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Trade Dress - Do You Have One?

Aug 9, 2005
Manisha Singh Nair

Apart from trade names and trademarks, which provide protection from others using the name of ones company or its products, there exists another form of protection known as "trade dress"

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Today, more than ever before, the value and commercial viability of any business is indubitably tied to its intellectual property (IP). Moreover, intellectual property is increasingly becoming the subject of extensive litigation. For these reasons, it's inevitable for businesses to take steps to insure that the commercially important assets that they possess are adequately and appropriately protected.

Apart from trade names and trademarks, which provide protection from others using the name of ones company or its products, there exists another form of protection known as "trade dress."

Simply put, trade dress is "the arrangement of identifying characteristics or decorations connected with a product, whether by packaging or otherwise, intended to make the source of the product distinguishable from another and to promote its sale." That is the simple legal definition. However, law relating to the concept is never simple. In essence, to the layman, trade dress is a 'company's image' within the marketplace and one can actually take someone to court if they try to present products that "look" like yours but fall short of fraudulently representing their product as that of yours (though there are, of course, rules for when trade dress is applicable).

The Concept and its origin

Trade Dress is a trademark concept. Though the concept of trade dress originated in the U.S., law relating to trade dress can be traced to the common law doctrine prohibiting 'unfair competition'. Acting as a source identifier, trade dress is essentially an unregistered product trademark under Section 43(a) of the Lanham Act 15 U.S.C. 1125(a) of USA. Under the Act, the plaintiff in a trade dress action can seek trade dress protection for whatever products or packaging it sees fit. It is an expansive concept. Trade dress has been defined as "...a category that originally included only the packaging, or 'dressing,' of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product." [Wal-Mart Stores vs. Samara Bros. 529 U.S. 205, 120 S.Ct. 1339 (2000)] Thus, trade dress protects a product's image encompassing the total image or overall impression created by the product or its packaging.

The shape of a bottle containing shampoo can be trade dress. Similarly, the shape or ornamental features of a chair, its configuration, can constitute trade dress. Even the theme of a restaurant may be considered as a trade dress. Thus, in some instances the trade dress is reflected in the combination of packaging and labels and in another, it is the product configuration that constitutes the trade dress. Examples of trade dress include the shape of the Coca-Cola bottle, the front grill on the Rolls-Royce automobile, the shape of a classic Ferrari sports car, or the round wall-thermostat by Honeywell.

To be registrable as a trademark or a service mark, the elements of the trade dress must be capable of being listed and defined so that the public knows the exact parameters of the claimed exclusive right. If the trade dress constituting a combination of elements is unique, unusual or unexpected, one can assume without evidence that it will be automatically perceived by customers of the goods or services in question as an indication of origin, as a trademark. However, if the trade dress is descriptive or inconspicuous, or not different from what others are using, it cannot be considered as inherently distinctive and can be protected only on proof of secondary meaning or acquired distinctiveness.

The test of deceptive similarity in case of trade dress is whether there is a likelihood of confusion resulting from the totality of image and impression created by the two trade dresses. The US Supreme Court has held that the test is one of a likelihood of confusion to the 'ordinary purchaser in the exercise of ordinary care and caution in such matters'. It has been further held that it is the casual or ordinary non-discerning buyer who is to be protected and to such a buyer the test is one of general overall impression gained at a glance.

Application of the concept in India

In view of the recent developments in trading and commercial practices and to give effect to important judicial pronouncements, a need for simplification and harmonization of trademark management systems was felt. The new Trade Marks Act, 1999, which came into force in September 2003 remains a natural fall out of this realization.

To understand the new legal definition of what a trade mark may consist of, it is useful to read the new Trade Marks Act, where the shape of goods, packaging or combination of colours or any combination thereof have now come under preview of the definition of the Act. A package is now protected under the Act, which includes any case, box container, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper, and cork.

In addition, the "mark" has been defined to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. Thus, the new definition of trademark in India broadly encompasses almost all the elements of trade dress under the US law.

Indian Trade dress jurisprudence

Under the Indian trademark law, any distinctive and identifying mark, which is capable of distinguishing the goods and services of one owner from that of another, may be utilized as Trademark and such marks are afforded protection under the law.

In addition, a particular distinguishing trade dress is also considered as fully capable of serving as a representation of source. Trade dress is protected under Trademark law only if it is distinctive of the product thereby representing the origin of the product or, has acquired distinctiveness. Further, it should not have any functional value in relation to the product.

In the case R.R. Oomerbhoy Pvt. Ltd. (Appellant) vs. Court Receiver, High Court, Bombay and Another (Respondents) [2003 (27) PTC (DB) (Bom)] the Bombay High Court granted an interim injunction on an action for passing off and infringement on the ground of deceptive similarity. The case was concerning a partnership firm, Ahmed Oomerbhoy, which was dissolved due to some dispute amongst its partners. The trademark of plaintiff’s firm "POSTMAN", together with accompanying labels, logo and device containing a pictorial depiction of a Postman was registered in respect of edible oils and was in continuous user for decades. The impugned trademark of the defendant, one of the partners of the dissolved firm, was "POSTIANO", and it was in respect of similar products. The design, colour scheme, layout, get-up and general visual appearance of the containers and plastic bottles in which the defendant was selling oil were almost identical and deceptive. Further, trade channel through which products of both parties were sold were also same.

The Court held, "the essential feature of the mark consisted of the use of the mark POSTMAN that was printed in red colour on a blue background with the logo of a POSTMAN in yellow and with a thick blue circle around the mark and the logo. The word mark together with the accompanying device and logo had a strong association with the products of the partnership firm. The get-up and trade dress were essential aspects of the mark. The use of the mark "POSTIANO" by the Appellant has a striking visual and structural similarity with the mark "POSTMAN" which was used by the partnership firm. Apart from the use of the word "POSTIANO", the Appellant has chosen carefully, various other features, which would lend a purchaser to associate the product of the Appellant with the POSTMAN brand of oil sold by the erstwhile partnership firm". It was held by the Court that adoption of impugned trademark by defendant was not bona fide. In the aforesaid case, the concept of trade dress was recognized by Indian court.

In another case, S.V.S. Oil Mills (Petitioner) vs. S.V.N. Agro-refineries & another (Respondents) [2004 (29) PTC 548 (Mad) (DB)] the Madras High Court granted interim injunction for passing off and infringement again on the ground of deceptive similarity. The plaintiff firm was manufacturing and marketing various kinds of refined edible oils under the registered trade mark "SVS" with inverted triangle and a distinctive colour scheme and get up of red and yellow. The defendant, an erstwhile partner of plaintiff firm constituted another firm, which was in the same business, using same trademark "SVS" but with a different colour scheme.

In earlier litigation between the parties, the defendant was restrained from using the trademark "SVS". Thereafter, the defendant changed the mark to "SVN" but adopted the very same colour scheme of plaintiff. They did not give any explanation as to why they changed the colour scheme and get-up of their earlier labels similar to that of the plaintiff. The plaintiff had been using its trading style and trademark continuously for a long period, whereas defendant entered into the field only recently.

The Court held, "the material form, colour and getup of the wrapper or label or container of the articles are the physical means of expression and the design of the container or the label is of great significance as it is meant to catch the attention of any purchaser. The design of the label would include not only the trademark, but also the colour scheme and getup of the wrapper or container as well. It is well known that there are several eye-catching designs and the customers who are familiar with the articles would invariably be guided and attracted to purchase goods by the sight of label. There is a power behind the design of the label as the customers have the intuitive instinct to select the goods by the design, colour, getup and the trade name and if the goods of same kind, with the same colour scheme and getup in the labels belonging to two manufacturers with phonetic similarity in trade names are exhibited or offered for sale, a normal consumer of average intelligence with imperfect memory would take one article as belonging to other".

The Court therefore held that adoption of similar colour scheme and get-up by defendant would cause confusion and deception in the minds of general public.

From the above illustrations, its apparent that under the Trade Marks Act, 1999 of India, though there is no specific provision on trade dress action, it is possible to get trade dress protection for whatever products or packaging one sees fit by filing a suit for passing off/ infringement of trademark. With the course of time as the law evolves, it is expected that the Trade dress jurisprudence will further develop and take a concrete shape.

Concluding statement

Though new in its origin and application, the concept of trade dress has far reaching implications in determining the commercial success of a business enterprise. Judicious incorporation of the concept in ones business strategies is not only the key to commercial success but is also an effective tool to safeguard the companies' image and products from any potential infringement.

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