November 11, 2018
November 14, 2018


Trade dress is a form of intellectual property, which deals with the visual appearance of a packaged product, which can even be the design of a building, that signify and illustrate the source of the product to the consumers.
Trade Dress broadly encompasses the overall image created by the product or package and the overall get up of the product. It encompasses features and characteristics such as size, shape, package, colour combinations, texture, graphics and even particular sales techniques. A trade dress must necessarily be non-functional to attain legal protection, otherwise it will become the subject matter of patent law.
It being an expensive concept, a trade dress may include the design of a cover page of a magazine, design of a door knob, visual appearance of a water meter or a lamp, design of a sports shoe, a different performing style of a music band, etc. However, a generic idea, a hypothesis or a creative concept cannot be treated as a trade dress. An action claiming trade rights cannot be entertained in any ordinary or common place exterior or interior retail building design, shared by multiple competitors.
The set of laws that govern and protect unregistered trademarks are also applicable to trade dress. Trade Dress is a type of commercial shorthand that provides a source-associating cue to an unthinking consumer. This feature may make rational minds treat trade dress similar to a traditional trademark. The point of difference between the traditional trademark law and the law governing trade dress is that unlike traditional trademark law that protects words or logos, trade dress law protects the total packaging and design of a product.
The origin of trade dress can be tracked back to the United States of America. Trade dress, back then in the United States was considered as the overall appearance of labels, wrappers and containers used in the packaging of a finished or semi-finished product. With the advent of law, a plethora of additional elements of trade dress were included under the ambit of trade dress. The packaging of a McDonald’s burger, the shape of a bottle of Coca-Cola or even the theme of a restaurant or eating joint can be considered as an example for the same.
Trade dress as a concept has originated from the legislation of The U.S. commonly known as The Lanham Act. Under section 43(a) of the Lanham Act, a product’s trade dress can be protected without formal registration with the PTO. In relevant part, section 43(a) states the following:
“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which
(A) is likely to cause confusion, or to cause mistake, or to deceive […] as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act.”
It is the visual appearance of the product, which arises from the final packaging of a product, which guides consumers in identifying the products they prefer. At times, even educated consumers find it difficult to differentiate between two similar looking products. Since many sellers prefer stocking imitation goods in order to garner better profits, it becomes difficult for genuine trademarked products to reach all the customers willing to purchase them. The aim behind the protection of trade dress should be preventing consumers from being misled into purchasing substandard articles and protection of the interests of genuine manufacturers, who do not aim to garner profits unreasonably by taking advantage of the established goodwill and reputation of a product.   
Protection is provided, by the act, to the marks which are distinguishable. For Example, Class 11 protects a particular shape of a barbeque; Class 30 protects the triangular shape applied to a chocolate. A package for inclusion of any case, box, container, vessel, casket, bottle, wrapper, label brand, ticket, frame, capsule, cap, lid, stopper or cork is defined by the act. Protection of trade dress is broader in scope than that of trademark. A level of distinctive character is required for a product to be granted a trade dress, since the overall brand value of a product is protected. Further, the claim for a trade dress for a product will only be taken into consideration only when it is made identifiable to the consumer, as a brand value is created for a product when it is made identifiable to a consumer. Thus, the fact that trade dress had an important role in creating a brand value for the product, makes the protection of trade dress very essential.
Unlike the law of the United States, which recognizes the concept trade dress under Section 43(a) of the Lanham Act, the Indian law does not have a separate provision for the trade dress under its existing Trade mark legislation. However, the common law of passing off serves the purpose of protection of trade dress consisting of shape, packaging and combination of colours, etc. The same has been elucidated in Section 2 (zb) of the Trademarks Act 1999. 
The new Trade Marks Act, 1999, which came into force in 2003, is largely based on the English Trade Mark Act, 1994 and recognized the concept of trade dress on the lines of The Lanham Act. Through the amended Act of 1999, Trade Dress has been recognized through a new definition of Trademark, according to which there is an encompassment of shape of goods, packaging, combination of colours or any combination thereof.
Broadly speaking, according to Section 2 of the Trade Marks Act 1999, the following are defined as:
(m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof;
(q) “package” includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper an cork; Hence the new definition of trade mark under Indian law comprises all the elements of the trade dress as under US law. The Indian courts have been recognizing the concept of trade dress even before 2003.
To be eligible for protection, the overall appearance of the product has to be different from that of other competing products. This distinctiveness may either be inherent or acquired. Rather than looking into disputes involving infringement of trade dress as a mere infringement of trademark and using conventional methods to ascertain the same, the courts have the Courts have taken into account various other factors, such as the extent of passing off in the copy of an aspect of a trade dress or the implication of the design of a finished product and the impact caused when the same is used for another commodity serving the same purpose, while extending protection to the right holders in order to protect their trade dresses or prevent infringement or violation of the same. In 2017, the High Court of Delhi and Bombay High Court have promulgated orders/judgments which would add on to the prior cases characterizing customary law relating to assurance of Trade Dresses.
No specific provision for trade dress has been provided for trade dress in the Trademark Act of 1999. However, with the development of law, the laws of India pertaining to Intellectual Property Rights are at par with international standards. Well known marks have been introduced and service marks have been recognized by the Act. For the process of streamlining and simplification of the procedure of registration, it has now been made possible to file one single application for registration of a mark in different classes of a goods and services. Amendment in laws pertaining to Intellectual Property Rights has also led to expansion of the definition of trademarks so as to incorporate shape of goods and colour combination and shape of goods and combination of colour and also provides for the registration of collective marks owned by associations. Under the Trademark Act of 1999, packaging of a product or design and combination of a product may be registered as a mark. Statutory and common law protection is given to trademark by Indian Law. Passing off action is provided by The Indian Law on trademark against use of similar trade dress. Thus, a passing off action can be claimed for infringement of trade dress.
Coming to the landmark judgements in India with regard to passing off, in India, it was held by the Delhi High Court in the case of Cadbury India Limited and Ors. Vs. Neeraj Food Products, that the trademark “JAMES BOND” was physically and phonetically similar to “GEMS” which is a product of Cadbury. It was further held by the Court that the packaging of Neeraj Foods was similar to that of Cadbury. Thus, Neeraj Foods was restricted from using the said trademarks as well as packaging similar to that of Cadbury.
In the case of Parle Products Pvt. Ltd. v. J.P. & Co., Mysore, a brand of biscuits similar to Parle G was launched by the defendants, J.P & Co., Mysore. Both the packs were similar in colour scheme, design and size. It was held by the Supreme Court that for the purpose of ascertainment of deceptive similarity, a pack of biscuits manufactured by the companies, which were parties to the suit, need not be placed beside each other and compared, but an overall action would serve the purpose, and the defendants were held liable in this case.
Another landmark judgement was Gorbatschow Wodka Kg v. John Distilleries Ltd. Gorbatschow Wodka is one among the top brands of vodka in the world. The bottles of Vodka manufactured by this company have a unique bulbous structure inspired by Russian Architecture. The bottle of vodka manufactured by Salute Vodka, a product launched by an Indian Company named John Distilleries, was shaped in a manner similar to the bottles of vodka launched by Gorbatschow Wodka Kg, but used a different trademark and colour of label. The defendants (John Distilleries Ltd.) argued that the consumers of Gorbatschow Vodka were affluent and could never could confused by an economic brand like Salute. However, the Bombay High Court held that the shape of the bottle manufactured by John Distilleries was deceptively similar to that of Gorbatschow Wodka, and the sale of Salute Vodka would lead to tarnishing of the image of the plaintiff (Gorbatschow Wodka) and thus the defendant was directed to stop using that particular shape for selling their product.   


Picture Credit – Tetra Pak




Tejas Sateesha Hinder is currently a first year student at National Law Institute University, Bhopal. He wishes to specialize in IP law after his graduation. Apart from writing Blogs and Research Papers, he loves debating and mooting.

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