TRADE DRESS: WHERE THE VISUAL PERCEPTION TAKES PRECEDENCE
Visual perception plays a very important role in enabling the customers to form an association of a product with a particular source and this is where the importance of a trade dress comes into play. Trade dress refers to the visual appearance of a product which may include its packaging, the particular shape, the specific colour or a combination of colours, the texture, graphic illustration or a combination of them all, by which that product is identifiable in the market. Companies expend vast amounts of resources to build upon certain characteristics of their products which makes the products exclusively associated with them. These characteristics when used on a product even without the Companies’ trade mark can still manage to act as concrete source identifiers and can be imitated to cause confusion/ deception by unscrupulous users thereof. A few examples of trade dress are the packaging of a Ferrero Rocher chocolate, front grills of Rolls Royce, shape of the Coca Cola bottle, etc.
Definition of the term ‘trade dress’
The term trade dress has not been specifically defined under the Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’). However, various definitions in Section 2 of the Act, encompass different aspects of a trade dress, thereby affording statutory protection to a trade dress. The term ‘mark’ as defined under Section 2(m) also includes the shape of goods, packaging or combination of colours or any combination thereof. Further, the term ‘package’ has also been defined under Section 2(q) to include any case box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork. Lastly, the term ‘trade mark’ as defined under Section 2(zb) 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.
Protection of rights in a trade dress
While registering a trade dress under the Act as a trade mark, it is essential that the trade dress should be capable of distinguishing the goods/ services of the Applicant and should not be comprised solely of functional features. Further, it is essential that the trade dress should have been used extensively so as to be associated with the Applicant exclusively as the threshold of acquired distinctiveness is higher for a trade dress as compared to a typical trade mark. However, where the trade dress has not been registered as a trade mark under the Act or does not qualify for registration, the owner thereof may bring an action of passing off against the imitators in the exercise of its common law rights.
The Courts in India while granting injunctions in suits relating to infringement/ passing off of trade dress have not restricted themselves only to the combined comparisons of the trade mark and the overall packaging but have also granted injunction where the trade marks have been absolutely different, however the overall packaging was deceptively similar so as to cause confusion/ deception in the minds of the relevant public. The Courts have not gone into side by side comparison of the marks but have emphasised on the overall points of similarity between the conflicting marks which may override the minute dissimilarities. In order to compare the two products with regard to trade dress, the overall look and appearance of the products and general "impression & idea" left in the mind by the consumer has been considered to be essential.
The Delhi High Court in the case of Colgate Palmolive Co v Anchor Health and Beauty Care Pvt. Ltd. clarified the importance of a trade dress and observed that trade dress encompasses the colour combination, getup, layout and size of container and involves the overall image of the product’s features. The Court further went on to observe that trade dress is the soul for identification of the goods as to its source. In this case, the Court granted an interim injunction against the Defendant on account of similarity of trade dress in the color combination of red and white being used for identical products as those of the Plaintiff, even though the marks of the two parties were absolutely different.
Further, one of the earliest judgements on trade dress infringement was delivered by the Supreme Court in the case of Parle Products (P) Ltd. v. J.P. and Co., Mysore. In this case, the Respondent was using a deceptively similar packaging for biscuits as was used and registered by Parle. The Lower Courts decided against Parle on account of minute dissimilarities asserted by the Respondent. In appeal the Supreme Court overturned the decisions of the Lower Courts and held, “in order to come to the conclusion 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. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.” The Supreme Court in this case found the two packets to be similar in size, the color scheme being almost similar and the design though not identical but bearing a close resemblance and accordingly granted an injunction against the Respondent.
The Courts have also recognised the particular shape of the products to come within the realm of trade dress. In one of its decisions, the Bombay High Court restrained the Defendant from selling vodka in a bottle that was in the shape of a bulbous structure inspired by Russian Architecture as the same was solely associated with the Plaintiff i.e. Gorbatschow Wodka. The Bombay High Court held that the Defendant’s shape of the bottle was similar to that of the Plaintiff and accordingly the sale of vodka in the similar shaped bottle by the Defendant would lead to tarnishment of the Plaintiff’s image. The Delhi High Court in the case of Seven Towns Ltd v M/s Kiddiland while granting an injunction against the Defendant who had imitated the trade dress of the Plaintiff’s toy Rubik’s Cube, held that what has to be compared are the similarities in the trade dress and not the dissimilarities. Further, the Court also took into account the long and continuous use by the Plaintiff of the trade dress for the Rubik’s Cube and held that the Defendant using its own label on the trade dress of the Plaintiff will not only cause deception but will also lead to dilution of the Plaintiff’s trade dress. Finally, the Court held that the duty lies on the second entrant in the market to steer away as far as possible from the trade dress of a prior user and earn its own goodwill.
In cases where the trade dress by itself is not inherently distinctive to be associated with one particular entity, the Courts have taken into account the amount of use as well as the way in which the trade dress has been used in the market to decide if it is associated with one particular entity. Where the owner of the trade dress made no effort to use or popularise the trade dress in a consistent manner so that it came to be fixated in the minds of the relevant consumers to be originating from one source only, the Courts have not granted injunctions in favour of the owner in such cases. This issue arose when ITC alleged trade dress infringement of its Sunfeast Digestive biscuits packaged in a color combination of yellow and blue against Britannia’s use of the similar color combination for its Nutri Choice Digestive biscuits. The Division of the Delhi High Court, while reversing the decision of the Single Judge, held that ITC had been unable to demonstrate that the color combination of yellow and blue for the packaging of the biscuits had attained a high level of distinction so as to be exclusively associated with ITC in a span of 6 months. Further, even in the advertisements ITC relied on its trade marks and business name for identification of its products rather than on the trade dress. The Court held that the trade dress sought to be protected by ITC was such that it did not have a striking feature per se, therefore in such a scenario the Single Judge had erred in accepting the sparse evidence of use that ITC had provided to hold that the trade dress had become associated with ITC to the exclusion of others.
With new products being launched in the market every day and innumerable choices being available for the consumers, it has become essential for the brand owners to generate a distinct visual identity for their products. With a distinctive trade dress, it affords the brand owners enhanced protection for their brand as they not only acquire rights in the particular brand name but also in the visual appearance of the product. Further, the Courts in India have also time and again emphasised on the importance of a trade dress in the market and how they influence a customer to make a particular purchase based on the visual aspect of the product packaging and not just on the basis of the brand name. From the perspective of brand owners, it is essential that they choose a trade dress which has a striking feature and use it in such a way that it comes to be exclusively associated with them.
 CS (OS) 2101/2010
 2003 (27) PTC 478 (Del)
 AIR 1972 SC 1359
 Gorbatschow Wodka KG v John Distilleries Limited (2011 (47) PTC 100 (Bom))
 2 n.1
 ITC Ltd v Britannia Industries Ltd (CS (COMM) 1128/2016)
The article was originally published on www.lexology.com on October 14, 2020 and can be accessed here.