent stage in

India, these cases point to the growing significance of courts according to trade
dress protection on similar grounds as that as of a trademark or a brand name that
has acquired distinctiveness over a period of time.

1.11.4 WHAT IS THE DIFFERENCE BETWEEN TRADE MARK AND

TRADE DRESS?

Trade dress constitutes a symbol or device within the meaning of §2 of the “

Trademark Act. It encompasses the total image and overall appearance of a

product, not just the packaging: the totality of the elements, including size, shape,
color or color combinations, texture, and graphics. Trade dress can be the design
of a product (the product shape or configuration), the packaging in which a
product is sold, the color of a product or of the packaging in which a product is
sold, or even the flavor of a product.

India: Protection Of Trade Dress – Developing Jurisprudence by Gautam Kumar, LexOrbis 05th
23

April 2020
 15

Trade dress is different from a trademark. A trademark protects a

word, phrase, symbol, or design, or a combination of words, phrases, symbols, or
designs, that identifies and distinguishes the source of the goods of one party from
those of others. You would likely place your trademark on a product itself or on its
packaging; trade dress is the overall look of the product, not just a name or logo.
A trademark also affords protection that trade dress does not, e.g., the ability to
prevent importation of confusingly similar goods, constructive notice of
ownership, incontestable status, and prima facie evidence of validity and
ownership. 24

A trade dress claim can also allow for treble damages, upon a finding that
the offending mark was intentionally used as a counterfeit, i.e., a spurious mark
which is identical with, or substantially indistinguishable from, a registered mark.
In addition, a preliminary injunction may be available if and only if the moving
party can demonstrate irreparable harm.

Trade dress may be registered on the Principal Register or Supplemental

Register of the United States Patent and Trademark Office (USPTO) if it is
inherently distinctive and is not de jure functional. A mark is inherently
distinctive if its intrinsic nature serves to identify a particular source. 25 The
USPTO will consider the following criteria in determining whether a mark is
inherently distinctive:

1. A common basic shape or design;

2. Unique or unusual in the field in which it is used;

3. A mere refinement of a commonly-adopted and well-known form of

ornamentation for a particular class of goods viewed by the public as a
dress or ornamentation for the goods;

4. Capable of creating a commercial impression distinct from the

24
https://ijlpp.com/trade-dress-an-evolving-concept-under-the-ambit-of-intellectual-propertyrights/
25
Ibid
 16

accompanying words.

De jure functionality means that the product has a particular shape because it
works better in this shape . If the mark is not inherently distinctive, it may still be
”

registered on the Supplemental Register as long as it is not de jure functional.26

1.12 CONCEPT OF TRADE DRESS IN THE INDIAN LEGAL

SYSTEM

Product packaging or the look of a product has nowadays become just as

essential as the product itself. A trade dress is the visual appearance of a product
or its packaging which forms an important component as the source of the product
and unlike traditional trademark law that protects words or logo, trade dress law
protects the total package and design of a product.27

As compared to the United States of America where trade dress has been
given statutory protection under Section 43(a) of the Lanham Act, trade dress is
not mentioned in the Trade Marks Act, 1999 in India. However, the definition of a
trademark under Section 2(zb) of the Trade Marks Act, 1999 includes within its
ambit shape of goods, their packaging and combination of colors28. This makes it
clear that trade dress is included within the definition of a trademark. Trade dress is
protected in the same manner as an unregistered trademark.

Trade dress in India does not require any formal registration and is
connected with reputation and goodwill which is built with time.29 In certain cases
of passing off, the mark per se may not be similar but rather be quite different.
However, the packaging, color, get up or layout can be deceptively similar which
may cause confusion in the minds of the consumers.

26
https://ijlpp.com/trade-dress-an-evolving-concept-under-the-ambit-of-intellectual-
propertyrights/
27
Section 2(zb) of the Trade Marks Act, 1999
28
Supra Note at 5
29
C.S.No.452 of 2008
 17

Hon’ble Justice J.D. Kapoor in the case of Colgate Palmolive Company v. Anchor
Health and Beauty Care Pvt Ltd30 held This criterion flows from the concept of
action of passing off developed over the years that it is the similarities and not the
dissimilarities which go to determine whether the action for passing off is
required or not. That is why in trademark cases even the deceptive similarities
are considered sufficient for infringement of the trademark. If similarities of
trade dress are substantial from the look of the two goods, it comes within the
mischief of passing off.31 This was the first case in India to accept the concept of
trade dress and provided the plaintiff protection for the same.

To obtain relief under passing off of trade dress the onus of proof is on the
“

plaintiff to prove that the image of the product has acquired distinctiveness so that
it can be distinguished from a competitor. When the distinct image of the product
is deceptively used by someone else in order to take advantage of the goodwill of
the product, it is said to be a case of passing off. 32 This is because it creates
confusion in the minds of the consumers due to similar packaging or looks or feels
of the two products.

However, the test in such cases is not whether there is actual confusion or
deceptiveness but it is whether there is a likelihood of confusion in the minds of
the consumers, even if the trademarks are not similar. The likelihood of confusion
in case of trade dress is with regard to the look and feel of the two products33.

1.12.1 LIKELIHOOD OF CONFUSION

In the case of Laxmikant v. Patel v Chetanbhai Shah34, the Supreme Court

opined that where there is a probability of confusion in business, an injunction has
to be granted even if the defendants adopted the name innocently. Most of the
passing-off cases are deliberate and intentional misrepresentations. An absence of
an intention to deceive is not a defense, although proof of fraudulent intent may

30
Colgate Palmolive Co v Anchor Health and Beauty Care Pvt. Ltd. C.S.No.452 of 2008
31
Ibid
32
Supra Note at 26
33
2002 (24) PT C 1 (SC)
34
1906 (23) RPC 774
 18

help the plaintiff in establishing deception.

It is pertinent to mention the anti-dissection rule which is followed in many

of the cases in India and is based on customer behavior. This rule has been
elaborated by the Delhi High court in the case of Himalaya Drug Co., v SBL
Limited 35 . According to this rule Compare composites as a Whole Conflicting
composite marks are to be compared by looking at them as a whole, rather than
breaking the marks up into their component parts for comparison. This is the anti-
dissection rule. The rationale for the rule is that the commercial impression of a
composite trademark on an ordinary prospective buyer is created by the mark as a
whole, not by its component parts. However, it is not a violation of the anti-
dissection rule to view the component parts of conflicting composite marks as a
preliminary step on the way to an ultimate determination of probable customer
reaction to the conflicting composites as a whole. 36

1.12.2 DECEPTIVELY SIMILAR TEST

Another criterion to decide whether it is a case of passing off is that the

two trademarks should be deceptively similar. This was decided by the Supreme
Court in the case of Parle Products (P) Ltd. v J.P. & Co., Mysore37; and held that
the defendant's wrapper was deceptively similar to that of the plaintiffs. In this
case, the plaintiff is the manufacturer of Parle G biscuits and is the owner of the
registered trademark. They also have a trademark over the color scheme, general
setup, and the entire collection of words on the packaging. Both plaintiff and
defendant are in the business of manufacturing and selling biscuits. According to
the Plaintiff they have been selling the product on an extensive scale for a number
of years and have therefore acquired goodwill among people.
”

The trial court examined the two wrappers side by side and concluded that
there were more dissimilarities than similarities between the two and therefore,
held there was no infringement on part of the Defendant. The High court upheld
35
Ibid
36
2008(4)CHN608
37
Supra Note at 36
 19

the decision of the trial court but gave its reasons. According to the High court, the
general get-up of the two wrappers was the same but that was all. It also held that
a person particularly buying Parle G biscuits would know the description and
therefore there is no infringement on part of the Defendant.38

38
Parle Products (P) Ltd. v J.P. & Co. 2008(4)CHN608
 20

However, the Supreme Court took a different viewpoint from both the
lower courts and held that to conclude whether one mark is deceptively similar to
another, the broad and essential features of the two are to be considered. They
should not be placed side by side to find out if there are any differences in the
design and if so, whether they are of such character as to prevent one design from
being mistaken for the other. 39 The Supreme Court thus held that Defendant’s
goods were deceptively similar to that of Plaintiff’s and granted the injunction in
favor of Plaintiff restraining Defendant from using the mark similar to that of
Plaintiff.

1.12.3 THE SHAPE OF PRODUCT HAVING ACQUIRED

DISTINCTIVENESS

In relation to the shape of the product, the Bombay High Court in the case
of Gorbatschow Wodka Kg v. John Distillers Limited40 had an interesting question
before it. Do shapes matter in the law relating to intellectual property law?

The Plaintiff, in this case, was a distillery owner for many years and has
been in the business of production and sale of vodka. The bottle of vodka which
Plaintiff sold became distinctive over the years and acquired goodwill. Defendant
claimed to be manufacturing vodka under the trademark Salute. Plaintiff
claimed that the shape of the bottle Defendant was deceptively similar to that of
the plaintiff’s bottle and therefore they were passing off their product to be that of
Plaintiff.

The suit of Plaintiff is for quia timet action which sought to injunct the
Defendant from launching its product in India. Hon’ble Justice Dr. D.Y.
Chandrachud held that there were broad similarities between the bottles of both
Plaintiff and Defendant. It further held that since Defendant was engaged in the
same business, it was difficult to accept that Defendant was not aware of Plaintiff's
product, which is sold both internationally and in India. The court thus concluded

39
2011 (47) PTC 100 Bom
40
Quia timet is an injunction to restrain wrongful acts which are threatened or imminent but have
not yet commenced
 21

that adopting the shape of the bottle by Defendant was not bona fide and prima
facie dishonest. It held that irreparable damage would be caused to Plaintiff if
Defendant was allowed to launch its product and therefore, the court retrained
Defendant from doing the same.

As mentioned above the Trademarks Act, of 1999 does not specifically deal
with trade dress but it has broadened the definition of Trade Marks to fit within its
realm the meaning of trade dress. Thus, Indian law now is at par with other
international laws in relation to trade dress. Therefore, the Act broadened the
definition of Trademark to include the shape of the goods, the combination of
colors, product packaging, etc. It may be observed from the abovementioned case
laws that a trademark is not what it meant a couple of years ago but has grown to
include trade dress within it. The suit for passing off need not just be for a mark or
logo but a party can be aggrieved due to similar packaging or color combinations.
All this is addressed under trade dress law and a suit for passing off may be filed.
 22

CHAPTER II

HISTORICAL DEVELOPMENT OF THE CONCEPT

OF TRADE DRESS
Though the main objective of the trademark law is to protect business
goodwill and reputation, the ultimate beneficiary is the public. Trademark as a
“

badge of origin acts as identifiers of the quality of the products thereby helping the
public in removing the confusion in their minds as to the source of the products.
There has been ever expansion in the scope of the marks, which are registered as
Trademarks. Trade dress is an example of this expansion. The concept of trade
dress has much importance in a country like India where the majority of the
population is still illiterate. Trade dress helps the illiterate people who cannot read
the trademark on the product as well as the manufacturers to reach the people
easily.

2.1 INTRODUCTION:

Trademark laws are very different from other categories of Intellectual

Property Laws. They are not concerned with inventions or creations. Trademark
laws, in essence, protect the hard-earned goodwill and reputation of a business,
individual, or commercial enterprise. Though the main objective of the trademark
law is to protect business goodwill and reputation, the ultimate benefactor is the
public. Trademark as a badge of origin acts as identifiers of the quality of the
products thereby helping the public in removing the confusion in their minds as to
the source of the products.41 Of the late, there have been many developments in
the area of trademark laws. Earlier, only marks or symbols were used to be
registered as trademarks and were protected under that mark. Now, due to the
technological revolution in the communication, media, and other areas and due to
the increased knowledge and perception of individuals, business enterprises are

41
https://www.lexology.com/library/detail.aspx?g=5f72da58-5565-483f-8d37-927f71c14af5
 23

showing more interest in registering non-conventional marks such as colour

marks, shape marks, smell marks, sound marks, advertisement slogans, trade
dress, etc. to capture the market .
”

In this chapter, we shall discuss the scope and development of trade dress
in the United States of America under the Lanham Act, 194642 with reference to
Supreme Court’s observations in the two landmark cases. We shall also see the
beginnings of trade dress protection in India in a recent case decided by Delhi
High Court, under the Common Law of Passing Off. The Indian law does not
“

have a separate provision for trade dress under its existing Trade mark legislation,
unlike the US law which recognizes the concept of trade dress under Section 43(a)
of the Lanham Act.

The new Trade Marks Act, of 1999, which came into force in September
2003 is largely based on the English Trade mark Act, 1994 recognized the concept
of trade dress on the lines of The Lanham Act. The amended Act of 1999
recognizes trade dress through the new definition of Trade mark also consists of
the shape of goods, packaging, or combination of colors or any combination
thereof. Broadly speaking, Section 2 of the Trade Marks Act, 1999 defines the
following as:

(m) mark includes a device, brand, heading, label, ticket, name, signature, word,
letter, numeral, shape of goods, packaging, or combination of colors or any
combination thereof;

(q) package includes any case, box, container, covering, folder, receptacle, vessel,
casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper an
cork; Hence the new definition of a trade mark under Indian law comprises all the
elements of the trade dress as under US law. The Indian courts have been
recognizing the concept of trade dress even before 2003.

In Cadbury India Limited and Ors Vs. Neeraj Food Products43, the Delhi
High Court held the trademark JAMES BOND as physically and phonetically

42
Lanham Act, 1946
43
[142 (2007) DLT 724]
 24

similar to the registered trademark GEMS of Cadbury. The High Court further
held the packaging of Neeraj food products 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 another recent case of
Gorbatschow Wodka v. John Distilleries 44 , the Plaintiff, Gorbatschow Wodka,
filed an infringement action before the Bombay High Court alleging that the
Defendant has invaded its intellectual property rights by adopting a deceptive
variation of the shape of the bottles of the Plaintiff.

2.2 TRADE MARKS:

Trademarks have existed for almost as long as trade itself. Once human
economies progressed to the point where a merchant class specialized in making
goods for others, the people who made and sold clothing or pottery began to mark
their wares with a word or symbol to identify the maker. Such marks often no
more than the name of the maker – have been discovered on goods from China,
India, Persia, Egypt, Rome, Greece, and elsewhere, and date back as much as 4000
years.

These early marks served several purposes. First, they were a form of
advertising, allowing makers to get this name in front of potential customers.
Second, they may have been used to prove that the goods were sold by a particular
merchant, thus helping to resolve ownership disputes. Third, the marks served as a
guarantee of quality, since a merchant who identifies himself with his goods puts
his reputation on the line. Trademark protection is awarded merely to those who
were the first to use a distinctive mark in commerce.

Trademarks can be seen as serving two main purposes: first, to protect

business reputation and goodwill, and second, to protect consumers from
deception, that is to prevent the buying public from purchasing inferior goods or
services in the mistaken belief that they originate from or are provided by another
trader. A mark may include any word, logo, device, branch, ticket, signature,

44
2011 (47) PTC 100 Bom
 25

name, shape, packaging, a combination of colors, or any combination thereof.

To a layperson, trademarks are often thought of as the public name of a producer

or other business. The Lanham Act defines a trademark as the term trademark
includes any word, name, symbol or device or any combination thereof
1. Used by a person, or
2. Which a person has a bonafide intention to use in commerce and
applies to register on the principal register established by this Act, to
identify and distinguish his goods, including a unique product, from those
manufactured or sold by others and to indicate the source of the goods, even
if that source is unknown 45.

As a direct result, a trademark serves to both identify and distinguish the

seller’s goods to prevent consumer confusion. The basic statutory definition of a
trademark appears simple and indicates the basic function of a trademark. The basic
requirements may be summed up as:

1. The sign can be represented graphically and it should be distinctive,

2. Can serve the function of distinguishing the goods or services of

one undertaking from those of other undertakings;

3. The mark must be used or intended to be used in the course of trade;

and

4. The use must be of visual representation of the mark/sign.46

The European Court of Justice in Canon Kabushiki Kaisha Vs. Metro Goldwyn
Mayer Inc47 has stated, the essential function of the trademark is to guarantee the
identity of the origin of the marked product to the consumer or end user by
enabling him without any possibility of confusion, to distinguish the product or
service from others that have another origin . ”

In the USA marks may be classified in the increasing distinctiveness:

generic, descriptive, suggestive, arbitrary, or fanciful. Marks that are deemed

45
The Lanham Act s. 2
46
Supra Note at 45
47
Canon Kabushiki Kaisha Vs. Metro Goldwyn Mayer Inc 22 Case C-39/97
 26

suggestive, arbitrary, and fanciful are entitled to trademark protection because of

their intrinsic natures to identify a particular source of a product. In comparison,
generic marks are those that refer to the genus of which the particular product is a
species, for example, aspirin, or thermos. These marks are not protectable 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 descriptive
functions in relation to a product may be protectable under trademark law as
inherently distinctive. A distinctive term identifies a characteristic or quality of an
article or service such as color, odor, function, dimensions, or ingredients. Over
time, a descriptive mark may acquire distinctiveness that allows it to be protected
under the Lanham Act. This type of acquired distinctiveness is called secondary
“

meaning. Secondary meaning is established when a manufacturer shows that, in

the minds of the public, the primary significance of a product feature or term is to
identify the source of the product rather than the product itself. 48
When a trademark is immediately capable of identifying a unique product
source, rights to the mark are determined solely by priority of use. Marks such as
these are labeled inherently distinctive though for analytical completeness they are
further subdivided into arbitrary, fanciful, and suggestive marks. For all other
trademarks – those deemed not inherently distinctive – the Lanham Act requires
proof of an additional element to secure trademark rights i.e. secondary meaning.

2.3 TRADE DRESS:

We know that logos, symbols, and names of products and companies can
be afforded protection under trademark law, but that is a very narrow view of
what trademark law now protects. Although it has limits, trademark law, in the
US, through Lanham Act, will also protect slogans, phrases, packaging of
products, and even the look of the product itself. Furthermore, case law has

48
https://ijlpp.com/trade-dress-an-evolving-concept-under-the-ambit-of-intellectual-
propertyrights/
 27

interpreted Lanham Act expansively. While determining what can qualify as a

trademark, the Supreme Court has stated that the language of the Lanham Act
described Universe in the broadest of terms in Qualitex Co. Vs. Jacobson
Products49 case.
Trade dress involves the total image of a product and may include features
such as size, shape, colour or colour combinations, textures, graphics, or even
particular sales techniques. Trade dress can be registered under section 2 of the
Lanham Act, 1946. However, even without registration, non-functional,
distinctive trade dress is protected under section 43(a) of the Lanham Act
(forbidding false designations of origin and false descriptions). This section is
commonly referred to as providing federal common law protection for trademarks
and related source identifiers. Trade dress can be registered as a trademark with
the United States Patent and Trademark Office (USPTO) if the trade dress is: 1)
inherently distinctive or has acquired secondary meaning, and 2) is non-functional.
While trade dress protection is not expressly set forth in the Lanham Act, it has
evolved and been recognized through the development of case law.

The Lanham Act protects Trade dress by preventing a second-comer from

offering a product or package that may cause consumer confusion with the first-
comers product or package. To offer this broad protection, courts have
continually expanded trade dress protection. Currently trade dress law protects
almost any non-functional element that the ordinary purchaser sees including a
product’s overall image, including its size, shape, colour, graphics, packaging,
label, texture, colour combinations, and specific sales methods. Although often
noting these individual factors/ elements, courts will focus on the total
combination of these elements in a product’s design when determining trade dress
infringement.

To prove trade dress infringement, a plaintiff must show

1) that the product is either inherently distinctive or has acquired a

secondary meaning and

49
514 U.S. 159
 28

2) that there is a likelihood of confusion between plaintiff’s packaging and

defendant’s packaging. 50

Traditionally, trade dress referred only to the overall appearance of a product.

Throughout the 1980s, the term was expanded to include the shape and design of
the product itself. Products such as lightweight nylon bags, Rubik’s cubes, and
even teddy bears were held to have a protectable trade dress. Since the courts
concern is with protecting consumers from confusion as to source when granting
trademark or trade dress protection, the consumer has to first connect the trademark
or trade dress with a potential source of the product. This source significance of a
mark is known as its distinctiveness. In other words, a mark must have become
distinctive of the applicant’s goods in commerce in order to deserve trademark
protection.

2.3.1 TWO PESOS CASE:

In Two Pesos Inc. v. Taco Cabana Inc. 51 , Taco Cabana, a Mexican

restaurant chain sued Two Pesos, a rival Chain, claiming that Two Pesos
deliberately copied Taco Cabana’s Decor. Taco Cabana argued that the
restaurant's trade dress, a combination of non-functional features such as bright
festive colors and distinctive roof design, created a distinctive total image for its
restaurant chain. As a result of the distinctive image, Taco Cabana claimed it was
entitled to trademark protection under the Lanham Act. The trial court agreed and
held that the trade dress may include the shape and general appearance of the
exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the
décor, the menu, the equipment used to serve the food, the servers uniforms and
other features reflecting on the total image of the restaurant. The judge found that
Two Pesos intentionally and deliberately infringed Taco Cabana’s trade dress and
awarded Taco Cabana millions of dollars in damages. The court, in a unanimous
decision, held trade dress that is inherently distinctive is protectable under section

50
Samsonite Corporation v Vijay Sales 73 (1998) DLT 732
51
505 U.S. 763 (1992)
 29

43(a) of the Lanham Act without a showing that it had acquired secondary
meaning. In its decision, the Supreme Court rejected the argument that competition
would be hindered by the protection of trade dress design and shape. The Supreme
Court went on to hold that requiring secondary meaning for a non-descriptive
trade dress would hinder improving or maintaining the producer’s competitive
position. The court concluded that any less protection given to trade dress would
be contrary to congressional intent and would undermine the purposes of the
Lanham act, of 1946. In fact, according to the court, trade dress, as well as
trademarks, must be protected to secure to the owner of the mark the goodwill of
his business and to protect the ability of consumers to distinguish among
competing producers…. Trademarks foster competition and the maintenance of
quality by securing to the producer the benefits of good reputation.52 The Supreme
Court believed that by protecting the producer’s property rights in trade dress, the
consumer benefited from less confusion, assurance of predictable quality, and
increased competition.
”

Unfortunately, the Supreme Court in Two Pesos did not provide clear
guidance as to which test to apply in trade dress cases in order to determine
whether the trade dress is inherently distinctive. The court accepted the Jury’s
findings from the district court that the elements of trade dress, in this case, were
inherently distinctive and ruled only on whether secondary meaning was further
required. After the two Pesos decision, the circuit courts struggled with the
boundaries and definitions that needed to be clarified to have uniformity in this
area of trademark law.

The Circuit Courts were divided on the question of the test to be adopted
in finding the inherent distinctiveness of the trade dress after the Two Pesos case.
They developed some tests to be adopted in finding the same. In I.P. Lund
Trading Apps v. Kohler Co53. the First Circuit court followed the test adopted by
the Court of Customs and Patents Appeals (CCPA) in Seabrook Foods, Inc. Vs. Bar
Well Foods Ltd. The Seabrook Foods test was whether the design and shape of a

52
Supra Note at 52
53
18 F. Supp. 2d 92 (D. Mass. 2000)
 30

combination of elements is so unique, unusual or unexpected that one can assume

without proof that it will automatically be perceived by customers as an indicator
of origin – a trademark54.
“In the Knit waves, Inc. v. Lollytags Ltd. 55 case, the second circuit was
found that the proper inquiry for determining inherent distinctiveness was to ask
whether product features were likely to serve primarily as a designator of the
origin of the product. It observed that trade dress (product feature or appearance)
must demonstrate that the primary purpose behind the design was to identify its
product source.
In Duraco Products, Inc. v. Joy Plastic Enterprises 56 case, the Third
Circuit court formed a new test in determining the inherent distinctiveness of trade
dress. The court said that the product configuration must be
1) unusual and memorable;

2) conceptually separable from the product; and

3) likely to serve primarily as a designator of the origin of the product.

The Fourth Circuit in Ashley Furniture Industries, Inc. v. Sangiacomo N.A.

Ltd. 57 case applied the Aber Crombie Classifications and rejected the tests
fashioned by the first, second, and third circuits.

Finally, the Eighth circuit visited the Two Pesos analysis in Stuart Hall Co.
v. Am pad Co 58 . case. This court sought to determine the proper test for
determining inherent distinctiveness in trade dress. It said that Supreme Court in
Two Pesos held that product configuration and product packaging should be
treated uniformly and applied the Abercrombie analysis.

2.3.2. WAL-MART STORES CASE

54
568 F.2d 1342 (C.C.P.A. 1977)
55
Ibid
56
1995. 71 F.3d 996 (2d Cir. 1995)
57
40 F.3d 1431
58
187 F.3d 363 (4th Cir. 1999)
 31

The issue of trade dress and inherent distinctiveness revisited by the

Supreme Court in Wal-Mart, Inc. Vs. Samara Bros., Inc.59. In this case, Samara
Brothers, Inc. designs and manufactures a line of children’s clothing. Samara
Brothers' primary line of clothing is a line of spring/ summer one-piece seersucker
outfits decorated with appliqués of hearts, flowers, fruits, and the like. Wal-Mart
is a national retailer that sells, among other things, children’s clothing. In 1995,
Wal-Mart contracted with a supplier to manufacture a line of children’s outfits
based on the Samara Brothers Line of seersuckers for sale in the 1996 spring/
summer season. Walmart provided the manufacturer with photographs from the
Samara Brothers line and the supplier dutifully copied sixteen garments, with only
minor modifications. Wal-Mart subsequently sold the Knock-off Seersuckers in
1996 for a gross profit of $ 1.15 million. Samara Brothers learned of Walmart’s
actions in June 1996 and filed suit in the US District Court for the southern
district of New York, alleging that WalMart’s sale of the knockoffs infringed the
unregistered trade dress in its seersucker line of clothing.

The court in this case, overwhelmingly made more sense to limit Two
Pesos and reign in the expanding scope of protection afforded to unregistered trade
dress under section 43(a) of the Lanham Act than it did to maintain the status quo
and allow the scope of section 43(a)’s protection to expand further. Justice Scalia,
writing for a unanimous Court, stated, a product’s design is distinctive, and
therefore protectable, only upon a showing of secondary meaning.60
Justice Scalia began the opinion by remarking that a products trade dress is
properly considered a symbol or device subject to protection under Lanham Act
Section 43(a), notwithstanding the lack of textual protection for trade dress and
that the protection afforded to trade dress under sec. 43(a) has recently expanded
to include not only product packaging but also the design of the product itself.
Justice Scalia went on to point out that although section 43(a) includes no textual
distinctiveness requirement, the courts have universally applied a distinctiveness
requirement to trade dress cases because:

59
51 F.3d 780, 783
60
529 U.S. 205 (2000)
 32

a) without distinctiveness, a particular trade dress would not confuse

as to the origin, sponsorship, or approval of the subject goods as required by
section 43(a), and

b) the requirement for registering a mark (or trade dress) under

section 2 of the Lanham Act are generally applicable in determining
whether a mark (or trade dress) is protected under section 43(a) 61.

Justice Scalia also explained that the distinctiveness requirement could be

satisfied in one of two ways. First, a mark (or a product's trade dress) is inherently
distinctive if its intrinsic nature serves to identify a particular source. Second, a
mark or a product's trade dress can acquire distinctiveness even if it is not
inherently distinctive if it has developed secondary meaning. A mark or trade
dress develops secondary meaning when in the minds of the public the primary
significance of a mark is to identify the source of the product rather than the
product itself. 62

Justice Scalia specifically noted that the foundation for differentiating

between marks that are inherently distinctive and marks that have developed
secondary meaning is found in section 2 of the Lanham Act. Furthermore, section
2 of the act specifically states that nothing there in will prevent the registration of
a mark used by the applicant, who has become distinctive of the applicant's goods
in commerce, however, nothing in the act demands the confusion that every
category of mark necessarily includes… some marks that are inherently distinctive.
Moreover, with respect to at least one category of a mark – colors held that no
mark could ever be inherently distinctive . ”

Having laid the groundwork to follow the reasoning of the Qualitex rather
than Two Pesos, the Wal-Mart decision effectively sounded the death knell for the
doctrine of inherent distinctiveness in product configuration by echoing that
design like color is not inherently distinctive. The court proceeded by clarifying
that word marks and product packaging commonly derive their inherent

61
Wal-Mart, Inc. Vs. Samara Bros., Inc 529 U.S. 205 (2000)
62
Ibid
 33

distinctiveness, from the fact that the very purpose of attaching a particular word
to a product or encasing it a distinctive packaging, is most often to identify the
source of the product. Consumers are predisposed to regard such symbols as an
indication of the producer, which is why such symbols almost automatically tell a
customer that they refer to a brand63.
In distinct contrast, however, product designs, like color, differ because
consumer predisposition to equate the design feature with the source does not exist.
On the contrary, Consumers are aware of the reality that, almost invariably, even
“

the most unusual of product designs such as a cocktail shaker shaped like a
penguin – is intended not to identify the source, but to render the product more
useful or more appealing 64 . Wal-Mart is an apparent attempt by the court to
judicially recognize this reality.

The Wal-Mart Court reasoned that requiring a pre-requisite showing of

secondary meaning for unregistered product designs would ultimately serve to
protect new market entrants from anti-competitive strike suits, by removing an
environment that facilitates plausible threats of suit against new entrants based
upon alleged inherent distinctiveness.

Ultimately, the court reasoned that any apparent harshness of their view, a
bright-line rule was intimated by a producer's ability to seek a design patent or
copyright protection for the design of his products. It also reiterated that its
decision in Wal-Mart was not in direct conflict with Two Pesos and that Two
Pesos had absolutely no bearing on the Wal-Mart case because the design of the
restaurant in Two Pesos was more akin to product packaging or some ‘tertium
quid’ than it was to product design. 65
The motivation behind the Supreme Court's approach was confirmed when,
in closing, it provided the following advice to courts confronted with
distinguishing between product design and product packaging trade dress: to the
extent that there are close cases… courts should err on the side of caution and

63
Supra Note at 62
64
Wal-Mart, Inc. Vs. Samara Bros., Inc 529 U.S. 205 (2000)
65
Ibid
 34

classify ambiguous trade dress as product design, thereby requiring secondary

meaning.

The Supreme Court’s holding in Walmart will serve to make it more

difficult to make a showing of distinctiveness in product configuration trade dress
cases. Since secondary meaning is not an essential element in these cases,
businesses that want to protect their product designs in this area will have to prove
that consumers associate the challenged trade dress with a source. This can be
done through testimony and survey evidence or through the Lanham Act itself,
which provides for a rebuttable presumption of secondary meaning after five years
of continuous use. By imposing this additional burden on product configuration
trade dress cases, newer products and product lines will have a heavy burden of
proof to get trade dress protection. The Supreme Court itself acknowledges that
secondary meaning must be proved by necessarily imperfect (and often
prohibitively difficult) methods. Justice Scalia, in Walmart, dismisses the
additional burden on producers that might possibly have an inherently source-
identifying product design by suggesting that they secure a design patent or a
copyright for the design66.

2.4 PRODUCT DESIGN TRADE DRESS v. PRODUCT PACKAGE

TRADE DRESS
At the heart of trademark law is the desire not to confuse the consumer:
not to confuse the consumer as to the source of the goods and not to confuse the
consumer as to the quality of the goods. The Supreme Court’s decisions in Two
Pesos and Wal-Mart would seem to indicate that consumers would be easily
confused by two restaurants that are decorated in a similar manner but who have
their trademark names (which are not confusingly similar) emblazoned on their
respective buildings in three-foot-high letters than by two lines of children’s
clothing that were meant to mimic each other and that are distinguishable only by
a small, cloth label sewn into the inside seam. Besides the obvious physical

66
Wal-Mart, Inc. Vs. Samara Bros., Inc 529 U.S. 205 (2000)
 35

differences between the two situations, today’s consumers also face potential
confusion in distinguishing between the house and national brands, which flood
the marketplace.67 By drawing artificial distinctions between product packaging
and product configuration, courts separated trade dress law into two categories.
Under the rubric of trade dress product packaging is the actual package in which a
product is marketed. Examples of product packaging include the can for PAM
Cooking spray, OUZO Liquerer bottler, etc.

Trade dress protection also extends to the very design of the product itself,
such as its configuration or shape. Product configuration, as distinguished from
product packaging, involves the product's own three–dimensional shape for
example the shape and appearance of FERRARI automobiles.

The lines of demarcation, however, are not always clear. Some trade dresses will
not fit easily into either category. Product configuration cases have developed the
most controversial area of trade dress law.

2.5 FUNCTIONALITY – A BAR TO TRADE DRESS PROTECTION

In Inwood Laboratories, Inc. v. Ives Laboratories70 case, the court

articulated what became the standard test for functionality in trade dress cases:
that a product feature is functional if it is essential to the use or purpose of the
article, or if it affects the cost or quality of the article.
The sixth circuit in Trafix’s case 68 said that due to several possible alternative
designs available to competitors, the dual spring design of MDI was not
necessarily functional. The Supreme Court reversed and held that the Court of
Appeals erred on functionality in two ways. First, the court held that a utility patent
is a strong evidence that the features therein claimed are functional. Second, the
court considered functionality without the inference of strong evidence from the
patent69. The court restated the In wood case language and held that the necessary
test for functionality was not whether the particular product configuration was a
competitive necessity. Instead, the court said that if the design meets the Inwood
67
Ibid
68
Wal-Mart, Inc. Vs. Samara Bros., Inc 529 U.S. 205 (2000)
69
456 U.S. 844 (1982)
 36

test, then there is no need to go further since that test alone demonstrates
functionality. It said that once a design is determined to be functional, the courts
should go no further, and there is no possibility of Lanham Act protection.
”

2.6 AN OVERVIEW OF INDIAN POSITION ON THE CONCEPT OF

TRADE DRESS IN PARTICULAR BACKDROP OF DESIGN IDEAS IN
THE AUTOMOBILE INDUSTRY

A design or design patent is a form of intellectual property that is judged

solely on the basis of an appeal to the eye. To elaborate, a utility patent is usually
available for functional aspects of an automobile (such as a new and nonobvious
air-conditioning system), while a design patent is available for its ornamental
“

features (such as the look of the automobile not dictated by functional features or
the design of its grill). The purpose of obtaining a design registration is to protect
novel shapes/configurations/designs devised to be applied to articles that are
manufactured and marketed commercially and the design in question may be a
two or three-dimensional representation of a particular feature. In the case of
automobiles, designs (as a feature) have evolved significantly from the wooden
frame cars of the 19th century to cars made entirely of steel in the 1920s to the
recent Cybertruck.70 Some famous automobile designs that have been registered in
the past include steering wheels of cars, rear-view mirrors, protective coverings,
and even the whole car/automobile itself.

Design law places immense importance on ocular impression and whether

an instructed eye is able to draw a distinction between a new design and an
existing version of a product – in other words, to qualify for protection as a
design, a product (or its feature/s) must satisfy the test of novelty and originality.
To claim novelty and originality in India, a design must be either new or original
i.e. the shape/pattern must be wholly new or if it is old, its application to a
particular subject matter is new, hence making it original. 74 Further, an instructed
eye is one that is able to discern what is a common trade knowledge or examine
novelty that is so striking and substantial that it merits registration.

70
532 U.S. 23
 37

Legal Raison D'etre

It is the nature of the automobile industry that the look of different models
is updated from time to time – mostly for a new aesthetic – which makes the
protection of novel designs in this domain significant. Protection for automobiles
under design laws is near ubiquitous – it is available under the national legislation
of most jurisdictions. Additionally, the Hague Agreement Concerning the
International Registration of Industrial Designs75 allows industrial designs to be
protected in multiple countries or regions with minimal formalities. Presently, India
is not a signatory to the Hague Agreement. However, India is a member of the
Paris Convention 71 and hence, priority can be claimed from a convention
application if the design application in India is filed within six months of the
priority date of an application filed in any country or group of countries or
member of inter-governmental organizations to which the Paris Convention
applies. The same is also recognized in the Designs Act in India 72.

The aesthetics of any article or product of manufacture, including

automobiles and their parts/features are protected and registered in India under the
Designs Act 2000 and Designs Rules 2001, as amended in 2008. A design is a
feature of shape, configuration, pattern, ornament, or composition of lines or
colors applied to any article by any industrial process or means. The said design
must be new or original; it can be two-dimensional or three-dimensional and should
be capable of being made and sold separately. Also, the design of the finished
article should appeal to and be judged solely by the eye. Any mode or principle of
construction of a mere mechanical device and any trademark or artistic work is
excluded from protection as a design. Thus, the statute provides protection only
for designs that have novelty, are aesthetic in nature, are applied to articles, and
are not dictated by a functional feature . ”

Though cases in India concerning the protection of designs vis-à-vis

71
https://ijlpp.com/trade-dress-an-evolving-concept-under-the-ambit-of-intellectual- property
rights/
72
Supra Note at 59
 38

cars/automobiles as a whole are hard to identify, we do have judgments relating to

designs re components of cars. In B. Chawla v Bright Auto Industries78, Bright
Auto Industries – engaged in the manufacture and sale of rear-view mirrors – filed
for cancellation of the appellant's designs on the basis of lack of originality. The
question before the court was whether the addition of a further curve on any side
of the rearview mirror made the variation striking enough or substantial enough to
constitute novelty for registration of the design. It was finally held that the design
was a mere trade variant as the innovation claimed was too insignificant to qualify
as a novel/original design. Additionally, in the case of Apollo Tyres Ltd. v Pioneer
Trading Corporation & Ors73 the alternate remedy of passing off under common
law was claimed and reliance was placed on trademark rights over the tread
pattern of tyres. The court, while dealing with whether tyre grooves/treads were
functional in nature, concluded that since the same functionality could be achieved
by other means, the defendant was guilty of passing off its tyre tread as that of the
plaintiff.

“Incidentally, the remedy for passing off for designs is not statutorily
recognized but there are judicial precedents providing the same. To illustrate, in a
landmark judgment – Carlsberg v Som Distilleries74 – a five-judge bench of the
Delhi High Court dealt with the concept of design infringement and passing off in
beer bottles. The court held that owing to common questions of law and fact
between the causes of action of infringement of registered designs and passing off,
the two suits could be combined and heard together as one composite suit.
Additionally, in the case of Crocs U.S.A. Inc. v Action Shoes & Ors 751, the Delhi
High Court while dealing with infringement and passing off of footwear,
discussed the interplay between trademark and design law, to adjudicate on
whether trademark rights could be claimed over a registered design. Holding to
the contrary, the court stated that a broad claim of passing off under trade dress
and overall get-up could be made provided that there existed an additional/extra
feature to the registered design that qualified as subject matter for trademark
73
Hague Agreement Concerning the International Registration of Industrial Designs
74
Paris Convention for The Protection Of Industrial Property, 1883
75
AIR 1981 Delhi 95
 39

protection. If there is a car design that is protected under design law wherein an
additional feature of the car (let us assume an extra tail light) has accrued
significant goodwill and reputation, such that it is only associated with the
proprietor, in such a scenario, an infringer could be restrained from using this
additional tail light as a part of its design by means of the common law remedy
of passing off. Additionally, this remedy of passing off would be available even
after the design registration has lapsed. The discussion on the jurisprudence
relating to automobiles would not be complete without addressing intellectual
property issues pertaining to auto spare parts. While spare parts in themselves
could be the subject matter of a design registration (provided that their design is
devoid of any functional aspect), we have encountered several cases of
trademark infringement and passing off wherein spare parts are labeled with a
certain brand name indicating their corresponding compatibility with a certain
vehicle. A defense that is recognized through precedents and followed in practice
is specifying on the spare part that it is suitable for the vehicle model of a third
party. In the recent case of Elofic Industries & Anr. v Mobis India Limited &
76
Act ., wherein the infringing entity manufactured filters to be used in
automobiles, the court deliberated on what would be the most appropriate way
of non-infringement/fair use by a spare part manufacturer. The court had held that
the use of the phrase adapted to form a part of along with the registered trademark
would be an apt way of breaking the trade connection between the spare part
manufacturer and the trademark owner. There are several such cases pending
before the Delhi High Court which would settle the legal position as to whether
such usage would constitute trademark infringement or not.

To Be (a Copyright) or Not To Be:

Copyright in design drawings the designs of all automobiles and their various
features originate from ideas embodied in sketches, blueprints, and drawings. Are
such two-dimensional blueprints protectable as designs? Do they enjoy copyright
protection? There can be a significant overlap between copyright and design
76
CS(OS) 2802/2015
 40

protection since designs too can be represented and registered in two- dimensional
formats. However, what happens when a blueprint of a design yields a design
(product) that is entitled to protection as a design in its own right? Does the
blueprint in itself qualify as an artistic work or is it covered under the protection
granted to the final finished design? This question has long been debated by
courts across jurisdictions.

The Indian Copyright Act provides that once a design is registered under
the Designs Act, it cannot be protected under copyright. An exception is made for a
design that qualifies for protection under the designs statute but is not registered
under it. In this instance, copyright protection is available to the said design
provided it has not been applied by means of an industrial process and not more
than fifty copies of the said design have been made.

Several judicial precedents have addressed this overlap. In Samsonite

77
Corporation v Vijay Sales , the courts held that drawings used to
make/manufacture suitcases were distinct from drawings constituting artistic
works. In this case, drawings of the suitcase were capable of design registration
but were not registered. However, there was no artistic element in the drawings
for them to qualify for protection under copyright law and multiple
reproductions had been made. In the case of Microfibres Inc. v Girdhar & Co.78, a
copyright infringement action was brought against an entity that used the
same/similar pattern in relation to upholstery fabric. The court in this instance had
qualified the pattern to be a 'design' and not an 'artistic work' protected under
copyright law, and hence, the claim of copyright infringement did not hold as the
unregistered design lost its copyright owing to multiple reproductions. Applying
this principle to automobiles and cars, in circumstances where a blueprint is made
for the design of a car, the blueprint in itself would be registrable as a design
under the designs act. In the event that such a design registration is not obtained, a
copyright in the said blueprint would subsist only while fewer than 50 cars were in
existence with the said blueprint. The blueprint in itself, would not qualify as an

77
2017 SCC OnLine Del 8125
78
CS(COMM) No. 903/2018
 41

artistic work and hence, independently, no copyright would lie in the same 79.

79
73 (1998) DLT 732
 42

CHAPTER III

INTERNATIONAL TREATIES AND CONVENTIONS

TO PROTECT TRADEMARKS WITH SPECIFIC
REFERENCE TO TRADE DRESS

3.1 PARIS CONVENTION (Paris Convention for The

Protection Of Industrial Property, 1883)

Article 1 (2) of the Paris Convention (Stockholm Act of 1967) stipulates that the
protection of industrial property has as its object patents, utility models, industrial
designs, trademarks, service marks, trade names, an indication of source or
appellations or origin, and the repression of unfair competition80.

The Article 5 of the Convention conformingly provides that industrial designs

shall be protected in all the countries of the Union 81 . However, the Paris
Convention, not clearly providing a definition of industrial designs, leaves it to
each individual country of the Union to decide how to protect them under domestic
law .”

Article 5B of the Convention provides that the protection of industrial designs

shall not, under any circumstances, be subject to any forfeiture, either by reason of
failure to work or by reason of the importation of articles corresponding to those
which are protected82. Thus, the Convention prohibits countries of the Union from
imposing sanctions which forfeit protection of an industrial design under domestic
laws due to a failure to work or the importation of an article incorporating the
industrial design which should be otherwise protected.

80
[2009 (39) PTC 21 (Del.)]
81
Article 1 (2) of the Paris Convention (Stockholm Act of 1967)
82
Article 5 of the Paris Convention (Stockholm Act of 1967)
 43

3.2 HAGUE AGREEMENT (The Hague Agreement Concerning

The International Deposit of Industrial Designs, 1925)

Based on the provision of Article 19 of the Paris Convention83, some of

the countries of the Union gathered in The Hague in 1925 to make a special
arrangement for the protection of industrial designs. This is The Hague
Agreement Concerning the International Deposit of Industrial Designs.

In 1934, the Hague Agreement was revised in London with Article 1 reading:

Nationals of any of the contracting countries, as well as persons who, upon the
“

territory of the restricted Union, have satisfied the conditions of Article 3 of the
General Convention, may, in all the other contracting countries, secure protection
for their industrial designs by means of an international deposit made at the
International Bureau of Industrial Property at Berne.84

The Article 1 was later revised in The Hague in 1960 to read:

(1) The contracting States constitute a Special Union for the

international deposit of industrial designs and
(2) Only States members of the International Union for the
Protection of Industrial Property may become party to this Agreement85

The Hague Agreement was an arrangement made in 1925 mainly by

European countries from the contracting States of the Paris Convention, who
adopted a non-examination system for the protection of industrial designs. They
did not requiring the substantive examination of applications for their registration
in regard to items such as novelty. With respect to the Hague Agreement, the
London Act of 1934 became effective, and the Hague Act of 1960 became
effective for some of the countries by means of the Geneva Protocol of 1975.

As a result, the relations between contracting countries can be divided into the
following three groups according to each Act effectuated by the Hague

83
Article 5B of the Paris Convention (Stockholm Act of 1967)
84
Article 19 of the Paris Convention (Stockholm Act of 1967)
85
Article 1 Hague Agreement Concerning the International Deposit of Industrial Designs, 1934
 44

Agreement.

 Group I: Countries for which only the London Act is effective

 Group II: Countries for which only the Hague Act is effective

 Group III: Countries for which both the London Act and Hague Act are
effective

3.3 LONDON ACT, 1934 (effective)

The London Act is an arrangement mainly based on the principle of a

copyright-oriented approach for the protection of industrial designs. 1934 Act of
the Hague Agreement is characterized by the fact that the right becomes effective in
the designated country immediately after the design is deposited at the
International Bureau. In other words, the international deposit of an industrial
design means a unilateral declaration of its ownership by its creator. No individual
examination is conducted in each designated country.

3.4 HAGUE ACT, 1960 (effective)

The Hague Act was revised by coordinating each country’s wishes while
trying to provide contracting countries, including those conducting novelty
examinations with an opportunity to obtain more effective protection through an
international deposit. This Act came into effect on August 1, 1984. The key point of
the Hague Act is that, while the deposit at the International Bureau has the same
effect as completing all the application procedures in each designated country,
designated countries with domestic laws that can refuse protection according to
examination or opposition are obligated to notify the International Bureau of their
refusal within six months from the receipt of the periodical bulletin from the
Bureau. In other words, countries having domestic laws that require a substantive
examination for novelty are allowed to have a right to refuse the protection.
 45

3.5 GENEVA ACT, 1999 (not effective)

WIPO concluded the Geneva Act for the purposes of geographically

expanding the effects of the Hague Agreement by incorporating contracting states
such as Japan, the United States, South Korea and Britain where a strict substantive
examinations covering novelty and creativity (unobviousness) are required on the
basis of a patent-oriented approach. Applications are filed with the International
Bureau of WIPO, and international applications may be filed through a domestic
office by designating a contracting state. Designs are registered by the
International Bureau and are collectively managed by the International Register.
Internationally registered designs are publicized in the international design
gazette, which is sent to the Patent Office of each contracting state, but countries
where an examination is conducted must finish a trial examination within a
prescribed period and decide whether designs should be registered or refused. The
protection period for international registration is fifteen years from the registration
date (filing date), and the renewal registration fee must be paid every five years.
This Geneva Act will not come into effect until and unless at least three countries
that have more than 3,000 applications annually under domestic laws join the Act,
and as of January 2003 the Act has not become effective, though some countries
have ratified it.

In, 2002, Estonia, Slovenia, Switzerland and Ukraine adhered to the

Geneva Act of the Hague Agreement. The total number of contracting states on
December 31, 2002, was 7. The act will enter into force three months after six
states have deposited their instruments of ratification or accession provided that,
according to the most recent annual statistics collected by WIPO, at least three of
those states fulfill at least one of the following conditions:

I.at least 3,000 applications for the protection of industrial designs have been
filed in or for the state 8 concerned, or

II.at least, 1,000 applications for the protection of industrial designs have been
 46

filed in or for the state concerned by residents of states other than that state.

3.6 THE WORKING GROUP On the Establishment of New

Regulations under the Hague Agreement (hereinafter the
Working Group), Geneva

Convened by the Director General of WIPO the Working Group functions

with a view of discussing a proposal of the International Bureau for the
establishment of Common Regulations under the 1999 Act, the 1960 Act and the
1934 Act of the Hague Agreement.86

The following member States of the Working Group were represented at

the session: Estonia, France, Germany, Greece, Hungary, Italy, Netherlands,
Republic of Moldova, Romania, Slovenia, Spain, Switzerland, the former
Yugoslav Republic of Macedonia and Ukraine (14).87

The following States were represented by observers: Croatia, Ireland,

Japan, Latvia, Mexico, Norway, Portugal, Republic of Korea, Sri Lanka, Sweden
and the United States of America (11). 88

The following intergovernmental organizations were represented by 1

Member States of the Working Group comprise member States of the Hague
Union and any States having ratified or acceded to the 1999 Act of the Hague
Agreement.89

Observers were Benelux Designs Office (BBDM), Commission of the

European Communities (CEC) and Office for Harmonization in the Internal
Market (OHIM) (3).The following international non-governmental organizations

86
https://law.jrank.org/pages/10981/Unfair-Competition-Trade-Name-Trademark-Service-Mark-
Trade-Dress-Infringement.html (last referred to on 07th Sept 2020)
87
https://www.lexology.com/library/detail.aspx?g=ecb16a82-4a52-47aa-8d0c-901478bfbdb5 (last
referred to on 05th Sept 2020)
88
Ibid
89
Supra Note at 91
 47

were represented by observers: American Intellectual Property Law Association

(AIPLA), Center for International Industrial Property Studies (CEIPI), Japan
Patent Attorneys Association (JPAA), International Chamber of Commerce (ICC),
International Council of Societies of Industrial Design (ICSID), International
Federation of Industrial Property Attorneys (FICPI) and Union of European
Practitioners in Industrial Property (UEPIP) (7).90

The Working Group discussed the draft Common Regulations proposed by

the International Bureau, as contained in documents H/WG2/2 and H/WG/2 Add.
It also considered the notes concerning the proposal for Common Regulations, as
contained in document H/WG/3. The Working Group agreed to propose to the
Assembly of the Hague Union that it approve the inferred consequences related to
the recording of changes in ownership in the International Register, as set out in
Notes 21.04 and 21.05 of document H/WG/3.91

The Working Group has planned to draft Common Regulations should be

submitted to the Assembly of the Hague Union for adoption at its next session. The
Working Group agreed that the Assembly of the Hague Union should be invited to
decide that the Common Regulations should enter into force on April 1, 2004, or
on the first day of the month following the date of entry into force of the 1999 Act,
whichever is the later. The Working Group agreed that the Assembly of the Hague
Union should be invited to decide that, as from the date of entry into force of the
Common Regulations, the latter should replace both the Regulations under the
1999 Act and the Regulations under the 1960 Act and the 1934 Act.

90
Supra Note at 92
91
https://www.priceheneveld.com/practice/trade_dress/ (last referred to on 04th Sept 2020)
 48

3.7 LOCARNO AGREEMENT (Locarno Agreement

Establishing an International Classification for Industrial
Designs, 1968)

Revised in 1979 in Stockholm, this agreement sets forth an international

classification for articles representing designs. It is composed of (i) main classes
and sub classes, and (i) an alphabetical list of articles. This classification does not
bind the scope of protection granted by the domestic design laws of the
contracting states. Japan has not joined the Locarno Agreement . ”

3.8 TRIPS AGREEMENT Under the World Trade

Organization Agreement (WTOA)

As a result of negotiations based on the GATT Uruguay Round talks, the

World Trade Organization Agreement (WTOA) was concluded on December 25, -
11 - 1993 in Geneva. In connection with this, a separate agreement regarding
protection of intellectual property called the TRIPS Agreement was concluded.
This Agreement obligated its contracting states to provide a high level of
protection and enforcement over a wide variety of areas of intellectual property
such as

i. copyright and related rights,

ii. trademarks,

iii. geographical indications,

iv. industrial designs,

v. patents,

vi. layout-designs of integrated circuits,

vii. protection of undisclosed information, and

viii. control of anti-competitive practices in contractual licenses

In Section 4 of part II, the TRIPS Agreement sets forth regulations
 49

concerning industrial designs. In Article 25 it stipulates:

(1) “Members shall provide for the protection of independently created

industrial designs that are new or original. Members may provide that designs
are not new or original if they do not significantly differ from known designs or
combinations of known design features. Members may provide that such protection
shall not extend to designs dictated essentially by technical or functional
considerations.
(2) Each Member shall ensure that requirements for securing protection for
textile designs, in particular in regard to any cost, examination or publication, do
not unreasonably impair the opportunity to seek and obtain such protection.
Members shall be free to meet this obligation
through industrial design law or through copyright law.92

Article 26 reads in Section 4 of part II, the TRIPS Agreement as follow:

(1) The owner of a protected industrial design shall have the right to prevent
third parties not having the owner’s consent from making, selling or importing
articles bearing or embodying a design which is a copy, or substantially a copy,
of the protected design, when such acts are undertaken for commercial purposes.
(2) Members may provide limited exceptions to the protection of industrial
designs, provided that such exceptions do not unreasonably conflict with the
normal exploitation of protected industrial designs and do not unreasonably
prejudice the legitimate interests of the owner of the protected design, taking
account of the legitimate interests of third parties.
(3) The duration of protection available shall amount to at least ten years93.

92
Supra Note at 96
93
Article 25 TRIPS Agreement
 50

3.9 BERNE CONVENTION (Berne Convention for the

Protection of Literary and Artistic Works, 1886)

Article 2 (1) of the Berne Convention (Paris Act 1971) stipulates that the
expression ‘literary and artistic works’ shall include every protection in the
literary, scientific and artistic domain, whatever may be the mode or form of its
expression, such as books, pamphlets and other writings; lectures, addresses,
sermons and other works of the same nature; dramatic or dramatico-musical
works; choreographic works and entertainments in dumb show; musical
compositions with or without words; cinematographic works to which are
assimilated works expressed by a process analogous to cinematography; works of
drawing, painting, architecture, sculpture, engraving and lithography;
photographic works to which are assimilated works expressed by a process
analogous to photography; works of applied art; illustrations, maps, plans,
sketches and three-dimensional works relative to geography, topography,
architecture or science94.

Article 2 (7) of the Berne Convention stipulates that subject to the

provisions of Article 7 (4) of this Convention, it shall be a matter for legislation in
the countries of the Union to determine the extent of the application of their laws
to works of applied art and industrial designs and models, as well as the
conditions under which such works, designs and models shall be protected. Works
protected in the country of origin solely as designs and models shall be entitled in
another country of the Union only to such special protection as is granted in that
country to designs and models; however, if no such special protection is granted
in that country, such works shall be protected as artistic works102. According to
the provisions of Article 2 (7) of the Berne Convention, it is considered a principle
to protect applied works and industrial designs equally.

While leaving it to each member country to regulate detailed conditions

for the protection, this term shall last at least until the end of a period of twenty-

94
Article 26 - Section 4 of part II, the TRIPS Agreement
 51

five years from the making of such work (Article 7 (4)). The term of protection for
general works granted by this Convention shall be the life of the author and fifty
years after the author’s death95.

3.10 UNIVERSAL COPYRIGHT CONVENTION, 1952

This convention was concluded at a UNESCO meeting held in 1952 in
Geneva to coordinate the Berne Convention with the Pan-American Convention.
The Paris Act was concluded in 1971. The conclusion of this convention was
intended to harmonize the two conflicting copyright conventions. At the same time,
however, it was designed to prevent affecting the already existing conventions.
Therefore, it does not cause any conflict between the two conventions. In other
words, this convention was concluded by each contracting state Moved by the
desire to ensure in all countries copyright protection of literary, scientific and
artistic works: Convinced that a system of copyright protection appropriate to all
nations of the world and expressed in a universal convention, additional to, and
without impairing international systems already in force, will ensure respect for
the rights of the individual and encourage the development of literature, the
science and the arts: Persuaded that such a universal copyright system will
facilitate a wider dissemination of works of the human mind and increase
international understanding (preamble) 96.
Published works of nationals of any Contracting State and works first
published in that State, or unpublished works shall enjoy in each Contracting State
the same protection as that State accords to the works of its nationals first
published in its own territory or unpublished works of its own nationals (Article II
(1) and (2)).
The term of protection for works protected under this Convention shall not
be less than the life of the author and twenty-five years after death. However, this
does not apply to works of applied art, which shall not be less than ten years
(Article IV (2) and (3)). ”

95
Article 2 (1) of the Berne Convention (Paris Act 1971)
96
Article 2 (7) of the Berne Convention (Paris Act 1971)
 52

Any Contracting State of the Berne Convention shall regard these

requirements as satisfied with respect to all works protected in accordance with
this Convention if the author bears the symbol © accompanied by the name of the
copyright proprietor and the year of the first publication at the time of obtaining
copyright protection in the United States and other countries adopting the
registration system.

3.11 EU DESIGN DIRECTIVE

“ As to the design protection system in the EU, Directive 98/71 EC of the

European Parliament and of the Council of 13 October 1998 on the legal
protection of designs became effective on November 17, 1999, and Contracting
States had to provide for their own design system based on this Directive by
October 28, 2001. Italy, France, Denmark and Britain had finished revising the
laws, however, Germany had not. EU Member States have to provide for the
design protection system in accordance with this Directive, and EU Design Law is
established pursuant to this directive.

1. Design means the appearance of the whole or a part of a product resulting

from the features of, in particular, the lines, contours, colors, shape,
texture and/or materials of the product itself and/or its
ornamentation.97

2. Product means any industrial or handicraft item, including inter alia parts
intended to be assembled into a complex product, packaging, get- up,
graphic symbols and typographic typefaces, but excluding computer
programs. What is important is that a design does not require attributes

of articles, but introduces a wider concept. Product includes an item not

having the attributes of articles, such as graphic symbols. 98

97
Ibid
98
UNIVERSAL COPYRIGHT CONVENTION, 1952
 53

3. Protection requirement: Member States shall protect designs by

registration, and shall confer exclusive rights upon their holders in
accordance with the provisions of this Directive. A design shall be
protected by a design right to the extent that it is new and has individual
character. A design applied to or incorporated in a product which
constitutes a component part of a complex product shall only be
considered to be new and to have individual character: if the component
part, once it has been incorporate into the complex product, remains
visible during normal use of the latter; and to the extent that those visible
features of the component part fulfill in themselves the requirements as to
novelty and individual character.99

4. Novelty: A design shall be considered new if no identical design has been

made available to the public before the date of filing of the application for
registration or, if priority is claimed, the date of priority. Designs shall be
deemed to be identical if their features differ only in immaterial details. A
public domain on a worldwide basis without geographical restriction is
adopted when regarding novelty. 100

5. Individual character: A design shall be considered to have individual

character if the overall impression it produces on the informed user differs
from the overall impression produced on such a user by any design which
has been made available to the public before the date of filling of the
application for registration or, if priority is claimed, the date of priority. In
assessing individual character, the degree of freedom of the designer in
developing the design shall be taken into consideration.101

6. Designs dictated by their technical function and designs of

interconnections: A design right shall not subsist in features of
appearance of a product which are solely dictated by its technical function.
Design right shall not subsist in features of appearance of a product which

99
EU, Directive 98/71 EC of the European Parliament
100
Ibid
101
EU, Directive 96/71 EC of the European Parliament
 54

it is applied to be mechanically connected against another product so that

either product may perform its function. This provision intends to exclude
must fit. Notwithstanding, a design right shall subsist in a design serving
the purpose of allowing multiple assemblies or connection of mutually
interchangeable products within a modular system.102

7. Scope of the protection: The scope of the protection conferred by a design

right shall include any design which does not produce on the informed
user a different overall impression. In assessing the scope of protection,
the degree of freedom of the designer in developing the design shall be
taken into consideration. 103

8. Term of protection The right holder may have the term of protection
renewed for one or more periods of five years each, up to a total term of 25
years from the date of filing. In the Dane Design Law, which was revised
in accordance with this Directive, the term regarding an ordinary design is
as per the Directive, but the term regarding spare parts lasts fifteen years at
maximum from the filing date. This is because Article 14 of the Directive
leaves the protection of spare parts to each domestic law.104

9. Right conferred by the design right: The registration of a design shall

confer on its holder the exclusive right to use it and to prevent any third
party not having the holder’s consent from using it. The use shall cover the
making, offering, putting on the market, importing, exporting, or using of a
product in which the design is incorporated or to which it is applied, or
stocking such a product for those purposes. 105

10. Limitation of the rights conferred by the design right: The rights
conferred by a design right upon registration shall not be exercised in
respect of a) acts done privately and for non-commercial purposes; b) acts
done for experimental purposes; c) acts of reproduction for the purposes of

102
EU, Directive 95/71 EC of the European Parliament
103
EU, Directive 94/71 EC of the European Parliament
104
EU, Directive 93/71 EC of the European Parliament
105
EU, Directive 93/71 EC of the European Parliament
 55

making citations or of teaching; d) the equipment on ships and aircraft

registered in another country when these temporarily enter the territory of
the Member States concerned; e) the importation in the Member State
concerned of spare parts and accessories for the purpose of repairing such
craft; f) the execution of repairs on such craft.106

11. Transitional provision: Member States shall maintain in force their

existing legal protections relating to the use of the design of a component
part (for example, design of an automobile door) used for the purpose of the
repair of a complex product (for example, an automobile) so as to restore
its original appearance. As to the protection of spare parts for restoring the
appearance of automobiles, there was once dispute between automobile and
parts manufacturers and insurance companies. As a compromise,
provisions of spare parts were not incorporated in the Directive and were
left to each country’s domestic law. However, the EU Committee needs to
prepare a report on spare parts three years after the Directive became
effective, and to make a proposal for possible revision of the Directive to
the EU Parliament and Council one year thereafter.107

12. Relationship to other forms of protection: The provisions of this

Directive shall be without prejudice to any provisions of Community law
or of the law of the Member State concerned relating to unregistered design
rights, trademarks or other distinctive signs, patents and utility models,
typefaces, civil liability or unfair competition.

13. Relationship with copyright: A design protected by a design right shall

also be eligible for protection under the law of copyright of that State.
However, the conditions of the protection shall be determined by each
Member State.

3.12 CONCLUSION

106
EU, Directive 92/71 EC of the European Parliament
107
EU, Directive 91/71 EC of the European Parliament
 56

As mentioned in the beginning, there are two ideas regarding the legal
protection of industrial designs, i.e., a copyright-oriented approach and a patent-
oriented approach. Several country’s legislation are not necessarily harmonious
with each other. However, at least EU Member States have prepared unified
”

domestic laws after the EU Design Directive became effective, and EU Design
Regulation has been enforced. Hence such conventions and treaties come into
play while maintain some uniformity in law and principles governing the concept
of industrial design/trade dress or whatever nomenclature be used for the said
concept.
 57

CHAPTER IV

LEGAL RECOGNITION TO CONCEPT OF TRADE

DRESS UNDER INDIAN LEGAL REGIME

4.1 INTRODUCTION

The trademark law in India has undergone drastic reform resulting in the
repeal of the Trade and Merchandise Act, 1958, by the Trade Marks Act, 1999. This
Act of 1999 came into force from September 2003. The new Indian Trade Marks
Act, 1999 makes the Indian law at par with international standards. The new Act
recognizes service marks. It has done away with system of maintaining
registration of trademarks in part A and part B with different legal rights, and to
provide only single register with simplified procedure for registration and with
equal rights. The concept of well-known trademarks is introduced to streamline
and simplify the procedure of registration, it is now made possible to file one
single application for registration of mark in different classes of goods and
services. The initial term of protection is also enhanced from the previous 7 years
to 10 years. The new Trademark law has also broadened the definition of
trademarks to include shape of goods and combination of colour and it provides
for registration of collective marks owned by associations etc.

The Trade Marks Act, 1999 is a copy of the UK’s Trade Marks Act 1994
“

as we follow the English Trade Mark laws from the beginning. Unlike the United
States Lanham Act, 1946 the English Trade Marks Act, 1994 and the Indian Act,
1999 do not have provisions like section 43(a) (of Lanham Act) to protect un-
registered trade dress or allow registration of trade dress which qualifies the tests
of distinctiveness and source identifier.

Trade dress can be protected as getup under the law of passing off in UK
and in India. Passing off is a common law remedy for protecting unregistered
Trade Marks. Effectively it seeks to protect the rights of an individual or business,
 58

by protecting the goodwill of that business from unfair trading by other parties. It
prevents other parties from carrying on business or selling their products under a
name, mark or description, which could mislead the public by confusing them to
believe that the business/ goods in question are those of plaintiff. Basically,
passing off is connected with protecting unregistered Trademarks. Getup,
packaging, business strategy, marketing techniques, advertisement themes etc. can
also be protected under passing off.

Lord Oliver developed a list of three elements for determining passing off in

Reckitt & Colman Products Ltd Vs. Borden Inc108., Case namely:

1. the existence of the claimant’s goodwill.

2. a misrepresentation as to the goods or services offered by the

defendant

3. damage or likely damage to the claimant's goodwill as a result of

the defendant's misrepresentation.

So, passing off essentially protects the goodwill of an individual or his business.
Past case laws have established that goodwill can exist in anything like mark,
symbol, device, shape, package, get-up, colour or colour combination of the goods
or any combination thereof. Therefore, Trade Dress can be effectively protected as
get-up under the law of passing off . ”

4.2 EMERGENCE OF TRADE DRESS LAWS IN INDIA

With the development of innovative methods of brand-image building,

there has been a proliferation of non-conventional trademarks. After colour, sound,
scent marks and the like, proprietors are now seeking to trademark ‘layouts’ of
stores and service outlets. These marks are different from architectural
trademarks, the first of which in India were registered for the Taj Mahal Palace
Hotel and the BSE Building, both situated in Mumbai. While these protect the
image of the buildings’ exteriors as device marks for commercial use, layout

108
[1990] 1 All E.R. 873
 59

marks are intended to protect the sophisticated layouts of stores, including the
interior and consisting of a distinct arrangement of features, colour patterns,
furniture.

Among these is Mary Cohr, seeking protection for the layouts of its ‘store
front’ as well as ‘salon area’ (Application Another applicant has filed for a 3D
trademark over the layout of a Vedic restaurant (Application No. 4100482).
Recently, Godrej & Boyce’s U & Us Home Studio has successfully overcome a
lack of distinctiveness objection and been granted a device mark for its
‘Discussion Area Zone’ (Application No. 4169443). They have also applied to
trademark their ‘Material Library Zone’ (Application No. 4169441) and ‘Color
Visualizer Zone’ (Application No. 4169442). This post discusses some of the
challenges presented by layout trademarks, focusing on the Discussion Area Zone
in particular.109

Store layouts or ‘business get-ups’ have enjoyed protection in the US since

the case of Two Pesos v. Taco Cabana114, where the US Supreme Court held that
the Mexican theme-based get up of the Taco Cabana chain of restaurants, enjoyed
trade dress protection under Section 43(a)(1) of the Lanham Act. Subsequently,
trade dress protection has been granted to the layout and décor of a wine retail
store, fast-food restaurant chains, and several retail-store layouts. Later decisions
added the requirement to prove secondary meaning, for retail layouts to obtain
trade dress protection. In 2013, after an initial rejection, the German Trademark
Office referred Apple’s application for a 3D trademark over their store layout to
the CJEU. The CJEU examined the layout’s pictorial representation and the
elaborate word-description and held that the store adequately distinguished
Apple’s services from those of others’, paving way for layout trademark protection
in the EU.

4.3 LAYOUT TRADEMARKS IN INDIA

While there is no reference to layouts in the Trade marks Act, 1999, the

109
https://ijlpp.com/trade-dress-an-evolving-concept-under-the-ambit-of-intellectual-
propertyrights/
 60

inclusive definition of ‘mark’ under Section 2(m) has allowed for recognition of
non-conventional marks. The Discussion Area Zone is registered as a device
mark, rather than trade dress or 3D trademark as in other jurisdictions. The Vedic
restaurant application (mentioned above) sought a 3D trademark, but was asked to
change to a device mark. However, store layouts may be more appropriate as 3D
trademarks, considering they are applied in a 3- dimensional form on business
spaces, while device marks usually cover designs in 2D form.

While trade dress protection is another alternative, it may not be suitable

for all layouts. In Colgate Palmolive v. Anchor Health110, the Delhi High Court
held trade dress to be the ‘overall impression that customer gets as to the source
and origin of the goods from visual impression of colour combination, shape of the
container, packaging.’ Trade dress protection in India is provided over broad
thematic features. Since layout marks are applied over designs of stores and
consist of arrangements of otherwise commonplace elements, specificity is
desirable so as to avoid overbroad protection.

The Discussion Area Zone’s layout consists of a touch table, a TV, three
“

chairs and a designed shelf to enable the customers to plan themes digitally. The
mark initially faced a Section 9(1)(a) ‘lack of distinctiveness’ objection, but a
detailed reply describing the uniqueness and popularity of the said mark has
overcome the same.

4.4 SOURCE-INDICATION FUNCTION

The primary question regarding layout marks is whether they actually

indicate the source of the product. In the Apple Store case 111 , the German
Trademark Office had originally observed that the design of a store may enable
consumers to recognise the quality and price range of the goods, but not their
source, necessitating use of other trademarks. Apple had countered this by stating
that most 3D trademarks are applied on the product itself making them inseparable
from it. This can be seen in cases like Toblerone and Zippo lighter, neither of

110
505 U.S. 763 (1992)
111
C.S.No.452 of 2008
 61

which are used without labels. In fact, several non-conventional trademarks like
colour and motion marks are used together with word marks. It follows that the
layouts (3D trademark) for service-providing outlets being integrated into the
service itself cannot be rejected on grounds of requiring labels.

Source-identification is particularly important in the Discussion Area

Zone’s case, as the trademark does not protect the layout of the outlet as visible
from outside, but a section within the showroom. The consumer would not have
access to the Discussion Area Zone until they actually enter the outlet. In re NV
Organon, an orange-flavour mark was rejected, as the US TTAB pointed out that
consumers don’t come in contact with flavor marks until they have consumed it,
defeating source-indication function. Presently, while the consumers’ contact with
the layout occurs before purchase decision is made, it still doesn’t serve the
purposes of identifying and distinguishing the service outlet from those of
competitors. The one possible case where it may do so is when the Discussion
Area Zone stands as an independently-visible outlet within a mall or a combined
brands showroom. But this has not been discussed in the application. Notably,
Mary Cohr’s ‘store front’ mark has been granted, whereas the ‘salon area’, which
like the Discussion Area Zone remains situated inside the showroom, faces a
Section 9(1)(a) objection. This is a concern that requires particular attention.

4.5 GRAPHICAL REPRESENTATION

Unlike conventional trademarks, store layouts consist of multiple elements

in a unique arrangement. As the exact sizes in which the mark will be applied
cannot be ascertained, it is likely to take on various appearances, running the risk
of protection over all conceivable manifestations of the layout. However, layout
marks would meet the Ralf Sieckmann standards for non-conventional trademarks,
i.e., ‘clear, precise, self-contained, easily accessible, intelligible, durable and
objective’ (adopted in India’s Draft Manual of Trade Marks 2015) if their pictorial
representations are sufficiently descriptive of their proportions. Rule 29(4) of the
Trade Mark Rules, 2002 requires that the graphical representation of shape
 62

trademark applications be in the form of drawings showing all features of the

mark, accompanied with an accurate description of its constituent features. The
registrar is also authorized to call for different perspectives. Interestingly, this
would be applicable on 3D Marks, but not necessarily on device marks.
Regardless, the recent layout mark applications have included actual photographs,
making them sufficiently perceptible .
”

4.6 FUNCTIONALITY

The functionality doctrine in trademark law prohibits the registration of

marks which consist of technical features that add value to the product itself.
Embodied in Section 9(3) of the Trade Marks Act, this doctrine is a safeguard
against the anticompetitive effects of granting monopolies over functions.
Functionality often creates roadblocks for taste or scent marks since they are
likely to be used to make products more palatable. Flavour marks in particular face
a harsher challenge to overcome as flavours are only added to consumables and
the value of something which is intended to be eaten or drunk is inevitably
influenced by flavour-addition.

In context of layout marks, functionality presents a veritable challenge as

the articles combined together to obtain the unique arrangement be might those
that are necessary to obtain specific technical functions – e.g., the use of
showcases, cash counters, seating arrangements, etc. The Discussion Area Zone
illustrates this. According to the product description, it consists of the following
elements:

 A touch table for customer interaction, theme selection and room

planning.

 An inward curving panel with TV fitted on one side of the walls for design
presentation and viewing of 3D renderings of rooms.

 Three chairs with curved back for customers to sit.

 Miniature stand with three levels of leaf-shaped shelves carrying

 63

miniatures depicting various furniture categories.

Arguably, the only elements in this design that do not serve a functional
"

purpose are the leaf-shaped shelves, and the curvature of the chairs and wall.
While a combination of elements which include functional and non-functional
elements can still be distinctive, it is necessary to prove that the manner in which
the features are combined amounts to more than simply the ‘sum of its parts’
(Voss of Norway v. OHIM112). Unlike the Apple Store description, it is not prima
facie clear how this layout made of only 4 elements is nonfunctional as a whole.
Though a Section 9(3) objection was not raised during the examination, in
general, the Trademark office must undertake a careful consideration of the
question of functionality.

To conclude, it can be said that while the Discussion Area Zone trademark
has not dealt in depth with some of these issues, the unique nature of layout marks
doesn’t present any obstacles that cannot be overcome by use of safeguards
already present in the Indian trademark regime.

4.7 INDIAN JUDICIAL PERCEPTION ON THE CONCEPT

OF TRADE DRESS

The Indian gospel on trade dress had for a while been the decision in
Kellog co. Vs. Pravin Kumar Badabhai113 where the Delhi High Court, despite
enumerating the similarities in the trade dress of the plaintiff’s and defendant’s
products, denied an injunction to the former while observing that the test was to
see the products as a whole and in doing so the similarity in certain colour
combinations was outweighed by the differences in the word marks of the plaintiff
and the defendants. The recent years have seen an interesting shift in judicial
perception. While tests for passing off have been interpreted with immense
judicial creativity in relation to essential products such as drugs and

112
Case C- (421/13)
113
T-129/04
 64

pharmaceuticals, passing off actions in relation to consumer goods have continued

to be governed by the relative similarities or dissimilarities of the accompanying
word marks. In Cadila HealthCare Vs. Cadila Pharmaceuticals 114 the Supreme
Court of India has held that, Pharmaceutical products will be purchased by both
villagers and townsfolk, literate as well as illiterate and the question has to be
approached from the point of view of a man of average intelligence and imperfect
recollection. A trade may relate to goods largely sold to illiterate or badly
educated persons. The purchaser in India cannot be equated with a purchase of
goods in England. While we agree that in trademark matters, it is necessary to go
into the question of comparable strength. In a country like India where there is no
single common language, a large percentage of population is illiterate and a
small fraction of people know English, then to apply the principles of English Law
regarding dissimilarity of the marks or the customer knowing about the
distinguishing characteristics of the plaintiff’s goods seems to over look the
ground realities in India.
At the same time, the Delhi High Court in United Distillers Plc. Vs.
Jagdish Joshy115 a suit for passing off, evaluated the relative similarities in the
trade dress of the defendant and the plaintiff and held that a bare perusal of the trade
dress of the defendant denoted a striking similarity between the defendant’s and
the plaintiff’s products and the defendant's had not given any satisfactory
explanation as to why there were such similarities with the plaintiff’s trade dress
in their product’s trade dress.
In this backdrop, the decision of the Delhi High Court in Colgate
Palmolive Co. Vs. Anchor Health and Beauty Care Pvt. Ltd120 comes like a breath
of fresh air, clearly charting new territory for Indian trademark law. In this suit
for passing off, the plaintiff sought an interim injunction against the defendant’s
use of the trade dress and 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’. In the judgment the court

114
(DLH)-1996-2-64
115
2001 (21) PTC 541 SC
 65

held: 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. In other words if the first
glance of the article without going into the minute details of the colour
combination, get up or lay out appearing on the container and packaging gives
the impression as to deceptive or near similarities in respect of these ingredients,
it is a cause 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.
Colour combination, get-up, layout and size of container are sort of trade dress,
which involves overall image of the product's features. There is a wide protection
against imitation or deceptive similarities of trade dress as trade dress is the soul
for identification of the goods as to its source and origin and as such is liable to
cause confusion in the minds of unwary customers particularly those who have been
using the product over a long period of tim e.116
”

In a detailed ruling taking into account the acquired reputation of

Colgate’s red and white colour combination in its trade dress, the court held that
as the trademarks ‘Colgate’ and ‘Anchor’ were written in English language they
could not be distinguished by ordinary customer of a country where bare literacy
level is abysmally low and said that if a product having distinctive colour
combination, style, shape and texture had been in the market for decades as in this
case (it was in the market since 1951) it lead to ineluctable inference of having
acquired secondary meaning on account of its reputation and goodwill earned at
huge cost. It said that the criteria was the overall impression from the look of
packaging or container containing the goods and articles that could legitimately
injunct its rival which was an element of unfair competition on part of the
infringing party.

If we analyse this present case, proof of acquired distinctiveness through

116
2001 (1) AD (Del) 448
 66

secondary meaning (as required in the product design/ configuration trade dress
cases in US) is necessary to prove good will and reputation through long use and
existence in the market by the plaintiff. The law relating to trade dress is still in its
infancy, stage in India. This is the only case (Colgate v. Anchor) so far to be
decided by Indian Courts.

It is interesting to note that the new Trade Marks Law 1999 has been
“

expanded to include shape marks and colour combinations as marks. Under this, a
product package (including its colour combination, size, shape etc.) or a product
design/ configuration (as shape mark) may be registrable as a mark. Nevertheless,
passing off may provide a good alternative for protecting unregistered trade dress
and the initiative has already started with the Colgate Palmolive case.

In one of the cases pronounced by the Division Bench of Delhi High Court
where the dispute in the suit related to rights claimed by ITC in the yellow and blue
packaging of Sunfeast Farmlite Digestive All Good Biscuits and contested
that, Britannia have copied a similar color trades dress for its product Nutri Choice
Digestive Zero Biscuits. The Single Judge while ruling in favor of the ITC
observed that within the short span of time, the product of ITC has acquired
popularity which was very evident from the sales of the product.129 Aggrieved by
the said order Britannia filed an appeal before Division Bench who subsequently
reversed the order of Single Judge by making the following observations:

a) the get-up of the yellow and blue combination of the packaging did not
attain distinction and therefore was not exclusively and distinctively associated
with the ITC;

b) ITC mainly relied on its trade mark and trade name in their advertisements;
c) the court did not agreed with the Single Judge's view that within such short
span of time, the yellow-blue packaging of ITC biscuits had become so associated
with ITC so as to enable it to prevent its use by its competitors;
d) Court further opined that distinctiveness is acquired in get-
up when it is not only novel but also possesses some striking feature.
 67

In the present case, the get-up and specifically the yellow-blue combination
of packaging of ITC did not fall into that category of distinctiveness. The matter is
still pending before the Supreme Court and has been adjourned sine-die for
exploring settlement.
Another proceeding where the issue of trade dress was discussed last year
was the case of Pidilite Industries Limited Vs Poma-Ex Products117 before Bombay
High Court. Although, the core issue dealt by the court was the infringement of
the Plaintiff's mark FEVIKWIK by the Defendant's mark KWIKHEAL, but the
question of trade dress also played a significant role in reaching the conclusion.

The Plaintiff argued that they have a registered and distinctive packaging
of their product which was created in-house by an employee of the plaintiff during
the course of employment and constitutes an original artistic work in which
copyrights subsist. Defendant on the other hand has not been using its own trade
mark packaging as registered but has been using the packaging which is similar to
that of Plaintiff's. The Plaintiff contention was that the Defendant has used every
singly feature of its product packaging in its minutest details therefore the Plaintiff
has a clear cut case of infringement and passing off and if goodwill and
reputation of the Plaintiff's product is not protected, it will result into irreparable
damage. The Court while agreeing with the Plaintiff held that the packaging of the
Defendant's product was likely to cause confusion among the public as the
packaging of the two products were identical.

The issue of infringement of trade mark Red Sole pertaining to high end
luxury shoe brand of famous designer Christian Louboutin was in question in
Christian Louboutin Sas Vs Mr. Pawan Kumar & Ors 118. in which the Delhi High
Court declared the designer's 'Red sole' a well-known trademark. In this case it was
argued by the Plaintiff that the shoe with red sole clearly identifies Plaintiff's
product distinguishing it from others. The 'RED SOLE' trademark has thus
become the signature of the plaintiff. The trade mark Red Sole has registrations in

117
C.S.No.452 of 2008
118
file:///C:/Users/Admin/Downloads/Trademark%20Infringement%20and%20Passing%
20off‐%20Law%20and%20Important%20Judgments.pdf (last referred to on 05th Sept 2020)
 68

different jurisdictions including India and simultaneously it enjoys a trans-border

reputation by virtue of various factors. It has also got spilled over reputation in
India from various other countries as the consumer across the globe are well
aware of the goodwill and reputation of the mark even before it was formally
launched in India. The Defendants in the suit were local shoe dealers
manufacturing and selling the shoes with the red sole thereby infringing the
trade mark of the Plaintiff. The Court, thus after looking into the material
evidence led by the Plaintiff permanently injuncted the Defendants from
manufacturing, selling or in any way dealing with the footwear bearing the
Plaintiff's registered trade mark for Red Sole and simultaneously awarded
damages in favour of the Plaintiff. This is also the first instance in India where
any Court has declared a trade dresses as a well- known status119.
”

Early this year, in M/s Castrol Limited & Anr. Vs Iqbal Singh Chawla &
Anr124., the Castrol Limited sued the Defendants who were involved in selling 4T
oil under the trade mark Lumax Active who were said to have infringing the trade
mark Castrol Active which was separately registered in the name of Castrol
Limited. Castrol Limited, the Plaintiffs here claimed relief in relation to its trade
dress, copyright in packaging, including the shape of the container of the bottle.
The Plaintiffs' case was that the Defendants have copied the exact trade dress,
shape of the bottle, label lay-out and colour scheme of the Plaintiffs which
amounts to infringement of trade mark, copyright as well as makes a case of
passing off. The Court opined that if there is a comparison between trademarks
Castrol Active of the Plaintiff and Lumax Active of the Defendant, there does not
appear to be any deceptive similarity between the marks if it is seen in isolation of
the trade dress, colour scheme, packaging, design, layout, shape and
configuration. Thus, the moment when the rival trademarks are examined in
conjunction with the trade dress, colour scheme, packaging, design, layout, shape
and configuration, it becomes evidentially clear that adoption of the trade mark
Active by the Defendants is clearly a dishonest adoption to encash upon the
goodwill and reputation of the Plaintiffs. In this said case though the Court found

119
2017 (72) PTC 1. (Bom)
 69

that the rival marks were different the dishonesty of the Defendants lied in
adopting the exact same trade dress. The Court however added that the said
injunction will not affect the right of the Defendants, if the Defendants use the
word Active in completely different trade dress, colour scheme, packaging,
design, layout, shape and configuration.

Today the market is exploding with the different types of products

available in the market, be it retail shops, malls or online shopping forum, where
the multiplicity of products makes the choice of the consumers based on recall by
memory difficult. For the same reason today, the colour schemes and product
packaging play an indispensable part in finally arriving at the decision regarding
the choice of the product in the market. Courts have taken due care in attributing
the growing importance to not only the trade marks but also to the overall look of
the product which is known as trade dress.
 70

CHAPTER V

COMPARISON BETWEEN THE CONCEPT OF

TRADE DRESS IN INDIA, USA AND SINGAPORE

Trade Dress refers to a visual appearance of products which includes

packaging, shape and combination of colours which can be registered or protected
by the competitors in terms of their business and services. 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. This concept was first recognised by the US. The new Trade Marks Act
1999 came into force in September 2003 and is largely based on the English
Trademark Act, 1994 which recognized the concept of trade dress on the lines of
The Lanham Act.

5.1 INTRODUCTION

Trade Dress, Copyright or Design Patent?

Product designs that capture the attention of the marketplace; not for their
“

utility, but due to creativity, innovation or fashion; can be hugely valuable assets
hence companies across a wide range of industries can implement creative legal
strategies to protect their product designs, and should develop a strategy well
before the product is introduced to the marketplace. Protection is not without its
challenges, though, as the law imposes limits on what can be protected and
competitors routinely flirt with the boundaries of acceptable inspiration. There are
three primary sources of protection for nonfunctional product designs: trade dress,
copyright and design patents.125 As discussed below, each has its unique
requirements, benefits and challenges, and each serves a specific purpose.

Trade dress
 71

Of the three, trade dress protection offers the longest-lasting protection, but likely
is the most difficult to establish. Under the Lanham Act, 15 U.S.C.

§1051 et seq., the design of a product is protectable so long as the claimed trade
dress design is not functional, and the trade dress is a clearly articulated design or
combination of elements that has acquired distinctiveness through secondary
meaning. 120 Trade dress is distinctive when consumers identify the trade dress
with a particular source. Courts consider numerous factors to determine whether a
design has acquired distinctiveness, including how long the design has been used,
efforts to promote a connection between the design and the company that offers the
product, and purchasers' association of the design to a single company. It
generally requires substantial time and/or publicity for a company to establish that
its product design has acquired distinctiveness, but there have been exceptions to
that general rule. If the claimed design is or was ever claimed in a utility patent, it
will be very difficult to establish that it is non functional and entitled to trade
dress protection.

Trade dress protection allows a company to prevent third parties from using
a product design that is likely to cause confusion in the marketplace. Where the
trade dress is famous, the Lanham Act also allows the owner to prevent third
parties from diluting its design. Dilution does not require a showing of consumer
confusion, but prevents use of designs that either blur or tarnish a company's
protected design. Like a trademark, trade dress can be federally registered, but
does not need to be registered in order to be protected by the courts. There is no
requirement that the trade dress design be creative, novel or non-obvious, and there
is no consideration of originality or prior art. Typical challenges for a company
trying to protect and enforce its trade dress pertain to how the design is defined,
whether it is functional and whether it has attained secondary meaning and is
associated with a single company. Companies interested in securing trade dress
protection for their product designs should give careful thought to how they will
market the product in a manner to create an association between the product

120
CS (Comm.) 714 of 2016
 72

design and the company even before the product is launched to establish protection
as early as possible and maximize potential protection. While look for advertising
is no longer required to establish secondary meaning, it is a classic tool for
establishing market awareness.

Trade dress protection can be for a product's entire design (as with the
registered design of a Coke bottle or the registered design of a Volkswagen Bug or
Beetle), or an aspect of the design. For example, the U.S. Court of Appeals
Second Circuit held that a single color can be protectable in the fashion industry,
overturning the lower court's conclusion that color could never be nonfunctional
for fashion because of its aesthetic quality for fashion. In Christian Louboutin v.
Yves Saint Laurent Am. Holding,121 the Second Circuit considered whether the red
lacquer outsoles of high-fashion women's shoes could be protectable. Plaintiff
Louboutin had obtained a federal registration for its lacquered red soles in January
2008 and in April 2011, sued defendant YSL to prevent its sale of monochrome red
shoes with a red sole. The district court in August 2011 denied Louboutin's request
for an injunction, holding that a single color could not be protectable in the
fashion industry because it was aesthetically functional. The Second Circuit held
that, under Qualitex v. Jacobson Products136 that a single color could qualify for
protection, even for goods in the fashion industry. While the Second Circuit found
that Louboutin could properly claim exclusivity as to lacquered red soles, the
court limited Louboutin's rights and its registration to use of contrasting red
lacquered outsoles and held that YSL could proceed with the sale of monochrome
red shoes that included a red outsole.

India: Protection Of Trade Dress – Developing Jurisprudence by Gautam Kumar, LexOrbis 05th
121

April 2020
 73

Copyright

In contrast to trade dress protection, copyright protection does not require a

showing of acquired distinctiveness or of a likelihood of consumer confusion or
dilution. Rather, the Copyright Act, 17 U.S.C. §101 et seq,122 protects creative
designs from copying by others, and also grants the copyright owner exclusive
rights to create derivative works and to control distribution and importation.
Significantly, however, the Copyright Act does not extend protection to useful
articles or design elements that are functional, and also may be limited by the
doctrines of scenes a faire or merger. As a result, while copyright law protects
designs on fabric, it typically will not protect the design of a dress or other fashion
item, no matter how creative or iconic it is. Because of the limitations on
copyright protection in the fashion industry in particular, the industry has been
lobbying for new legislation granting protection for fashion designs for a limited
period of time . ”

If copyright protection is available, however, it can be very powerful.

Copyright protection is available immediately upon creation of the design, and
lasts for the life of the author, plus 70 years, or for 120 years from creation if the
work qualifies as a work made for hire. Registration is not required for protection
to exist, although is necessary to bring an infringement action for a U.S.
work. 123 While registration is not required, it is relatively easy to obtain and
inexpensive, and if the design is registered before the alleged infringement occurs,
the copyright owner can claim attorney fees and statutory damages - powerful
remedies in the event of infringement.

The Copyright Act also may provide companies with a means to prevent
“

the importation and sale of genuine goods that are lawfully manufactured abroad,
but which make their way into the U.S. notwithstanding efforts of the company

122
Copyright Act, 17 U.S.C.
123
562 U.S. 40 (2010)
 74

to control its market channels. In Omega v. Costco Wholesale1124 plaintiff relied

on a copyrighted design on its watches to prevent the sale in the U.S. of watches
lawfully made outside of the U.S. and imported into the U.S. The U.S. Supreme
Court in 2010 considered the case, but ultimately failed to resolve the question of
whether the first sale doctrine applied to foreign made goods due to a 4-4 tie, and
sent the case back to the district court. (On Nov. 9, 2011, Judge Terry Hatter Jr. of
the Eastern District of California granted Costco's motion for summary judgment
on the grounds that Omega had misused its copyright, and that decision is on
appeal.) The Supreme Court is, however, considering another first sale doctrine
case involving the importation of authentic goods. The case is Kirksaeng v. John
Wiley & Sons125

Design patent

Along with trade dress and copyright protection, design patent protection is
taking on an increased role in product design, particularly since the Federal
Circuit's decision four years ago in Egyptian Goddess v. Swisa, 543 Since Egyptian
Goddess, there has been an increase in the number of patent design applications and
claims of design patent infringement, underscoring the potential significant
benefits of this additional protection tool. Design patent protection is used for
products across a wide range of industries, from the design of cookware and
pharmaceuticals, to the design of fashion items, consumer electronics, graphical
user interfaces or screen shots of software programs, and computer-generated
icons. For example, in Crocs v. Int'l
126
Trade Commissioner an action brought before the International Trade
Commission, the makers of Crocs sandals was able to prevent the importation of
competing products that too closely resembled its design patents.

124
568 U.S. 519 (2013) Pg. No. 11-697
125
F.3d 665 (Fed. Cir. 2008)
126
598 F.3d 1294 (Fed. Cir. 2010)
 75

Like trade dress and copyright protection, design patent protection is not available
for functional aspects of a product's design. Rather, design patents protect the
ornamental design aspects of an article of manufacture, including surface
ornamentation, not the article itself. Thus, design patents for articles of
manufacture consist of the visual characteristics embodied in or applied to an
article. Compared to trade dress and copyright protection, design protection is
short-lived. Design patents last for only 14 years. But since they do not require a
finding of acquired distinctiveness or even be in use, design patents can provide
valuable protection for a product design while a company is developing its
product and working to establish marketplace awareness for its design.

While there is no requirement to establish acquired distinctiveness for a

design patent, the claimed subject matter of a design patent, like that of a utility
patent, must be novel and non-obvious. A design patent will be invalidated if the
design is not new or, stated another way, if it is anticipated by a prior art reference.
Even if it is not anticipated by a single reference, it still may be invalidated if the
claimed design would have been obvious to a designer of ordinary skill in the field
at the time the design was made. Obviousness can be decided by considering more
than one item of prior art.

A design patent owner can prevent others from using a design when, in the
eye of an ordinary observer, giving such attention as a purchaser usually gives,
two designs are substantially the same, if the resemblance is such as to deceive
such an observer, inducing him to purchase one supposing it to be the other, the
first one patented is infringed by the other. In other words, the accused article
must embody the patented design or any colorable imitation thereof. 143 Given the
variety of protection options available, their varying requirements and benefits,
there are many creative strategies available to protect product designs. The earlier
strategies are considered and implemented, the greater their chances of success. At
the same time, those involved in design development need to be mindful of the
143

rights of others to avoid or at least reduce the risk of infringement claims

”
 76

5.2 ANALYSIS OF LEGAL REGIME OF U.S.A. ON LEGAL

PROTECTION PROVIDED TO CONCEPT OF TRADE DRESS
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.

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. 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.

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
 77

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.

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.
a) The accused mark or trade dress creates a likelihood of confusion as to
 78

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.
b) 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 Cabana131, 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.
 79

In another case Wal-Mart Stores v Samara Bros, Samara127 produced a

“

line of children’s clothes decorated 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 Displays128 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.

127
505 U.S. 763 (1992)
128
529 U.S. 205 (2000)
 80

5.3 ANALYSIS OF LEGAL REGIME OF INDIA ON LEGAL

PROTECTION PROVIDED TO CONCEPT OF TRADE DRESS

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. Section 2(z)(b) of the

Trade Marks Act gives the following definition such as: 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

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
 81

themselves; or129

The shape of goods which gives substantial value to the goods. 130 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.

129
532 U.S. 23
130
Section 9(3) of the Trademarks Act, 1999
 82

Cases Supporting the Indian Position on Trade Dress

Hon’ble Supreme Court of India laid down the parameters for comparison
between two marks in Parle Products (P) Ltd. v. J.P. & Co.131. 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
laid 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 Rimmer132, 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, 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

131
2008(4)CHN608
132
AIR 1979 Delhi 114
 83

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.138, 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 Limited139, 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.133 the combination of the colour red and white was in dispute. It was held

133
LAWS(DLH)-1996-2-64
 84

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 minute
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 Products134 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 Joshi135 & 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 An 136
The packaging of L’Oreal products GARNIER- COLOUR
NATURALS and the product of Henkel Marketing India Ltd, PalettePermanent
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.

134
(2000) 5 SCC 573
135
(1882) 8 A.C
136
C.S.No.452 of 2008
 85

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.

5.4 ANALYSIS OF LEGAL REGIME OF SINGAPORE

ON LEGAL PROTECTION PROVIDED TO CONCEPT OF
TRADE DRESS

Registered trade-marks in Singapore are protected by the Trade Marks Act

(2005 Revised Ed) (Cap. 332) together with its subsidiary legislation which
consists of the Trade Marks Rules and Trade Marks (International Registration)
Rules.

5.4.1 RIGHTS CONFERRED BY A REGISTERED TRADE MARK IN

SINGAPORE

A trade mark registration grants the owner a statutory monopoly of the trade mark
in Singapore. The protection granted to a trade mark registration is for an initial
period of 10 years, and it can last indefinitely if the registration is renewed every
10 years.

Benefits of Trade Mark Registration in Singapore

Although it is not compulsory to register a trade mark in order to use it, a trade
“

mark registration adds great value to a business. By obtaining a trade mark

registration, the trade mark owner possesses rights to enable him to control the use
of a trade mark. This includes the right to: restrict other parties from using the
registered trade mark in Singapore without the owner’s consent; or prevent a later
trade mark, which is similar or identical to an earlier registered trade mark, from
 86

being registered in Singapore in relation to the same or similar goods or services.

The owner of the registered trade mark can also exploit his mark in many ways.
He may use it to better protect his market share (i.e. his profits) by barring others
from copying it; he may license it to third parties for commercial returns (e.g.
through a franchise); he may sell the mark outright for a specified value (e.g. in a
company acquisition); or he may use the mark to raise equity for his business
undertakings. Not Registering a Trade Mark in Singapore

It is not compulsory to register a trade mark in Singapore. An individual,

firm or company, who owns a trade mark and uses it in connection with his goods
or services, acquires common law rights in that mark by virtue of the use and
reputation of the mark. Common law generally refers to the law based on past
decisions and general principles, serving as precedent or is applied to situations
not covered by statutes. For a mark that is not registered, the owner can only rely on
the common law action of passing off to protect his mark against imitation or
unauthorised use by other parties. This remedy, however, requires the owner of the
mark to prove his reputation and goodwill. The requirement of proving reputation
and goodwill may pose some problems where the business, or the use of the trade
mark, has not been established for a substantial period of time. A registered trade
mark, on the other hand, grants the owner of the trade mark a statutory monopoly.
If someone else uses the same or a similar mark on the same or similar goods or
services in respect of which the mark is registered, the registered trade mark
owner can rely on his trade mark registration as proof of his right to the mark and
sue the other party for trade mark infringement based on invented words or based
on a combination of words or alphabets with stylized picture.

Entitlement to File for Registration in Singapore

An individual, firm or company claiming to be the owner of a trade mark

can file for a trade mark registration as long as they are using, or have the
intention to use, the mark in the course of their business. There is no restriction or
discrimination as to nationality or residency. However, an applicant must provide
 87

the Registry of Trade Marks with an address for service in Singapore to which all
correspondences regarding the trade mark application will be sent. When to File
Unlike patents or registered designs, trade marks that are already in use may still
be registered. There is no time limit as to when the owner may apply for a trade
mark registration. Although there is no time limit for filing, it should be noted that
a suit for an infringement of a registered trade mark is only possible if the trade
mark is registered. The rights conferred to a trade mark registration takes effect
from the date of filing of the application for registration.

Classification of Goods and Services in Singapore

The scope of protection of a trade mark registration is determined by the

goods or services in relation to which the trade mark is registered. For the purpose
of trade mark registration, Singapore uses the International Classification of
Goods and Services as prescribed by the Nice Agreement to classify goods and
services. The Nice Agreement is an international agreement on classification of
goods and services to which Singapore is a party. Under the Nice Classification,
goods and services are grouped into classes in which these goods and services
belong. Currently, there are a total of 34 classes of goods and 11 classes of
services. The Nice Classification is a tool for the classification of goods and
services for the purpose of trade mark registration.

It is used in more than 140 countries worldwide and in international applications

for the registration of marks under the Madrid Protocol.

Registrable Marks in Singapore

For a trade mark to be registered, it has to be capable of being represented

graphically. It must also be distinctive and capable of distinguishing the goods
and/or services of the owner from similar goods and/or services of other traders.
Here are some examples:

Descriptive marks
 88

i. Marks 'common to the trade'. Marks that are identical to earlier

marks

ii. Marks contrary to public policy or morality

iii. Deceptive marks Marks that could cause confusion

iv. Marks that are identical /similar to well known marks

Unregistrable Marks in Singapore

The following are some common examples of marks that cannot be registered
under the trade mark laws in Singapore such as those marks which describe the
goods and services of the business. For instance, marks that describe the quality
(Super or Best), quantity (One dozen), value (Cheap), intended purpose (Cleaner),
or geographical origin.

I.Marks which are signs or indications which are or have become customary
in the trade cannot be registered.

II.Marks have become so well accepted that the term is used to describe the
type of the goods or services and no longer serves to distinguish the
products offered. An example of a trade mark that has become customary in
the industry is escalator.

III.Marks that are generally against public policy or morality are not registered.
For example, a mark that could promote immoral behaviour cannot be
registered.

IV.Marks that attempt to deceive the public. For example, marks that
misrepresent the nature, quality or geographical origin of the goods or
services.

V.Marks that are identical to an earlier mark and the goods or services for
which the trade mark is sought to be registered are identical to the goods or
services for which the earlier mark is protected.

VI. A trade mark may not be registered if it is likely to cause the public to be
confused under these circumstances;
 89

VII.Marks identical with an earlier mark and is to be registered for goods or

services similar to those for which the earlier mark is protected;

VIII.Marks similar to an earlier trade mark and is to be registered for goods or

services identical with those for which the earlier mark is protected; or Marks
similar to an earlier trade mark and is to be registered for goods or services
similar to those for which the earlier trade mark is protected.

IX.A trade mark may not be registered if it is identical or similar to an earlier

mark that is well known in Singapore . ”

In general, trademarks that do not have a distinctive character cannot be

registered. However, there may be exceptions where the company has built up its
branding to such an extent that consumers associate the mark with the company,
even though the mark in itself was not distinctive. For such cases, the mark may
still be registered on the basis of substantial prior use resulting in the mark
acquiring a distinctive character. Sharp (for televisions) and Digital (for
computers) are examples of such marks.

Well Known Marks Concept in Singapore

Well known marks are offered a greater scope of protection. Even if they
are not registered in Singapore, the owner of a well known trade mark may take
action against the use of a trade mark or business identifier under the following
“

circumstances:137

i.The use of the trade mark/business identifier would indicate a connection

between those goods or services and the owner of the well known trade
mark, and is likely to damage the interests of the owner of the well known
trade mark.
ii. If the trade mark is well known to the public at large in Singapore, where
the use of the trade mark/business identifier would cause dilution in an
unfair manner of the distinctive character of the well known trade mark; or

137
https://www.asil.org/sites/default/files/ERG_IP.pdf (last referred to on 04th Sept 2020)
 90

take unfair advantage of the distinctive character of the well known trade
mark.138
iii. A number of factors that may be considered in determining whether a mark
is well known in Singapore, such as:
iv.the degree of knowledge or recognition by the relevant sector of the public
in Singapore;
v.the duration, extent and geographical area of the use or promotion of the
mark;
vi.any registration or application for registration of the mark in any
country;
vii.any successful enforcement of the mark in any country;
viii.any value associated with the mark. Generally,
ix.if a mark is well known to a relevant sector of the public in Singapore, it can
be considered well known in Singapore.

This relevant sector may include actual or potential customers of the goods
and/or services, those involved in the distribution of goods/services or businesses
dealing in the goods and/or services. Identifying a Trade Mark ® and ™ are
common symbols associated with trademarks. ® indicates that the mark is a
registered trade mark and hence protected under trade mark laws. ™ is just a
symbol used to indicate that the mark is used by a business or organisation as a
trade mark. It does not denote that the mark is registered nor protected under trade
mark laws.

Concept of Business identifier in Singapore

Business identifier means any sign capable of being represented

graphically which is used to identify any business.

Concept of Dilution in Singapore

Dilution means the lessening of the capacity of the trade mark to identify

138
[142 (2007) DLT 724]
 91

and distinguish goods or services, regardless of whether (a) there is any

competition between the owner of the trade mark and any other party; or (b) there
is any likelihood of confusion on the part of the public. 139

Making False Representation – A Criminal Offence in Singapore

It is a criminal offence to falsely represent a trade mark as registered when

it is not registered or if it is pending registration (e.g. using ® on an unregistered
mark), or make a false representation as to the goods or services for which a trade
mark is registered. 140

Proper and Continuous Use of Trade Marks in Singapore

The owner of a trade mark should use his mark properly and continuously.
Whenever and wherever possible, a trade mark should be actively applied to
reinforce the trade mark identity with its associated type(s) of goods or
services. He should display the trade mark in every medium in which he uses to
protect his brand or corporate logo (e.g. in packaging, labels, websites,
advertisements, marketing materials, press releases, trade shows and/or
business documents). Furthermore, the trade mark owner should be vigilant to
ensure that the trade mark is used in its proper context. For example, he should
not use a trade mark to describe the product itself. For example, he should use a
XYZ copier instead of a XYZ and make two copies on the XYZ copier instead of
XYZ two copies. Such good practices may prevent a successful claim by an
infringing party that the registered mark has become a generic word and thus
rendered its rights unenforceable under the law. There are numerous examples
of valuable trade mark names that have become common in the trade in this
way (e.g. escalator). 'Genericide' occurs when a trade mark, previously used by
an individual manufacturer for his products, becomes a description of the product

139
Supra Note at 138
140
Supra Note at 136
 92

itself. If a registered trade mark has not been used consecutively for five years,
there is a risk of the trade mark being removed from the register. Any interested
party can apply to the Registry of Trade Marks to have an inactive registered trade
mark removed by showing proof of non-use

5.5 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.

In case of Singapore it is clear that the laws and principles governing the
law regarding protection of trade dress is well matured and settled. This can be
inferred by having a bare perusal of principles governing the said law and the
approach of respective judicial bodies towards application of said principles. Such
situation infuse confidence amongst business doers to invest more in brand building
and marketing which have multiple positive effects on economy.
”
 93

CHAPTER VI
CONCLUSION
Trade dress is a form of intellectual property, which deals with the
visual appearance of a packaged product, which can even be the design of a
building that signify and illustrate the source of the product to the consumers.

Trade Dress broadly encompasses the overall image created by the product
or package and the overall get up of the product. It encompasses features and
characteristics such as size, shape, package, colour combinations, texture,
graphics and even particular sales techniques. A trade dress must necessarily be
non-functional to attain legal protection; otherwise it will become the subject
matter of patent law.

It being an expensive concept, a trade dress may include the design of a

“

cover page of a magazine, design of a door knob, visual appearance of a water

meter or a lamp, design of a sports shoe, a different performing style of a music
band, etc. However, a generic idea, a hypothesis or a creative concept cannot be
treated as a trade dress. An action claiming trade rights cannot be entertained in
any ordinary or common place exterior or interior retail building design, shared by
multiple competitors.

The set of laws that govern and protect unregistered trademarks are also
applicable to trade dress. Trade Dress is a type of commercial shorthand that
provides a source-associating cue to an unthinking consumer. This feature may
make rational minds treat trade dress similar to a traditional trademark. The point
of difference between the traditional trademark law and the law governing trade
dress is that unlike traditional trademark law that protects words or logos, trade
dress law protects the total packaging and design of a product.

The origin of trade dress can be traced back to the United States of
America. Trade dress, back then in the United States was considered as the overall
appearance of labels, wrappers and containers used in the packaging of a
finished or semi-finished product. With the advent of law, a plethora of additional
 94

elements of trade dress were included under the ambit of trade dress. The
packaging of a McDonald’s burger, the shape of a bottle of Coca- Cola or even the
theme of a restaurant or eating joint can be considered as an example for the same.

Trade dress as a concept has originated from the legislation of The U.S.
commonly known as The Lanham Act. Under section 43(a) of the Lanham Act, a
product’s trade dress can be protected without formal registration with the PTO. In
relevant part, section 43(a) states the following:

Any person who, on or in connection with any goods or services, or any

container for goods, uses in commerce 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, which:

(A) is likely to cause confusion, or to cause mistake, or to deceive […]

as to the origin, sponsorship, or approval of his or her goods, services, or
commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature,

characteristics, qualities, or geographic origin of his or her or another
person’s goods, services, or commercial activities, shall be liable in a civil
action by any person who believes that he or she is likely to be damaged by
such an act

It is the visual appearance of the product, which arises from the final packaging of
a product, which guides consumers in identifying the products they prefer. At
times, even educated consumers find it difficult to differentiate between two
similar looking products. Since many sellers prefer stocking imitation goods in
order to garner better profits, it becomes difficult for genuine trademarked
products to reach all the customers willing to purchase them. The aim behind the
protection of trade dress should be preventing consumers from being misled
into purchasing substandard articles and protection of the interests of genuine
manufacturers, who do not aim to garner profits unreasonably by taking advantage
of the established goodwill and reputation of a product.
 95

Unlike the law of the United States, which recognizes the concept trade dress under
Section 43(a) of the Lanham Act, the Indian law does not have a separate
provision for the trade dress under its existing Trade mark legislation. However,
the common law of passing off serves the purpose of protection of trade dress
consisting of shape, packaging and combination of colours, etc. The same has
been elucidated in Section 2 (zb) of the Trademarks Act 1999.

The new Trade Marks Act, 1999, which came into force in 2003, is largely
based on the English Trade Mark Act, 1994 and recognized the concept of trade
dress on the lines of The Lanham Act. Through the amended Act of 1999, Trade
Dress has been recognized through a new definition of Trademark, according to
which there is an encompassment of shape of goods, packaging, combination of
colours or any combination thereof.

Broadly speaking, according to Section 2 of the Trade Marks Act 1999, the
following are defined as:

(m) mark includes a device, brand, heading, label, ticket, name, signature, word,
letter, numeral, shape of goods, packaging or combination of colors or any
combination thereof;

(q) Package includes any case, box, container, covering, folder, receptacle, vessel,
casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper an
cork; Hence the new definition of trade mark under Indian law comprises all the
elements of the trade dress as under US law. The Indian courts have been
recognizing the concept of trade dress even before 2003.
”

To be eligible for protection, the overall appearance of the product has to be

different from that of other competing products. This distinctiveness may either
be inherent or acquired. Rather than looking into disputes involving infringement
of trade dress as a mere infringement of trademark and using conventional
methods to ascertain the same, the courts have the Courts have taken into account
various other factors, such as the extent of passing off in the copy of an aspect of a
trade dress or the implication of the design of a finished product and the impact
caused when the same is used for another commodity serving the same purpose,
 96

while extending protection to the right holders in order to protect their trade
dresses or prevent infringement or violation of the same. In 2017, the High Court
of Delhi and Bombay High Court have promulgated orders/judgments which
would add on to the prior cases characterizing customary law relating to assurance
of Trade Dresses.

No specific provision for trade dress has been provided for trade dress in
the Trademark Act of 1999. However, with the development of law, the laws of
“

India pertaining to Intellectual Property Rights are at par with international

standards. Well known marks have been introduced and service marks have been
recognized by the Act. For the process of streamlining and simplification of the
procedure of registration, it has now been made possible to file one single
application for registration of a mark in different classes of a goods and services.
Amendment in laws pertaining to Intellectual Property Rights has also led to
expansion of the definition of trademarks so as to incorporate shape of goods and
colour combination and shape of goods and combination of colour and also
provides for the registration of collective marks owned by associations. Under the
Trademark Act of 1999, packaging of a product or design and combination of a
product may be registered as a mark. Statutory and common law protection is
given to trademark by Indian Law. Passing off action is provided by The Indian
Law on trademark against use of similar trade dress. Thus, a passing off action can
be claimed for infringement of trade dress.

The basic requirement for a mark to be registered as a trade mark are that
it should be distinctive, capable of graphical representation, capable of
distinguishing the goods or services as originating from a particular source from
that of other similar goods and that mark should not be functional in nature. A
mark may include any word, logo, device, branch, ticket, signature, name, shape,
packaging, and combination of colours or any combination thereof. Traditionally
word marks, symbols or logos were registered as trademarks. Of the late, due to
the technological revolution in communication and mass media and due to the
increased levels of perception of an average consumer on brands, many business
entities are rushing to register nontraditional marks, such as colour, smell, sounds,
 97

slogans, shapes etc as trademarks. Trademark offices, examiners and courts are
also neither discouraging nor encouraging these types of marks to be registered. If
they are capable of distinguishing the goods or services and distinctive, they are
being allowed to be registered as trademarks. One such type of development is
trade dress protection. Trade dress involves the total image or impression of a
product and may include features such as size, shape, colour or colour
combinations, textures, graphics or even particular sales techniques. Trade dress
can be registered under section 2 of the US Lanham Act as a trademark if it is
inherently distinctive or has acquired secondary meaning; and is nonfunctional.
However, even without registration non-functional and distinctive trade dress is
protected under Sec.43 (a) of the Lanham Act. While trade dress protection is not
expressly set for the in the Lanham Act, it has evolved and been recognised
through the development of case law. The Lanham Act protects trade dress by
preventing a second comer from offering a product or package that may cause
consumer confusion with the first comer’s product or package. The Two Pesos
case was the first case on the protection of trade dress to be decided by the
Supreme Court of the US. It granted a somewhat broad protection to the trade
dress of a Mexican restaurant by noting that such trade dress was inherently
distinctive and do not require the proof of secondary meaning. This case though
said product packaging trade dress can be inherently distinctive and do not require
the proof of secondary meaning, it did not set out a clear test as to what

constitutes inherently distinctive trade dress. After this case there was a split among
the circuit courts in granting trade dress protection.

However, the split in circuit courts increased further with the Supreme
Court’s decision in Wal-Mart case. Ironically, this case instead of clarifying the
test to be adopted in finding out inherent distinctiveness, divided the trade dress
into two categories as product packaging trade dress and product design trade
dress. Furthermore, it reasoned that product packaging trade dress can be
inherently distinctive and may not need to prove secondary meaning whereas,
product design trade dress cannot be inherently distinctive and need to establish
secondary meaning. This case has major implications on trade dress protection
 98

because some products cannot be divided into product package or product design/
configuration trade dress . Though they may be inherently indistinctive, due to the
”

difficulty in classifying them as either product package or design, will require a

secondary meaning to be established, which is an additional burden on the
claimant.

In US, the trade dress law is not settled still. The circuit courts are divided
on the issue of inherent distinctiveness and the trade dress classification into
product package and product configuration trade dress. The two areas of law,
(Trademark & Trade Dress) however, remain distinct in some respects. For
instance, trade dress protection is generally focused more broadly than trademark
protection. Whereas a trademark infringement cases often involve disputes over
minor details, trade dress focuses on the total image or overall impression of a
product.

Under Common Law, trade dress may be protected under passing off
“

which protects the commercial reputation and business goodwill. Past cases
established that trade dress can be protected as get-up under passing off. As far as
India is concerned, it is interesting to note that the new Trademarks Act, 1999 has
expanded the scope of trademark with the inclusion of shape of the goods and
colour combination in the list of marks, which can be registered as trademarks.
So, under this expansion, a product package or product design, which includes
shape, colour combination, may be registered as trademarks. There are no such
registrations filed as of now. Another interesting development regarding India is
that in a recent case, the Delhi High Court granted trade dress protection for colour
combination (of Red & White) and shape of containers (for tooth powder) under
the law of passing off. It noted that due to the high illiteracy levels in India trade
dress of a product has great impact on the consumers and cause confusion in their
minds.

When considering intellectual property protection, businesses often

overlook the value of design patents and trade dress rights. Products may have
ornamentation and/or visual designs that could be protected to prevent copying.
 99

Understanding the differences between design patents and trade dress rights may
be beneficial to an engineer or other product designer involved with designing a
product. The timing of product development and its expected lifecycle can impact
what type of protection may be desirable, and understanding these differences can
help create products that compete longer in the marketplace.

Design patents; on other hand; 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. In the
Apple v. Samsung design infringement case, Samsung was found to infringe an
Apple design patent because, even though their Galaxy S 4G employed an overall
different shape, the bezel of the Samsung phone looked substantially similar to
Apple's protected bezel design. That similarity of only a portion of the overall
product was sufficient to infringe.

Trade dress is a type of trademark directed to the distinctive look and feel
of a product or service which identifies its source. To be registrable, a trade dress
needs to serve as a source identifier, be distinctive in the marketplace, be used in
commerce, and be primarily non-functional. Trade dress may include the design
of a product or its packaging. If a product design is identifiable with a
company or source, trade dress rights prevent other products from appearing
confusingly similar to a consumer.

To obtain trade dress rights, the design must be non-functional, and must have
acquired secondary meaning such that the design is identifiable with the source.
For example, the companies associated with the trade dress registrations below are
likely readily identifiable to many of us. If the design involves product packaging,
trade dress rights may arise from inherent distinctiveness.

Trade dress protection can only be obtained for non-functional designs.

For example, a pink colored bandage was not protectable because the color served
the purpose of blending well with skin. The shape of a Gibson guitar was deemed
too functional because it was advertised to have acoustical advantages. If trade
dress rights may be desired, care should be taken to avoid touting functional
 100

benefits of the design. Demonstrating that a design has acquired secondary

meaning can be difficult and requires evidence which may include
testimony/surveys, or extensive marketing and/or sales of the product.
Aggressively highlighting the design feature when advertising may facilitate
acquisition of secondary meaning.

Trade dress rights do not expire as long as the design is used in commerce
as a source identifier. Once a design acquires 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. In contrast, infringing a design patent requires an
ordinary observer to find the accused design substantially similar to the protected
design, in context of prior designs in the field – generally a more difficult bar.

Although not necessary, registering a trade dress conveys a number of

advantages that may serve as deterrents against copying; for example, a registered
trade dress is presumed valid such that the burden of establishing invalidity falls
on a copying party, whereas the owner of an unregistered mark must establish
its validity. If the product is not yet being commercialized, only a design patent
may be possible because a trade dress rights arise only for a commercialized
product design. Similarly, if the product has been publicly disclosed for longer
than an allotted grace period, only trade dress rights may be available .
”

If the product lifecycle tends to be short, the limited term of a design

patent may provide sufficient protection. However, if various products may be
launched under your brand, (for example, different models of sneakers), there
could be value in pursing trade dress protection for distinctive design features
which may be employed throughout the product line.

If the commercial space is prone to knock-offs, it may be desirable to

“

pursue multiple layers of protection. Before commercialization, contemplate

obtaining a design patent for a unique ornamental feature of a product which could
be associated with the company or brand. When commercializing the product,
advertise and specifically call out the unique ornamental design features to help
 101

build recognition for acquiring secondary meaning. A design patent should

hopefully discourage copying of the design, helping to establish distinctiveness of
the design.

After several years of commercialization, applying for trade dress

protection for the design feature if the product or similar products with the same
design feature should be considered in long-term plans. In this manner, upon
expiration of the design patent term, trade dress protection may be in place to
continue protecting your mark as long as the products are sold .
”

To sum it up, design patents and trade dress rights should be considered
when the visual appearance of a product may contribute to commercial success in
the marketplace. These can be important tools for protecting the distinct
ornamentation or design of products which may become associated with a
company. Investment in such protection can enhance its economic benefit to the
owner of the rights.
 102

CHAPTER VI
FINDINGS AND SUGGESTIONS
The importance of having independent design legislation and significant
jurisprudential literature on this matter cannot be denied. Design law caters
exclusively to aesthetic appeal and covers intellectual property that is not
trademarks, copyright and patents. Since designs can be registered in both 2D and
3D forms, it is necessary that design law defines an 'industrial drawing', clarifies
the aspect of 'copyright' in design, and distinguishes between copyright over
“

artistic work as opposed to rights over industrial blueprints. This is a development

one hopes will come sooner rather than later.

Additionally, in practice, owing to lack of statutory recognition granted to

passing off in the Indian Designs Act, reliance is usually placed on trademarks
law and the commonly accepted principles of common law as non-codification
does limit the applicability of the remedy of passing off to all facts and
circumstances of design rights violations.

Before a business can establish commercial relations with its customers, it

must create an identity for itself, as well as for its goods and services. Economic
competition is based on the premise that consumers can distinguish between
products offered in the marketplace. Competition is made difficult when rival
products become indistinguishable or interchangeable. Part of a business's identity
is the good will it has established with consumers, while part of a product's
identity is the reputation it has earned for quality and value. As a result,
businesses spend tremendous amounts of resources to identify their goods,
distinguish their services, and cultivate good will.

The four principal devices businesses use to distinguish themselves are

trade names, trademarks, service marks, and trade dress. Trade names are used to
identify corporations, partnerships, sole proprietorships, and other business
entities. A TRADE NAME may be the actual name of a business that is registered
with the government, or it may be an assumed name under which a business
 103

operates and holds itself out to the public. For example, a husband and wife might
register their business under the name Sam and Betty's Bar and Grill, while doing
business as The Corner Tavern. Both names are considered trade names under the
law of unfair competition.

To receive protection from infringement, trade names, trademarks, service

marks, and trade dress must be distinctive. Generic language that is used to
describe a business or its goods and services rarely qualifies for protection.

When competitors share deceptively similar trade names, trademarks,

service marks, or trade dress, a cause of action for infringement may exist. The
law of unfair competition forbids competitors from confusing consumers through
the use of identifying trade devices that are indistinguishable or difficult to
distinguish. Actual confusion need not be demonstrated to establish a claim for
infringement, so long as there is a likelihood that consumers will be confused by
similar identifying trade devices. Greater latitude is given to businesses that share
similar identifying trade devices in unrelated fields or in different geographic
markets. For example, a court would be more likely to allow two businesses to
share the name Hot Handguns, where one business sells firearms downtown, and
the other business runs a country western the ater in the suburbs .
”

Based on the extremely broad definition of trade dress, the concept has
been used to protect a wide assortment of assets, which, at first blush, would seem
to be incapable of protection. Trade dress theories have been used to protect
restaurant atmospheres, a signature golf hole, the appearance (or configuration) of
a variety of products, colors, the presentation style of a trade show, a comedian's
style, smells, and even sounds. The law regarding the protection of a product's
configuration (the shape and appearance of the product itself rather than its
packaging) is currently undergoing great changes, and the standards used to
determine if a configuration is entitled to protection vary greatly from circuit to
circuit. Accordingly, anyone seeking to protect (or defending against a claim
based upon) a configuration must pay particular attention to the venue chosen for
an infringement suit.
 104

Registration for product configurations may also be obtained. Such registrations

are extremely valuable tools in the context of litigation because of the evidentiary
presumptions of ownership and validity they create they create.

Trade dress rights have been recognized in the overall style of trade shows.

Sounds, provided they serve the fundamental trademark purpose of

“

identifying a single source of goods or services, can be protected, either with

common law rights or through registration. The most notable example of a sound
trademark is probably the NBC three tone chime, for which a registration was
granted.

Trade dress protection may also be available in connection with products,

packaging, or business forms and stationery which are worthy of design patent,
utility patent or copyright protection. If these other forms of protection have expired
or were never obtained, trade dress rights may nonetheless remain available.
Protecting configurations, this area of the law, especially with respect to patents,
is constantly evolving and varies from court to court.

It is possible to simultaneously protect a design with both trade dress

rights and a design patent. Similarly, trade dress rights can be used to protect a
design after a design patent has expired. This is possible because patent and trade
mark laws have different origins and purposes. The existence of a design patent
may either help or hurt the assertion of trade dress rights. If, during the term of the
patent monopoly, the design so dominates the market, it may become generic of
the goods, or considered functional, and thus trade dress protection will not be
available (pillow shape of shredded wheat). Design patents, however, are only
granted for non- functional designs.
”

Thus, a design patent is some evidence of non-functionality in the trade dress

context.

The pendulum appears to be swinging back from the apogee of expansive

trade dress protection. Courts are increasingly placing hurdles in front of trade dress
plaintiffs seeking to protect non-traditional trade dress formats. This trend is most
 105

evident in the product-configuration context and where utility patent rights and
trade dress rights converge.

Nonetheless, trade dress rights remain a powerful tool for plaintiffs.

Though never put down in words, many decisions seem to be based on
fundamental notions of right and wrong. Using trade dress theories, courts can
protect against a wide variety of unfair practices. Those confronted by
unscrupulous competitors with a penchant for copying products, atmospheres, or
selling styles, which fall outside the scope of patent, copyright, or traditional
trademark protection, would be wise not to forget their trade dress rights.

RELEVANT PROVISIONS

1. The Lanham (Trade Mark) Act, 1946 [Section 43(a) of the Lanham Act]

2. Trade Mark Act, 1999

3. The Trade Mark Rules, 2017

4. Trade Mark Law and Regulations, 2020

5. Consumer Protection Act (CPA), 1986

6. The Indian Constitution, 1950

7. UNCITRAL Model Law

 106

BIBLIOGRAPHY
BOOKS

1. Dr. B.L.Wadehra, Law relating to Intellectual Property, Fifth

Edition, Universal Law Publication

2. Iyengar’s, Commentary on The Trade Marks Act, Fifth Edition,

Universal Law Publication

3. P. Narayanan, Intellectual Property Law, Third Edition, Eastern

Law House

WEBSITES

1. India: Protection Of Trade Dress – Developing Jurisprudence by

Gautam Kumar, LexOrbis 05 th April 2020.

2. http://respectfortrademarks.org/tricks-of-the-trademark/history-
oftrademarks/

3. https://www.altacit.com/publication/first-amongst-equals-
review-of- thehistorical- perspectives-of-the-trademark-legislation-and-
registration/

4. P. Manoj, Yahoo Awarded India’s First Sound Mark; Nokia in

Queue LIVE MINT, Aug. 22, 2008; Yahoo! Yodels into India’s Trade Mark
Registry MANAGING INTELLECTUAL PROPERTY WEEKLY NEWS,
Sep. 1, 2008.

5. https://lawtimesjournal.in/non-traditional-trademarks/#_ftn5

6. https://ijlpp.com/trade-dress-an-evolving-concept-under-the-
ambit- ofintellectual- property-rights/

7. Slowfood-Korea, Inc. v. Gil-Soo Kim and Hyung-Yak Lee,

 107

Supreme Court, 2016 Da 229058, Sept. 21, 2016 (S. Kor.

https://www.lexology.com/library/detail.aspx?g=ecb16a82-4a52-47aa- 8d0c-
901478bfbdb5 (last referred to on 05 th Sept 2020)

8. UNFAIR COMPETITION: Trade Name, Trademark, Service

Mark, And Trade Dress Infringement
https://law.jrank.org/pages/10981/Unfair-Competition-Trade-Name-
Trademark-Service-Mark-Trade-Dress- Infringement.html (last referred to
on 07th Sept 2020)

9. TRADE DRESS AND UNFAIR COMPETETION

https://www.priceheneveld.com/practice/trade_dress/ (last referred to on
04th Sept 2020)

10. Treaties and Conventions for the Protection of Industrial

Designs and the Protection System in Major Countries, Japan Patent Office
Asia-Pacific Industrial Property Center (2003)

11. https://www.jpo.go.jp/e/news/kokusai/developing/training/textbo
ok/docum ent/index/10_ Treaties_and_Conventions.pdf (last referred to on
04 th Sept 2020)

12. WIPO INTELLECTUAL PROPERTY HANDBOOK, WIPO

Publication No. 489 (E) ISBN 978-92-805-1291-5 WIPO 2004
(Second Edition Reprinted – 2008)

13. International Intellectual Property Law by Jonathan Franklin

published online by the American Society of International Law (ASIL)
(2003)

14. https://www.asil.org/sites/default/files/ERG_IP.pdf (last

referred to on 04 th Sept 2020)

15. www.mondaq.com