Trade dress refers to features of the visual appearance of a product that may also include features such as size, shape, its packaging, colour or combination of colours. It refers to the overall get-up of the product. Though the concept of trade dress originated in the U.S., the law relating to trade dress can be traced to the common law doctrine prohibiting ‘unfair competition’.
The Indian law does not have a separate provision for the trade dress under its existing trademark legislation, unlike the US law. The new Trade Marks Act, 1999, which came into force in September 2003 recognized the concept of trade dress and provided a statutory basis for the protection of trade dress under the Indian trademark regime. The amended Act of 1999 recognizes trade dress through the new definition of a trademark given under Section 2(1) (zb) of the Trade Marks Act, 1999 which provides that trademark may include the shape of goods, their packaging and combination of colours. Further, the definition of the mark under Section 2(1)(m) of the Act provides that “Mark” includes a device, brand, style, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours thereof. Section 2(1)(q) of Act defines a package to include any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork.
This statutory basis is further reinforced by Section 10 of the Act which provides that a trademark may be registered with limitations for colour and if a trademark is registered without limitation of colour, it shall be deemed to be registered for all colours.
The rationale behind the recent emphasis on the protection of trade dress under Indian trademark regime is to avail the modernization of law by recognizing colour combination and packaging of goods as trademarks, which is intended to prevent a consumer from buying one product under the belief that it is another.
The Indian courts have given protection to trade dress even before the new Trade Mark Act came into force through common law remedy of “passing off”. Largely, trade dress protection is governed by the same set of laws that protects unregistered trademarks. The main principle which has been followed by courts in India is that, although there is no monopoly in colour, a defendant who copies the colour scheme or get-up or trade dress which is likely to confuse the customers would be prohibited by injunction.
To determine the issue of confusion of customers, the question arises whether it is the overall similarity of trade dress which is material or the issue is to be decided by comparing the distinguishing features. Another related issue is the relevance of type customers and the nature of the product to decide the issue of confusion on account of similarity/sameness of trade dress.
Indian Courts have given several judgments to resolve this issue. For instance, Hon’ble Supreme Court of India laid down the parameters for comparison between two marks in Parle Products (P) Ltd. v. J.P. & Co., Mysore, 1972 AIR 1359. In this case, the packets of biscuits manufactured by the appellants and respondents were practical of the same size, the colour schemes of the two wrappers were almost the same, and the designs on both, though not identical, bore such a close resemblance that one could easily be mistaken for the other. The Supreme Court laid down that for deciding whether one mark is deceptively similar to another, the broad and essential features of the two have to be considered. They are not to be placed side by side to find out differences in the designs and it would suffice if the mark bears an overall similarity to the other. After all, an ordinary purchaser is not gifted with the powers of observation of Sherlock Holmes.
In Vicco Laboratories vs. Hindustan Rimmer AIR 1979 Del 114, the concept of imitation of trade dress was asserted even when there was no deceptive similarity between the marks. In this case, both expressions ‘trade dress’ and ‘fact get-up’ were used and the court ruled that despite two marks ‘Vicco’ and ‘Cosmo’ used by the plaintiffs and defendants respectively were no doubt different and the mark ‘Cosmo’ by itself was not likely to deceive but the entire get-up and the colour scheme of the tube and carton adopted by the plaintiffs and the defendants were identical in every detail and were likely to confuse and deceive the customer easily.
Following the ratio of Cadila Health Care case, High Court of Delhi in Colgate Palmolive Co. v. Anchor Health and Beauty Care [2003(27) PTC 478 (Del)] introduced the new practice of protection of trade dress in India and influenced the commercial thinking when more and more stakeholders tried to preserve their trade dress from onslaughts by competitors.
In this case, the Hon’ble HC of Delhi observed: “…Colour combination, get-up, layout and size of the container is a sort of trade dress which involves an overall image of the product’s features. There is wide protection against imitation or deceptive similarities of trade dress as trade dress is the soul for identification of the goods as to its source and origin and as such is liable to confuse the mind of the unwary customers particularly, those who have been using the product over a long period.” And the court held “It is the overall impression that the customer gets as to the source and origin of the goods from the visual impression of colour-combination, the shape of the container, packaging, etc. …, if the first glance of the article without going into the minute details of the colour combination, get-up or layout appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one’s goods as those of the other with a view to encash upon the goodwill and reputation of the latter.”
Further, in Heinz Italia vs. Dabur India Limited, 2007 (35) PTC 1, 2007 (6) SCC 1, the Supreme Court observed that the colour scheme of packets of Glucose-D and Glucon-D was almost identical with “happy family” superimposed on both; packaging of Glucose-D and Glucon-D was so similar that it could easily deceive a purchaser.
Recently, the High Court of Delhi in Win-Medicare Private Limited v. Galpha Laboratories Limited [I.A. Nos.22711/2014 & 26365/2014 in CS(OS) No.3507/2014 decided on 04/01/2016] again followed the test of overall similarity of trade dress and quoted anti-dissection test with approval. The Court in its decision observed that the subject matter of the colour combination, get-up and layout are not only covered in the subject matter of copyright but also covered under the common law remedy i.e. the law of passing off. The Court quoted McCarthy on TradeMarks and Unfair Competition about the anti-dissection Rule and applied the anti-dissection rule to the case in hand stating that the conflicting composites must be compared by looking at them as a whole rather than breaking the marks up into their parts for comparison.
Hereinafter are discussed particular issues about trade dress protection in India. One issue is whether a minor deviation in trade dress excludes passing off. The High Court of Delhi in The Sidhpur Sat-Isabgol Factory vs. Delhi Sat-Isabgol Industries, 2001 PTC 648 (Del) dealt with the issue. The court ruled that defendant could not escape the mischief of passing off and held that a minute deviation of the device of ‘GANESH’ in place of “TELEPHONE” in plaintiff’s carton did not mean that the entire layout or trademark had changed if the defendant had copied every feature of the plaintiff’s distinctive carton including its colour combination, get-up, layout, arrangement and even the descriptive matters without even a slight change.
In Hamdard National Foundation vs. Abdul Jalil, 2008 (38) PTC 109 (Del) the issue of trade dress and dilution of the trade mark concerning dissimilar goods was in issue under Section 29(4) of The Trade Marks Act, 1999.
It is to be pointed out that the dilution of the trade mark is a concept unrelated with confusing similarity or imitation of trademarks or similarity of trade dress. Even if the confusing similarity is not proved, still the rights holders may desire an injunction for which dilution of the trademark is alleged.
In a recent case, Midas Hygiene India Pvt. Ltd. v. Sudhir Bhatia (RFA No. 239, 240 and 241 of 2011, Date of decision: 04.11.2015), High Court of Delhi held that product packaging could not be protected under the Designs Act. The Court ruled that the statutory definition of designs excludes “artistic work” and “labels used as trademarks”.
To sum up, it can be said that protection of trade dress requires as much attention as protection of ordinary trademark because a large section of the populace, being illiterate or poorly educated about differentiation of product coming from different sources, are primarily guided by the colour scheme and packing of the product. Given this, the courts in India have rightly applied in cases of passing off, a test of ‘average man of ordinary intelligence’ to adjudge the overall similarity of the products and rejected the test laid down in Kellog’s Company case and M/s. S.M. Dyechem Ltd.’s case of the comparison of distinguishing features of the trademark or trade dress.
The factors such as type of goods and class of purchases can be taken into consideration when the nature of the products is such that class of purchasers are expected to have a certain level of awareness, education and intelligence to distinguish the features of the trade dress of two competing products.
Comparative Study of India and the U.S
There is not a lot of difference between the laws of trade dress protection in both of these countries. One of the differences between the U.S trade dress and Indian trade dress is, in the U.S, trade dress gets registered by providing certain conditions, while in India the Trademarks Act does not recognise the term trade dress for which it doesn’t get protection. Certain features like a combination of colours, shape, etc. of the product can be registered. The U.S has an established trade dress protection, but while in India it is still progressing in recognising trade dress protection. But in both countries, they have similar trade dress protection.
Points to Ponder
Trade Dress protection can also be provided to the shape of the bottle of soft drinks, the shape of the furniture or design of the showroom. Some of the famous trade dress is the shape of a Coca Cola bottle, grills of the Rolls Royce car. With growing competitors, trade dress provides a new forum to secure the aspect of distinctiveness. The illiterate consumers can even differentiate the product based on the packaging. The colour of the product also gives a product a distinct identity.
It deals with the appearance of the product. It is different from a trademark in a way that a trademark deals with words, logos, phrases, emblem etc, which are fixed on that product to identify that product from another. Trade Dress is the appearance of the product to identify the producer. Under common law, trade dress may be protected using passing off which provides businesses goodwill.