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AN ANALYTICAL STUDY OF TRADE DRESS PROTECTION IN INDIA - Final
AN ANALYTICAL STUDY OF TRADE DRESS PROTECTION IN INDIA - Final
SUBMITTED BY:
SUBMITTED TO:
Under the
Guidance of:
PROF.RUZBEH RAJA
Department of Law
University of Mumbai
2
CERTIFICATE
Examiners
1)_________________________
2)_________________________
Date:
Place:
4
DECLARATION
I declare that this written submission represents my ideas in my own words and
where others' ideas or words have been included, I have adequately cited and
referenced the original sources. I also declare that I have adhered to all principles
of academic honesty and integrity and have not misrepresented or fabricated or
falsified any idea/data/fact/source in my submission. I understand that any
violation of the above will be cause for disciplinary action by the Institute and can
also evoke penal action from the sources which have thus not been properly cited
or from whom proper permission has not been taken when needed.
____________________
(Tanvi SDange)
LLM-SEMIV-Roll no:
Date:
Place: Mumbai
5
ACKNOWLEDGEMENT
This teaching of Sir, has not only inspired this research work of mine but
will continue to inspire all the future endeavors of my life. I owe my deepest
gratitude to Sir for his valuable remarks and suggestions in my research work. I
would like to thank to Sir for his constant support, guidance and encouragement.
To my other colleagues at Mumbai University, I would like to thank you for your
wonderful co-operation as well. It was always helpful to discuss ideas about my
research with you. I am in short of words to express my gratitude to my
colleagues for their untiring support.
I would also thank the above colleagues for always remaining by my side
patiently and helping me in the entire process of enlightening me in my topic.
Besides this, several people have knowingly and unknowingly helped me in the
successful completion of this research work. I take opportunity to thank them all
with the deepest sense of gratitude.
PREFACE
Today, the visual appearance of the product and product packaging play a
critical role in ensuring identify specific products and eventually buy them. Trade
dress relates to the overall appearance of a product i.e., visual features or sensual
appearance of a product such as its size, shape, packaging, colour or combination
of colours, textures, graphics that is being used by companies to market and sell
their products.
Trade dress has not been defined specifically in the Trade Marks Act,
1999 (Act) unlike the US Law which recognizes the concept of trade dress under
Section 43(a) of the Lanham Act. However, Section 2 of the Act provides a
statutory framework to protect trade dress by broadening the definition of
trademarks to include shape of goods, packaging and colour combination etc.
The typical challenges for a company trying to protect and enforce its
trade dress pertain to establishing distinctiveness, determining whether key
elements are functional and identifying whether it has attained secondary meaning
and association with the rights holder by virtue of use. Generally, most actions
combine the common law remedy of passing off with statutory rights in the
packaging or label.
Where the design, shape, layout or colour scheme – either on its own or
jointly with other elements – has not been registered as a trademark or does not
qualify for registration, the owner of the trade dress can still exercise common law
rights by filing a suit for passing off. Where passing off was claimed, the court
may consider and compare the competing trade dresses in their entirety to reach a
prima facie decision of whether there is a likelihood of confusion.
LIST OF ABBREVIATIONS
TABLE OF CASES
SR. CASE NAME CITATION.
NO.
1. Abercrombie & Fitch Co. v. 537 F.2d 4 (2d Cir.
Hunting World, Inc. 1978)
2. Apollo Tyres Ltd. V. Pioneer CS(OS) 2802/2015
Trading Corporation & Ors.
3. Apple Store case Case C- (421/1 3)
4. Ashley Furniture Industries, Inc. 187 F.3d 363 (4th
v. San Giacomo N.A. Ltd. Cir. 1999)
5. B. Chawla v Bright Auto AIR 1981 Delhi 95
Industries
6. Cadbury India Limited and Ors [142 (2007) DLT
Vs. Neeraj Food Products 724]
7. Cadila HealthCare Vs. Cadila (21) PTC 541 SC
Pharmaceuticals 2001
8. Canon Kabushiki Kaisha Vs. Inc 22 Case C-
Metro Goldwyn Mayer 39/97
9. Carlsberg v. Som Distilleries SCC OnLine Del
2017 8125
10. Carson v. Here's Johnny Portable 498 F. Supp. 71
Toilets, Inc 498 F.Supp 71 (1980)
(E.D.Mich. 1980)
11. Chevron Chemical Co. v. 659 F.2d 695 [5th
Voluntary Purchasing Groups, Cir. 1981]
Inc.,
12 Christian Louboutin Sas Vs Mr. (COMM), 714 of
Pawan Kumar & Ors. CS 2016
13 Colgate Palmolive Co v Anchor (October 2003,
Health and Beauty Care Pvt. Ltd. Delhi HC)
11
Rimmer 114
54. Vornado Air Circulation Sys. Inc. 58 F.3d 1498 (10th
v. Duracraft Corp., Cir. 1995)
55. Voss of Norway v. OHIM Case
T-129/04
56. Wal-Mart, Inc. Vs. Samara Bros., 529 U.S. 205
Inc (2000)
15
CHAPTER-WISE INDEX
1.11. CONCEPT OF
1 TRADEMARK IN INDIA
1.11. TYPES OF NON-
2 CONVENTIONAL
MARKS
1.11. JURISPRUDENCE
3 GOVERNING CONCEPT
OF TRADE DRESS
1.12 CONCEPT OF TRADE
DRESS IN THE INDIAN
LEGAL SYSTEM
1.12. LIKELIHOOD OF
1 CONFUSION
1.12. “DECEPTIVELY
2 SIMILAR” TEST
1.12. THE SHAPE OF
3 PRODUCT HAVING
ACQUIRED
DISTINCTIVENESS
CHAPTER HISTORICAL
II DEVELOPMENT OF
THE CONCEPT OF
TRADE DRESS
2.1 INTRODUCTION:
2.2 TRADE MARKS
2.3 TRADE DRESS
2.3.1 TWO PESOS CASE
2.3.2 WAL-MART STORES
CASE
2.4 PRODUCT DESIGN
17
TRADE DRESS v.
PRODUCT PACKAGE
TRADE DRESS
2.5 FUNCTIONALITY – A
BAR TO TRADE DRESS
PROTECTION
2.6 AN OVERVIEW OF
INDIAN POSITION ON
THE CONCEPT OF
TRADE DRESS IN
PARTICULAR
BACKDROP OF DESIGN
IDEAS IN THE
AUTOMOBILE
INDUSTRY
CHAPTER INTERNATIONAL
III 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)
3.2 HAGUE AGREEMENT
(The Hague Agreement
Concerning The
International Deposit of
18
CHAPTER COMPARISON
V BETWEEN THE
CONCEPT OF TRADE
DRESS IN INDIA, USA
AND SINGAPORE
5.1 INTRODUCTION
5.2 ANALYSIS OF LEGAL
REGIME OF USA ON
LEGAL PROTECTION
PROVIDED TO
CONCEPT OF TRADE
DRESS
5.3 ANALYSIS OF LEGAL
REGIME OF INDIA ON
LEGAL PROTECTION
PROVIDED TO
CONCEPT OF TRADE
DRESS
5.4 ANALYSIS OF LEGAL
REGIME OF SINGAPORE
ON LEGAL
PROTECTION
PROVIDED TO
CONCEPT OF TRADE
DRESS
5.5 CONCLUSION
20
Chapter VI CONCLUSION
CHAPTER-I
INTRODUCTION
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).
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 colors”. This makes it
22
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 gets up or layout can be deceptively similar
which may cause confusion in the minds of the consumers.
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.
ii. Tracing the origin of the concept of trade dress and its evolution.
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.
24
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 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.
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
27
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.
3
Supra Note at 1
4
“Rule 26(5) of the Trade Marks Rules, 2017”
5
Article 15 of TRIPS
28
1. Sound Marks
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
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
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
29
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 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
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)
30
4. Motion Mark
marks by USA. Motion mark as a trademark is rarely registered as they have just
“
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
12
Ibid
13
Ashley Furniture Industries, Inc. v. SanGiacomo N.A. Ltd 187 F.3d 363 (4th Cir. 1999)
31
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
registry.
7. Trade Dress
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)
32
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
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 . ”
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
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
19
Colgate Palmolive Co v Anchor Health and Beauty Care Pvt. Ltd. (October 2003, Delhi HC)
20
Ibid
34
c) Christian Louboutin Sas Vs Mr. Pawan Kumar & Ors.22 (December 2017,
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.
21
Christian Louboutin Sas Vs Mr. Pawan Kumar & Ors CS(COMM), 714 of 2016
22
Supra Note at 21
23
“India: Protection Of Trade Dress – Developing Jurisprudence” by Gautam Kumar, LexOrbis
05th April 2020”
35
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.
24
https://ijlpp.com/trade-dress-an-evolving-concept-under-the-ambit-of-intellectual-
propertyrights/
36
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
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
25
Ibid
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
37
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.
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.
28
Supra Note at 5
29
C.S.No.452 of 2008
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
38
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.
33
2002 (24) PT C 1 (SC)
34
1906 (23) RPC 774
35
Ibid
36
2008(4)CHN608
39
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
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
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.
37
Supra Note at 36
38
Parle Products (P) Ltd. v J.P. & Co. 2008(4)CHN608
39
2011 (47) PTC 100 Bom
40
In relation to the shape of the product, the Bombay High Court in the case
of Gorbatschow Wodka Kg v. John Distillers Limited 40 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 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.
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.
42
CHAPTER II
2.1 INTRODUCTION:
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]
44
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 Distilleries44, 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.
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.
trader. A mark may include any word, logo, device, branch, ticket, signature,
name, shape, packaging, a combination of colors, or any combination thereof.
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
46
48
https://ijlpp.com/trade-dress-an-evolving-concept-under-the-ambit-of-intellectual-
propertyrights/
47
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
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.
49
514 U.S. 159
48
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.
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
50
Samsonite Corporation v Vijay Sales 73 (1998) DLT 732
51
505 U.S. 763 (1992)
49
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 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
52
Supra Note at 52
50
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 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 trademark”54.
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 Enterprises56 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;
Finally, the Eighth circuit visited the Two Pesos analysis in Stuart Hall Co. v. Am
53
18 F. Supp. 2d 92 (D. Mass. 2000)
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
51
pad Co58. 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.
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
58
187 F.3d 363 (4th Cir. 1999)
59
51 F.3d 780, 783
60
529 U.S. 205 (2000)
52
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:
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
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 brand”63.
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 appealing64. Wal-Mart is an apparent attempt by the
court to judicially recognize this reality.
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
63
Supra Note at 62
64
Wal-Mart, Inc. Vs. Samara Bros., Inc 529 U.S. 205 (2000)
54
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
classify ambiguous trade dress as product design, thereby requiring secondary
meaning.”
65
Ibid
66
Wal-Mart, Inc. Vs. Samara Bros., Inc 529 U.S. 205 (2000)
55
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.
67
Ibid
56
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 case68 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 patent”69. 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 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.
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.
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 Designs 75 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 Convention71 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 India72.
70
532 U.S. 23
71
https://ijlpp.com/trade-dress-an-evolving-concept-under-the-ambit-of-intellectual- property
rights/
72
Supra Note at 59
58
Incidentally, the remedy for passing off for designs is not statutorily
73
Hague Agreement Concerning the International Registration of Industrial Designs
59
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 & Ors751, 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
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 &
74
Paris Convention for The Protection Of Industrial Property, 1883
75
AIR 1981 Delhi 95
60
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.
78
CS(COMM) No. 903/2018
79
73 (1998) DLT 732
62
CHAPTER III
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)
63
64
Based on the provision of Article 19 of the Paris Convention 83, 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:
As a result, the relations between contracting countries can be divided into the
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
65
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
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
66
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.
II. at least, 1,000 applications for the protection of industrial designs have
been filed in or for the state concerned by residents of states other than that
state.
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
68
Agreement.89
89
Supra Note at 91
90
Supra Note at 92
91
https://www.priceheneveld.com/practice/trade_dress/ (last referred to on 04th Sept 2020)
69
ii. trademarks,
v. patents,
(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
years”93.
92
Supra Note at 96
93
Article 25 TRIPS Agreement
71
72
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.
94
Article 26 - Section 4 of part II, the TRIPS Agreement
73
95
Article 2 (1) of the Berne Convention (Paris Act 1971)
96
Article 2 (7) of the Berne Convention (Paris Act 1971)
74
does not apply to works of applied art, which shall not be less than ten years
(Article IV (2) and (3)).
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.
97
Ibid
75
98
UNIVERSAL COPYRIGHT CONVENTION, 1952
99
EU, Directive 98/71 EC of the European Parliament
100
Ibid
101
EU, Directive 96/71 EC of the European Parliament
76
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
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
77
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
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
105
EU, Directive 93/71 EC of the European Parliament
106
EU, Directive 92/71 EC of the European Parliament
107
EU, Directive 91/71 EC of the European Parliament
78
3.12 CONCLUSION
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.
79
CHAPTER IV
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
80
Lord Oliver developed a list of three elements for determining passing off in
Reckitt & Colman Products Ltd Vs. Borden Inc108., Case namely:
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 . ”
protect the image of the buildings’ exteriors as device marks for commercial use,
layout 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
109
“https://ijlpp.com/trade-dress-an-evolving-concept-under-the-ambit-of-intellectual-
propertyrights/”
82
While there is no reference to layouts in the Trade marks Act, 1999, the
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.
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.
110
505 U.S. 763 (1992)
111
C.S.No.452 of 2008
83
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 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.
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
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
planning.
An inward curving panel with TV fitted on one side of the walls for
design presentation and viewing of 3D renderings of rooms.
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.
The Indian gospel on trade dress had for a while been the decision in
112
Case C- (421/13)
86
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
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 Pharmaceuticals114 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
113
T-129/04
114
(DLH)-1996-2-64
115
2001 (21) PTC 541 SC
87
116
2001 (1) AD (Del) 448
88
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.
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.
”
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.
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
117
C.S.No.452 of 2008
90
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 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
118
file:///C:/Users/Admin/Downloads/Trademark%20Infringement%20and%20Passing%
20off‐%20Law%20and%20Important%20Judgments.pdf (last referred to on 05th Sept 2020)
119
2017 (72) PTC 1. (Bom)
91
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
“
CHAPTER V
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
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
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.
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
design and the company even before the product is launched to establish
protection as early as possible and maximize potential protection. While "look
120
CS (Comm.) 714 of 2016
94
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.
121
“India: Protection Of Trade Dress – Developing Jurisprudence” by Gautam Kumar, LexOrbis
05th April 2020
95
Copyright
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.
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
to control its market channels . In Omega v. Costco Wholesale1124 plaintiff relied
”
122
Copyright Act, 17 U.S.C.
123
562 U.S. 40 (2010)
124
568 U.S. 519 (2013) Pg. No. 11-697
96
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
Commission, the makers of Crocs sandals was able to prevent the importation of
competing products that too closely resembled its design patents.
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
125
F.3d 665 (Fed. Cir. 2008)
126
598 F.3d 1294 (Fed. Cir. 2010)
97
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.
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
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.
of the Lanham Act. Now, trade dress is defined as a product’s total image or
overall appearance and may include features such as size, shape, colour or colour
combinations, texture, graphics or even certain sales techniques. Trade dress is
available to both registered and unregistered trade dress. If the trade dress is
unregistered, the basis for protection is section 43(a) of the Lanham Act which
provides protection for any word, term, name, symbol, or device, or any
combination thereof used on or in connection with any goods or services, or any
container for goods.
It provides for civil action against any person who uses any word or
combination of words, term, name, symbol or device associated with any goods or
services belonging to another so as to cause confusion or deception with respect to
the origin of the concerned goods or services. It also provides that in a civil action
for trade dress infringement for trade dress not registered on the principal register,
the person who asserts trade dress protection has the burden of proving that the
matter sought to be protected is not functional.
source.
a) The accused mark or trade dress creates a likelihood of confusion
as to source, or as to sponsorship, affiliation or connection. This element
does not rest on whether the defendant’s package or trade dress is identical
to plaintiffs; rather, it is the similarity of the total overall impression that is
to be tested.
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).
In the case of Two Pesos v Taco Cabana131, Two Pesos owned a growing
“
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
101
127
505 U.S. 763 (1992)
128
529 U.S. 205 (2000)
102
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. The shape of goods which results from the nature of the goods
themselves; or
B. The shape of goods which results from the nature of the goods
themselves; 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.
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
104
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 the case of Colgate Palmolive & Co. V Anchor Health and Beauty Care
106
Pvt. Ltd.133 the combination of the colour red and white was in dispute. It was held
that when the colour combination, packaging, shape of container of both the
product is same then consumer confusion will be higher with regard to the origin
of the both the product. If an illiterate naive customer uses another product basing
on the physical appearance of the product he has been using it amount to passing
off.
In other words if the first look of the item without going into the 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 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 An136 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
133
LAWS(DLH)-1996-2-64
134
(2000) 5 SCC 573
135
(1882) 8 A.C
136
C.S.No.452 of 2008
107
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
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
Descriptive marks
I. Marks which are signs or indications which are or have become customary
“
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
111
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;
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.
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
112
circumstances:137
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
137
https://www.asil.org/sites/default/files/ERG_IP.pdf (last referred to on 04th Sept 2020)
138
[142 (2007) DLT 724]
113
trade mark. It does not denote that the mark is registered nor protected under trade
mark laws.
”
Dilution means the lessening of the capacity of the trade mark to identify
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
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
”
139
Supra Note at 138
140
Supra Note at 136
114
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 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.
115
CHAPTER VI
CONCLUSION
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.
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
116
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:
”
It is the visual appearance of the product, which arises from the final
“
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.
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,
“
(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.
118
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
119
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
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
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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.
”
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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 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.
than an allotted grace period, only trade dress rights may be available.
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
”
CHAPTE R VI
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
“
based upon) a configuration must pay particular attention to the venue chosen for
an infringement suit.
Trade dress rights have been recognized in the overall style of trade shows.
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 evident in the product-configuration context and where utility patent rights
and trade dress rights converge.
RELEVANT PROVISIONS
1. The Lanham (Trade Mark) Act, 1946 [Section 43(a) of the Lanham Act]
BIBLIOGRAPHY
BOOKS
WEBSITES
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/
5. https://lawtimesjournal.in/non-traditional-trademarks/#_ftn5
6. https://ijlpp.com/trade-dress-an-evolving-concept-under-the ambit-
ofintellectual- property-rights/
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/textbook/
docum ent/index/10_ Treaties_and_Conventions.pdf (last referred to on
04 th Sept 2020)
15. www.mondaq.com