An Overview of Protection of Trade Dress in India

Trade Dress means a visual appearance of products which comprises packaging, shape & combination of colours which can be protected. Trade Dress helps the customers to recognise the product and differentiate it from other products and it also helps illiterate customers to differentiate the product based on their packing. However, various parties have tried to copy these unique packaging in their own product with the malafide intention of misusing the goodwill & status of the already established brand. In this blog, we discuss the protection of Trade Dress in India.

What is the Objective behind the Protection of Trade Dress in India?

The protection of Trade Dress is meant to safeguard the customers from packaging or visual appearance of the product that are designed to take other products. It prevents customers from buying a product with the belief that it belongs to others. The primary objective is to safeguard the products & services from copying. It should be unique from others in the market. It shouldn’t create confusion among the minds of the customers so that there shouldn’t be any unfair use of that product.

Fundamentals of Trade Dress

1. It comprises colour, shape, product configuration, size, etc.;
2. Product packaging is likely to be distinctive;
3. The product’s colour also gives a unique identity.

Why is it necessary to get Protection of Trade Dress?

Customers buy products because they want or love them and it’s the visual appearance of the product that guides the customers to purchase their preferred product. Even educated customers find difficulties in distinguishing two identical products. Because of such reasons, Trade Dress should be protected. Trade Dress should be protected to prevent consumers from confusion while they are shopping and also to protect the interests of genuine manufacturers. The product should be distinct from other products in the market.

Protection of Trade Dress in India – Scope

In India, there is no particular definition of Trade Dress under the Trademark Act, 1999^[1]. However, due to the development in IP Laws, a new amendment recognised Trade Dress via a new Trademark definition under Section 2 of the Trade Marks Act. Trade Dress is regulated by the laws of unfair competition. Both Federal & State Laws prohibit businesses from imitation or duplicity.

Section 2 states that a graphical representation and the complete product appearance which differentiate the products & services of one individual from other individuals like their packaging, shape of products, and combination of colours. Section 2 of the Act also states the term package and mark. Package includes any container, bottle, box, vessel, etc. Mark comprises a brand, signature, device, etc., shape of products, combination of colours.

Before 2003, Indian courts started knowing the concept of Trade Dress. The new meaning of Trademark under Indian Law includes all the elements of the Trade Dress under the US Laws. As a concept, Trade Dress may comprise the cover page design of a magazine, the visual look of a lamp, the design of sports shoes, etc. But, a generic idea and a creative concept cannot be treated as a Trade Dress. Indian courts have given common law remedies for the protection of Trade Dress in India – Passing Off (Enforcement against an illegal use).

The shape of goods registration of the Trademark is stated in the provision of Section 9(3) of the Trademark Act. This section states that a mark shall only be registered if it doesn’t include:

• A shape of products which comes from nature;
• A shape that gives significant value to the products.

This illustrates the Doctrine of Functionality (it prevents a party from getting Trade Dress in the functional feature of a good/product), which is identified under Indian Trademark Law. Uniqueness is also a main aspect under the Trade Dress as well as Trademark, which means a Trade Dress should be unique i.e., easily identified by the customers. Protection of Trade Dress is given to both registered and unregistered Trademark; this is also the same as to Trademark.

Numerous times courts have given their decision based on the Trade Dress factor of a product. The precedents of the Indian Judiciary have also established Trade Dress, a vital aspect of IP protection. Indian Judiciary has recognised features like the product shape, product packaging, and combination of colours as Trade Dress.

One of the first matters which gave protection to Trade Dress was Anchor Health and Beauty Care vs Colgate Palmolive Company; the issue before the court was regarding the red & white colour combination used for the purposes of the product packaging, which was likely to deceive the customers. The court in this matter emphasises the fact that for the purposes of determining any infringement, the overall similarity of the packaging should be taken into consideration and not the dissimilarity. It was also set up that the presence of any actual confusion is not necessary as the mere likelihood of confusion of enough for proceeding with the action of passing-off. This case set up the groundwork for the protection of Trade Dress in India.

Conclusion

The concept of Trade Dress in India is evolving with time and the courts have played an essential role in the development or advancement of the laws relating to Trade Dress. Protection of Trade Dress is authoritative as it aids in providing unique characteristics to the products in the market, which helps the end customer in recognising them & differentiating them from the other products in the market.

Read our Article:What’s the Procedure for Filing a Trademark Application in France?