TRADE DRESS PROTECTION: COMPARATIVE STUDY BETWEEN

India & U.S

INTRODUCTION:- Trade dress is overall commercial image of a product that

identifies the product and it’s source and distinguishes it from other products. Might include
the shape/design of the product, product levelling and packaging, decor or the environment in
which the service is provided, size, shape, colour, texture, product configuration etc.
Packaging of every product will be different which is likely to be unique to his trade. The
illiterate consumers will differentiate the product basing on the packaging. The colour of the
product also gives the product a distinct identity altogether. These are the elements of the
product which makes the product distinct. It basically deals with the physical appearance of
the product. These are different from “trade mark” in the way that trade mark deals with
words, logos, phrases, emblem etc which are affixed on the product in order to identify the
product from other and trade dress is the appearance of the product which is used to identify
the producer.1 It is the way in which the product/service is presented to the consumer. This
concept was first recognised in U.S. Trade dress should be non functional in order to get
protected legally. In this paper the law related to “trade dress protection” will be examined in
India and U.S.

TRADE DRESS PROTECTION IN INDIAN SCENARIO:- In India there is no

particular definition of trade dress protection under trademark act 1999. But with the gradual
development in intellectual property laws India is now at par with international standards.
The new amendment recognises trade dress protection through the new definition of Trade
Mark which comes under section 2 of the trade mark act. Sec.2 of the trade mark act gives the
following definition such as

Trademark is defined as 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. 2 "Package" includes any
case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band,
ticket, reel, frame, capsule, cap, lid, stopper an cork.3 "Mark" includes a device, brand,

1
Publications international ltd v landoll Inc 164 F.3d 337 (7th Cir. 1998)
2
Section 2 (zb) of the act
3
Section 2(q) of the act

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heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or
combination of colors or any combination thereof4

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

In case of shape of goods registration of the trademark besides other criteria is still subjected
to provision of Subsection (3) of Section 9 of the Trademarks Act, 1999, which reads as
follows:
(3) A mark shall not be registered as a trademark if it consists exclusively of –
(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which results from the nature of the goods themselves; or
(c) the shape of goods which gives substantial value to the goods.

This shows that one of the key idea behind trade dress protection that is functionality is also
recognised under Indian Trade Mark Law. Distinctiveness is one of the key aspect in Indian
Trade mark regime so the same applies to trade dress also. A trade dress shall be distinctive
i.e. easily recognised by the consumers. Trade mark protection is available to both registered
and unregistered trade marks, so the case shall be same with trade dress. The Act provides for
passing-off action against use of similar trademarks of another which is not registered but
which is very popular among the public and there is a clear association of the trademark and
the product which the public can easily identify. Indian courts at many times have given
their decision basing on the trade dress factor of the product. These cases are discussed
thoroughly below

CASES:- In the case of Colgate Palmolive & Co. V Anchor Health and Beauty Care Pvt
Ltd5 the combination of the colour red and white was in dispute. It was held that when the
colour combination, packaging, shape of container of both the product is same then
consumer confusion will be higher with regard to the origin of the both the product. If an
illiterate naive customer uses another product basing on the physical appearance of the
product he has been using it amount to passing off.  In other words if the first look of the item
without going into the infinitesimal details of the colour combination, getup or lay out
appearing on the container and packaging gives the inkling o deceive in respect of these

4
Section 2(m) of the act
5
(108 (2003) DLT 51; 2003 (27) PTC 478 (Del))

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ingredients, it is a case of confusion and amounts to passing off one's own goods as those of
the other with a view to encash upon the goodwill and reputation of the latter.  

In another case Cadbury India Limited and Ors. Vs. Neeraj Food Products 6 the Delhi High
Court held the trademark "JAMES BOND" as physically and phonetically similar to the
registered trademark "GEMS" of the Cadbury. The High Court further held the packaging of
Neeraj food product to be similar to that of Cadbury and eventfully Neeraj Foods was
restrained from using said trademarks as well as the packaging similar to that of Cadbury.

In the case of William Grant & Sons Ltd v McDowell & Company Ltd7  decided by the Delhi
High Court in 1994. In this case the defendants had fashioned and created a label similar to
the plaintiffs’ Glenfiddich brand of whisky. The court held in the current case in point that
what is essentially to be seen in the case of passing off is to juxtapose the entire of the
plaintiff's label with the whole of the defendant's label. When examined in contrast, there are
common black, red-rust and golden colors, there are common use of scrolls, common use of
ghosted letters for the purpose of writing the name of the whisky, there is common
stag/sambhar with antlers, thistles are to be found in both the labels, scrolls being found both
on the top and the lower part of both the labels. All these congeners, as a whole, confirm that
the defendant desired to make its label a close approximation of the label of the plaintiff, as it
possibly could. It only made colourable variations in the way the golden scroll curved. In the
case of the plaintiff's scrolls, they curve upwards, and, consequently, the defendant's scrolls
curve downwards. This is so far as the top part of the label is concerned. Although the label
used by the plaintiff is far more striking to the eye than the label of the defendant, however
the similitude between the two cannot be missed. 

In the case of United Distillers Plc v. Jagdish Joshi & others8 the plaintiff was the owner of
trademark Johnnie Walker for Scotch whisky. The defendants were manufacturers of Johnnie
Walker Gutka. The plaintiffs sued the defendants for infringement of trademark and “trade
dress.” The court held that the trade dress used by the defendant has a similarity with the
trade dress of the plaintiff and had infringed the same.

In the case of L'oreal India Pvt. Ltd. and Anr. Vs. Henkel Marketing India Ltd. and Anr 9 the
packaging of L’oreal products “GARNIER- COLOUR NATURALS” and the product of
6
142 (2007) DLT 724
7
(55 (1994) DLT 80)
8
2000 PTC 502
9
2005 (6) Bom CR 77.

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Henkel Marketing India Ltd, “palette- PERMANENT NATURAL COLOURS” was alleged
to be identical. L’oreal instituted proceedings for passing-off arguing that it was a substantial
reproduction and/or colorable imitation of L’oreal label/trade dress. The Court emphasized on
the deceptive similarity between the trade dresses of the two products which could create
confusion in the minds of the consumers. It was held that, since the trademark of both the
products was clearly inscribed in the respective trade dresses, there was no chance of
confusion among the consumers who are mostly from the middle class or upper middle class.
Thus, trade dress infringement was not made out and L’oreal lost the proceedings.

In the case of N. Ranga Rao and Sons Vs. Anil Garg and Ors 10 N.Ranga Rao and Sons was a
partnership firm engaged in the manufacture of incense sticks under the trade name “LIA”.
Anil Garg started selling his products under a similar trade name “DIA” and adopted
packaging similar to that of the partnership firm. An amalgam of colour combinations, names
and logos which creates a total identification with products was alleged to be copied. The
Court laid down that to establish infringement the “trade dress” has to be seen as a whole and
not in parts. Copying of the packaging of incense sticks and the colour scheme as well as
trade name of a well-known product of the same range constitutes infringement and the suit
for permanent injunction of the plaintiff in the case was successful.

TRADE DRESS PROTECTION IN USA:- In the US the basis of trade dress

protection is enshrined in section 43(a) of the Lanham Act. Now, trade dress is defined as a
product's "total image" or "overall appearance" and "may include features such as size, shape,
colour or colour combinations, texture, graphics or even certain sales techniques . Trade dress
is available to both registered and unregistered trade dress. If the trade dress is unregistered,
the basis for protection is section 43(a) of the Lanham Act which provides protection for
"any word, term, name, symbol, or device, or any combination thereof" used "on or in
connection with any goods or services, or any container for goods. It provides for civil
action against any person who uses any word or combination of words, term, name, symbol
or device associated with any goods or services belonging to another so as to cause confusion
or
deception with respect to the origin of the concerned goods or services. It also provides that
in a civil action for trade dress infringement for trade dress not registered on the principal
register, the person who asserts trade .dress protection has the burden of proving that the
matter sought to be protected is not functional. Functional feature of a product is not
10
2006 (32) PTC 15 (Del).

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protected under the act. As regards the element of “distinctiveness,” marks under the US law
may be classified as generic, descriptive, suggestive, arbitrary or fanciful 11. Suggestive,
arbitrary, and fanciful marks are entitled to trademark protection, unlike in Indian law,
because of their intrinsic nature to identify a particular source of a product. Generic marks
cannot be protected as trademarks because the number of such appropriate terms is limited
and all merchants should be equally allowed to use such terms to describe their own goods
when competing for customers. Distinctiveness and non functionality are the two main
criteria for giving trade dress protection in U.S. A plaintiff asserting a claim for infringement
must plead and prove the below three elements.
1.   The plaintiff owns a protectable trade dress in a clearly articulated design or combination
of elements that is either inherently distinctive or has acquired distinctiveness through
secondary meaning, i.e., buyer association  of symbol with source.
2.   The accused mark or trade dress creates a likelihood of confusion as to source, or as to
sponsorship, affiliation or connection. This element does not rest on whether the defendant’s
package or trade dress is identical to plaintiff’s; rather, it is the similarity of the total, overall
impression that is to be tested.
3.   If the trade dress is not registered, the plaintiff must prove that the trade dress is not
functional. If the trade dress is registered, the registration is presumptive evidence of non-
functionality, and the burden of showing functionality is on the defendant.
The third prong is interesting, and to satisfy it, the trade dress seeking protection must not be
“functional.” That is, the configuration of shapes, designs, colors, or materials that make up
the trade dress in question may not serve a purpose or function outside of creating recognition
in the consumer’s mind. If the above three elements for trade dress infringement are met, two
remedies are available: injunctive relief (a court order restraining one party from infringing
on another’s trade dress) and/or money damages (compensation for losses suffered by the
injured party).
CASES:-In the case of Two Pesos v Taco Cabana12 Two Pesos owned a growing chain
of restaurants. The restaurants featured bright colours, paintings, murals, interior dining, patio
areas, overhead garage doors to separate the interior areas from the exterior, stepped exterior
of the building and neon stripes on the building. Two Pesos was a competing chain that
adopted a similar design.  Taco Cabana sued, arguing trade dress infringement.  The district
court and Fifth Circuit found the Taco Cabana design to be trade dress and to be infringed by

11
Section 2 of Lanham (Trade mark) Act (15 U.S.C) as updated till October 2005
12
112 S.Ct. 2753, 120 L.Ed.2d 615 (1992).

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Two Pesos.  The Court upheld the conclusion of the district court and court of appeals that
the restaurant design in question was inherently distinctive and thus required no showing of
secondary meaning.   The Court noted that to require secondary meaning in the case of an
inherently distinctive trade dress would penalize persons just starting a business who have not
yet developed customer recognition of their mark.
In another case Wal-Mart Stores v Samara Bros13 Samara produced a line of children’s
clothes decorated with appliques and marketed the clothes in the U.S. through retail
department stores. Wal-Mart sent a series of photographs of Samara products to its overseas
supplier with instructions to produce copies. The supplier did so, and the copies were sold at
Wal-Mart stores. Samara sued Wal-Mart, alleging among other things infringement of
unregistered trade dress under Lanham Act, section 43(a). The Court made a distinction
between product packaging and product design and stated that ambiguous trade dress should
be classified as product design requiring a secondary meaning to be entitled to trade dress
protection. Thus, the Court was in favour of Wal-Mart.
In the case of Traffix Devices v Marketing Displays14Marketing Displays held a patent on a
traffic sign with two springs that would not blow over in the wind. In the claims, the springs
were far apart. During the term of the patent, a competitor introduced a sign where the
springs were close together. Marketing Displays won the patent infringement action under the
doctrine of equivalents. Subsequently, Marketing Displays marketed signs with two springs
close together. The patent expired and Traffix introduced a competing sign. Marketing
Displays sued Traffix and argued trade dress protection as the product design has acquired
secondary meaning. The lower court held that since the design was functional it could not be
given trade dress protection. However, the US Supreme Court observed that a particular
design/shape is said to be functional only when by denying it to the competitors, they are
placed at a disadvantageous position. The Court further said that where the expired patent
claimed the feature in questions, one who seeks to establish trade dress protection must carry
the heavy burden of showing that the feature is not functional; for instance, by showing that it
is merely ornamental, incidental, or arbitrary aspect of the device. Thus, it reversed the order
of the lower court.

13
529 U.S. 205, 120 S.Ct. 1339 (2000)

14
121 S.Ct 1255 (2001).

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In Grey et. al vs. Meijer, Inc15 the Court stated that to recover from trade dress infringement,
the affected party must prove by preponderance of evidence the following:
(1) That its trade dress has obtained “secondary meaning” in the marketplace;
(2) That the trade dress of the two competing products is confusingly similar; and
(3) That the appropriated features of the trade dress are primarily non-functional.
The scope of trade dress infringement with respect to passing-off has, thus, been highlighted
by various courts in the US. Under the US laws, one must be always aware of the need to
market effectively and to retain evidence of marketing. This is how evidence of “secondary
meaning” can be gathered. The more distinctive the marks and product packaging design are,
the better will be the opportunities to claim protectable rights to the marks and trade dress.

COMPARATIVE STUDY:-
There is not a lot of difference between the laws of trade dress protection in both these
countries. One of the major difference is in U.S trade dress gets registered giving certain
conditions while in India the Trade Mark Act does not recognise the term “Trade dress
Protection” as a result of which it does not get protection under the act. However certain
features of trade dress gets protection such as colour combination, shape, packaging of a
product can be registered. In some cases as mentioned above the concept of trade dress has
been recognised. U.S has very strong stand point in case of trade dress protection. However
India is also progressing in recognising trade dress protection.

BIBILOGRAPHY:-

Books Referred:-

 P NARAYANAN, LAW OF TRADE MARKS AND PASSING OFF, (6th ed. 2007)

Statutes Referred:-

15
295 F.3d 641

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  Trade Mark Act, 1999
 Lanham Act

Cases Referred:-

 Publications international ltd v landoll Inc 164 F.3d 337 (7th Cir. 1998)
 Palmolive & Co. V Anchor Health and Beauty Care Pvt Ltd (108 (2003) DLT 51;
2003 (27) PTC 478 (Del))
 Cadbury India Limited and Ors. Vs. Neeraj Food Products, 142 (2007) DLT 724
 William Grant & Sons Ltd v McDowell & Company Ltd, (55 (1994) DLT 80)
 United Distillers Plc v. Jagdish Joshi & others, 2000 PTC 502
 L'oreal India Pvt. Ltd. and Anr. Vs. Henkel Marketing India Ltd. and Anr, 2005 (6)
Bom CR 77.
 N. Ranga Rao and Sons Vs. Anil Garg and Ors, 2006 (32) PTC 15 (Del).
 Two Pesos v Taco Cabana, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992).
 Wal-Mart Stores v Samara Bros, 529 U.S. 205, 120 S.Ct. 1339 (2000)
 Traffix Devices v Marketing Displays, 121 S.Ct 1255 (2001).
 Grey et. al vs. Meijer, Inc, 295 F.3d 641

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