TRADEMARK AND DRAFTING

RESEARCH PAPER

ON

TRADE DRESS PROTECTION - COMPARATIVE STUDY OF UNITED

STATES AND INDIAN POSITION

SUBMITTED TO – Professor. Arpit Vihan

Prepared by- Prerna Bhansali

(20200401016)
Semester- 8-B
Table Of Contents

Table Of Contents........................................................................................................................................2
Abstract........................................................................................................................................................3
Introduction..................................................................................................................................................4
Trade Dress Protection................................................................................................................................4
Essentials of Trade Dress.........................................................................................................................5
Key Requirements for Registration.....................................................................................................5
Significance of Trade Dress Protection...............................................................................................5
Trade Dress Protection in India...................................................................................................................6
Legal Recognition and Evolution of Trade Dress Protection in Indian Trademark Law........................6
Enforcement and Significance of Trade Dress Protection in Indian Intellectual Property Law.............6
Distinctiveness and Enforcement of Trade Dress Protection in Indian Courts.......................................7
Indian Case Laws relating to Trade Dress Protection.............................................................................7
Trade Dress Protection in the United States................................................................................................9
Prohibitions and Distinctiveness............................................................................................................10
Criteria for Protection............................................................................................................................10
Remedies for Trade Dress Infringement................................................................................................10
Functional Considerations.....................................................................................................................11
United States Case Laws relating to Trade Dress Protection................................................................11
Comparative Study Between India and US for Trade Dress Protection....................................................12
Conclusion.................................................................................................................................................14
TRADE DRESS PROTECTION - COMPARATIVE STUDY OF UNITED
STATES AND INDIAN POSITION

Abstract
Courts worldwide, when adjudicating infringement and passing-off cases of Trademark, have
emphasized the importance of considering all aspects of a mark, including colors and overall
appearance, to aid consumers in making informed purchasing decisions. Trade dress
protection has garnered increasing attention as trademark owners seek to not only establish
brand recognition through traditional trademarks but also through the unique physical
appearance of their products. This paper conducts a comparative study of trade dress
protection in the United States and India, highlighting the nuances and similarities between
the two legal frameworks. Despite Indian trademark law traditionally aligning with British
law, trade dress protection emerges as a notable aspect that draws it closer to the principles
observed in the United States. As technology advances, Indian trademark law adapts to
encompass the significance of trade dress protection. Through an analysis of case law and
statutory provisions, this study aims to provide a comprehensive understanding of trade dress
protection, its legal intricacies, and its impact on contemporary business practices in both the
United States and India.
Introduction
In the contemporary marketplace, establishing a unique identity for products and services is
paramount for brand recognition and consumer loyalty. At the heart of this identity lies the
concept of trade dress, encompassing the overall commercial image of a product, including
packaging, design, color scheme, and other visual elements. Unlike trademarks focusing on
words or logos, trade dress revolves around the physical appearance and presentation of
goods or services. Originating from the United States, trade dress has become globally
recognized as a critical component of intellectual property law, particularly in combating
unfair competition. It serves as a mechanism for consumers to identify and distinguish
products, aiding in informed purchasing decisions and preserving brand goodwill.

This paper conducts a comparative study of trade dress protection in the United States and
India, illuminating the similarities, differences, and evolving legal frameworks surrounding
this concept. While the United States has spearheaded the recognition and codification of
trade dress protection, India's legal landscape, influenced by British law, has gradually
embraced this notion, aligning with international standards, particularly principles laid down
in the Lanham Act.

Trade Dress Protection

Trade dress protection encompasses the holistic commercial image of a product, serving as a
means to identify its source and distinguish it from others in the market. This includes various
elements such as the shape, design, packaging, size, color, texture, and configuration of the
product. Packaging, unique to each trade, plays a crucial role in differentiating products,
especially for illiterate consumers who rely on visual cues. Additionally, color can
significantly contribute to a product's distinct identity. Unlike trademarks that primarily focus
on words, logos, or phrases affixed to products, trade dress pertains to the overall appearance
and presentation of goods or services, signifying the producer's identity. Originating in the
United States, trade dress recognition necessitates non-functionality for legal protection, a
concept now echoed globally, including in India and the U.S., where this project delves into
the examination of trade dress laws.

The objective of trade dress protection is twofold: to shield consumers from deceptive
packaging or product appearances and to safeguard against consumer confusion between
similar-looking products. For instance, Apple Inc.'s successful registration of its flagship
Apple Store design as trade dress illustrates this objective in action.

Essentials of Trade Dress

Key Requirements for Registration

To register a product's trade dress, certain criteria must be met:
1. Graphical Representation: The trade dress must be visually represented in a tangible
form, such as through drawings, images, or written descriptions.
2. Distinctiveness: It should possess a unique and distinctive appearance that sets it apart
from similar products or services in the market.
3. Usage in Relation to Goods or Services: The trade dress must be utilized in
connection with specific goods or services offered by the owner, distinguishing them
from those of others.
4. Printed Form: The trade dress should be presented in a printed format, making it
identifiable and recognizable to consumers.

Significance of Trade Dress Protection

Trade dress essentials involve anything that
 Contributes to the overall appearance and ambiance of a brand in the market.
 Consumers perceive trade dress as a reliable indicator of a product's source,
distinguishing it from others.
 Elements comprising trade dress, such as shapes, designs, colors, or materials, should
not serve any functional purpose apart from creating recognition among consumers.
 The process for registering trade dress follows the same statutory requirements as
registering a word or logo mark.

Trade dress protection extends to various elements like the shape of soft drink bottles,
furniture, and even the layout or design of a showroom. Notable examples of trade dress
include the iconic shape of the Coca-Cola bottle and the distinctive front grill of Rolls-Royce
cars. Amidst increasing competition, trade dress offers businesses a new avenue to safeguard
unique aspects of their brand identity.
Trade Dress Protection in India

Legal Recognition and Evolution of Trade Dress Protection in Indian Trademark Law
In India, the absence of a specific definition for trade dress protection under the Trademark
Act of 1999 initially posed challenges. However, with the gradual evolution of intellectual
property laws, India has aligned itself with international standards, marking a significant
development in the recognition of trade dress protection.

Amendments to the Trademark Act, particularly the incorporation of a new definition of

trademarks under Section 2, have extended legal recognition to trade dress elements such as
the shape of goods, packaging, and color combinations. Additionally, the act defines terms
such as "package" and "mark," incorporating various visual elements into the concept of trade
dress.

Indian courts began recognizing trade dress concepts before 2003, and the amended
trademark definition aligns with the comprehensive approach of U.S. law. Trade dress
extends beyond product packaging to encompass diverse visual elements like magazine cover
designs or sports shoe aesthetics. However, generic ideas or mere creative concepts do not
qualify as trade dress. Courts protect trade dress through the common law remedy of "passing
off," which involves enforcement against unauthorized use.

The Trademark Act of 1999 also addresses the registration of trademark shapes, stipulating
criteria in Section 9(3). This section outlines that trademarks cannot consist of shapes derived
from nature or those that substantially enhance the value of goods. This reflects the Doctrine
of Functionality, preventing the appropriation of functional product features as trade dress.
Distinctiveness is paramount in trademark and trade dress protection, ensuring easy
recognition by consumers. Both registered and unregistered trademarks are eligible for
protection, mirroring the framework for trade dress.

Enforcement and Significance of Trade Dress Protection in Indian Intellectual Property

Law
The protection of trade dress in India holds paramount importance in creating brand value
and preventing unauthorized imitation of well-known products. The absence of explicit trade
dress definitions in earlier legal frameworks did not deter the continuous practice of copying
trade dress features, necessitating robust legal protection mechanisms. The incorporation of
provisions within the Trade Marks Act, 1999, reflecting the requirements of international
agreements such as TRIPS and WIPO, signifies a significant expansion in the scope of
trademark rights protection, encompassing the shape, design, and packaging of products. This
comprehensive approach underscores the crucial role of trade dress protection in
safeguarding intellectual property rights, promoting innovation, and preserving brand
integrity within the Indian market.

Distinctiveness and Enforcement of Trade Dress Protection in Indian Courts

Distinctiveness plays a pivotal role in both trademark and trade dress protection within the
Indian legal regime, necessitating that a trade dress be easily recognizable by consumers.
Trade dress protection extends to both registered and unregistered marks, paralleling the
inclusive approach adopted for trademarks. Notably, Indian courts have relied on the concept
of trade dress in adjudicating cases, often invoking the common law remedy of passing off to
enforce against unauthorized use.

Moreover, judicial decisions have underscored the importance of trade dress aspects such as
product form, color combination, and packaging, indicating the judiciary's recognition of
trade dress as a vital component of intellectual property protection. The Doctrine of
Functionality, recognized under Indian trademark law, further reinforces the principle that
trade dress protection cannot extend to functional elements of a product. Through these legal
developments and judicial interpretations, India is gradually establishing a robust framework
for trade dress protection, aligned with global standards and conducive to fostering
innovation and fair competition in the marketplace.

Indian Case Laws relating to Trade Dress Protection

Courts frequently base their decisions on the trade dress of products, considering it a crucial
aspect of intellectual property protection. Indian judicial precedents have solidified the
recognition of trade dress, acknowledging elements such as product shape, color
combinations, and packaging as integral components of trade dress.
Colgate Palmolive & Co. v. Anchor Health and Beauty Care Pvt. Ltd.

In this case, the dispute centered around the combination of red and white colors used in the
packaging of the products. The court ruled that when the packaging, including color
combination and shape of the container, is identical between two products, there is a higher
likelihood of consumer confusion regarding the origin of the products. Particularly, the
judgment emphasized that if an illiterate or naive consumer switches to another product
solely based on its physical appearance resembling the one, they are accustomed to, it
constitutes passing off. Essentially, the court determined that even at a glance, without
delving into intricate details of packaging elements, if there's a semblance of deceit regarding
these aspects, it amounts to passing off one's own goods as those of another, intending to
capitalize on the latter's goodwill and reputation.

Cadbury India Limited and Others. v. Neeraj Food Products

In this case, the Delhi High Court addressed the issue of trademark infringement and trade
dress similarity. The trademark "JAMES BOND" was found to be physically and
phonetically similar to Cadbury's registered trademark "GEMS." Additionally, the packaging
of Neeraj Food Products was deemed similar to that of Cadbury. Consequently, the court
restrained Neeraj Foods from using the said trademarks and packaging resembling that of
Cadbury. This case underscores the importance of safeguarding trademarks and trade dress to
prevent consumer confusion and protect the distinctiveness of a brand's identity.

William Grant & Sons Ltd v. McDowell & Company Ltd

In this case, decided by the Delhi High Court, the defendants had created a label for their
whisky brand that closely resembled the plaintiff's Glenfiddich brand. The court conducted a
comprehensive comparison of both labels, noting similarities in color schemes, design
elements, and imagery. Despite minor variations, the overall resemblance between the labels
was evident. The defendants' label was deemed a deliberate approximation of the plaintiff's,
with the intent to capitalize on its established reputation. While the plaintiff's label was more
visually striking, the similarities between the two labels were unmistakable. This case
highlights the importance of considering the overall impression created by trade dress
elements in cases of passing off.
N. Ranga Rao and Sons v. Anil Garg and Others

In this case, N. Ranga Rao and Sons, a manufacturer of incense sticks under the trade name
"LIA," filed a suit against Anil Garg, who had started selling similar products under the trade
name "DIA" with packaging resembling that of the plaintiff's products. The court emphasized
the need to evaluate trade dress as a whole rather than focusing on individual elements. It
concluded that the amalgamation of color combinations, names, and logos created a total
identification with the plaintiff's products. Copying such packaging and color schemes
constituted infringement, leading to a successful injunction suit by the plaintiff. This case
underscores the significance of protecting trade dress to maintain brand identity and prevent
consumer confusion.

Kellogg Company v. Pravin Kumar Bhadabhai

This case dealt with the sale of cornflakes by the plaintiff under the brand "KELLOGG'S
CORNFLAKE" and by the defendant under the brand "AMIS ARISTO CORN FLAKES."
While the marks themselves were different, the Division Bench of the High Court of Delhi
examined the overall packaging and trade dress. Despite minor differences in wording, the
court emphasized that the principal of fading memory should not be overly relied upon,
especially considering the educated consumer base targeted by both products. This case
highlighted the need to assess trade dress infringement based on the perspective of consumers
and the overall similarity in packaging rather than focusing solely on individual marks.

Vicco Laboratories v. Hindustan Rimmer

In this case, the concept of imitation of trade dress was asserted even in the absence of
deceptive similarity between the marks. Although the marks "Vicco" and "Cosmo" used by
the plaintiff and defendant were different, the entire get-up and color scheme of the tube and
carton adopted by both parties were identical. Despite the lack of deceptive similarity in
individual marks, the overall resemblance in packaging was deemed likely to confuse and
deceive consumers. This case underscored the importance of protecting trade dress, even
when individual marks are dissimilar.
Trade Dress Protection in the United States
In the United States, the legal foundation for trade dress protection is established in a section
of the Lanham Act known as Section 43(a). Trade dress refers to the overall appearance or
image of a product, encompassing elements like its size, shape, colors, textures, and even
marketing strategies. Whether a trade dress is registered or not, it must be unique and
recognizable to the public to be eligible for protection. For unregistered trade dresses, Section
43(a) of the Lanham Act offers protection against any use of words, terms, names, symbols,
or devices that could cause confusion regarding the origin of goods or services.

Prohibitions and Distinctiveness

Under Section 43(a) of the Lanham Act, it is illegal for companies to use words, phrases,
symbols, or other identifiers associated with another company's products if it causes
confusion among consumers. However, this law does not cover functional aspects of a
product. In US law, trade dress can be categorized into various levels of distinctiveness, such
as general, descriptive, suggestive, arbitrary, or whimsical. Generic marks cannot be
trademarked, as they should be available for all merchants to describe their products.

Criteria for Protection

In the United States, trade dress protection hinges on two key factors: distinctiveness and
non-functionality. When pursuing a claim for infringement, the plaintiff must establish three
fundamental elements to prove their case.
1. Ownership of Protectable Trade Dress: The plaintiff must demonstrate that they own a
trade dress that is either inherently distinctive or has acquired distinctiveness through
secondary meaning. This means that consumers associate the trade dress with a
specific source or origin.
2. Likelihood of Confusion: The accused mark or trade dress must create confusion
regarding the source, sponsorship, affiliation, or connection of the goods or services.
The focus is not solely on identical resemblance but rather on the overall impression
and similarity between the two.
3. Non-Functionality of the Trade Dress: If the trade dress is unregistered, the plaintiff
must prove that it is not functional, meaning that its design elements serve no
practical purpose beyond creating recognition among consumers. Conversely, if the
trade dress is registered, its registration is considered presumptive evidence of non-
 functionality, shifting the burden of proof to the defendant.

Remedies for Trade Dress Infringement

If the aforementioned criteria for trade dress infringement are met, the affected party has two
potential remedies available: injunctive relief and/or monetary damages.
1. Injunctive relief involves obtaining a court order to prevent the infringing party from
continuing to use the trade dress.
2. Monetary damages may be awarded to compensate for any losses suffered due to the
infringement. These remedies aim to protect the rights of businesses and prevent
unfair competition in the marketplace.

Functional Considerations
The concept of functionality is crucial in determining trade dress protection. To satisfy this
criterion, the trade dress must not serve a practical function beyond its role in consumer
recognition. This includes the configuration of shapes, designs, colors, or materials that
comprise the trade dress.

United States Case Laws relating to Trade Dress Protection

Two Pesos v. Taco Cabana

In this case, Two Pesos, a restaurant chain, sued Taco Cabana for trade dress infringement,
alleging that Taco Cabana's similar design infringed upon its trade dress. The court found
Taco Cabana's design to be trade dress and infringed by Two Pesos. It upheld the conclusion
that the design was inherently distinctive, thus requiring no secondary meaning. This decision
was crucial as it recognized the protection of inherently distinctive trade dress without the
need for prior customer recognition, safeguarding new businesses entering the market.

Wal-Mart Stores v. Samara Bros

In this particular legal case, Samara, a clothing manufacturer, produced children's clothes
with decorative appliques and sold them in the US market. Walmart, a retail giant, obtained
images of Samara's products and instructed its suppliers to replicate them. Subsequently,
Samara filed a lawsuit against Walmart, alleging infringement of unregistered trade dress
under Section 43(a) of the Lanham Act.
The Court, in its ruling, distinguished between packaging and product design, asserting that
trade dress should be categorized as product design requiring secondary meaning to qualify
for trade dress protection. Consequently, the Court ruled in favor of Walmart.

To successfully recover from trade dress infringements, the affected party must establish
three crucial elements:
1. The trade dress must have acquired secondary meaning among potential consumers;
2. the trade dress of the two products in question should be sufficiently similar and
confusing;
3. the features of the trade dress must primarily serve a non-functional purpose.

Various courts in the US have shed light on trade dress infringement concerning passing-off
cases. It has been emphasized that trademarks and packaging with higher levels of
distinctiveness offer better opportunities for claiming trade dress protection.

Traffix Devices v. Marketing Displays

Marketing Displays, holding a patent for a specific traffic sign design, sued Traffix Devices
for trade dress infringement after the patent expired. The lower court initially denied trade
dress protection, considering the design to be functional. However, the US Supreme Court
reversed this decision, highlighting that a design is functional only if denying it to
competitors puts them at a disadvantage. This ruling underscored the importance of
demonstrating non-functionality to establish trade dress protection, especially in cases
involving expired patents.

Grey et. al v. Meijer, Inc.

This case emphasized the requirements for proving trade dress infringement, stating that the
affected party must demonstrate the trade dress's secondary meaning, similarity between
competing products' trade dress, and the primarily non-functional nature of the appropriated
features. The court's emphasis on these criteria highlighted the significance of establishing
secondary meaning and non-functionality in trade dress protection cases, providing clarity for
future litigation and safeguarding against unfair competition.

Comparative Study Between India and US for Trade Dress Protection

Here is a detailed comparison between trade dress protection laws in India and the US:

Recognition of Trade Dress Protection:

 India: The Trade Marks Act in India does not explicitly recognize the term "trade
dress protection." However, certain features of trade dress such as color combination,
shape, and packaging can be registered under the Act.

 US: In the US, trade dress protection is explicitly recognized under Section 43(a) of
the Lanham Act. Trade dress can be registered under certain conditions, providing
stronger legal protection.

Scope of Protection:

 India: While the Trade Marks Act in India does not specifically mention trade dress
protection, it allows for the registration of elements that constitute trade dress, such as
color combinations and product shapes.

 US: Trade dress protection in the US covers the overall appearance of a product,
including its design, shape, color, and packaging, offering comprehensive legal
safeguards.

Legal Framework:

 India: India's legal framework for trade dress protection is evolving, with certain
aspects of trade dress recognized under the Trade Marks Act.

 US: The US has a well-established legal framework for trade dress protection, with
clear provisions outlined in the Lanham Act and robust case law precedents.

Registration Process:

 India: Trade dress elements such as color combinations and product shapes can be
registered under the Trade Marks Act, providing a degree of legal protection.

 US: In the US, trade dress can be registered with the United States Patent and
Trademark Office (USPTO) under specific conditions, offering stronger legal rights
and remedies.
Enforcement and Protection:

 India: Enforcement of trade dress rights in India may rely on common law principles
and precedents, with protection provided through litigation and judicial interpretation.

 US: Trade dress rights in the US are strongly enforced through legal mechanisms
outlined in the Lanham Act, allowing for injunctive relief and monetary damages in
cases of infringement.

Progression in Recognition:

 India: India is progressing in recognizing and protecting trade dress rights, with the
concept gaining more attention and understanding within the legal framework.

 US: The US has a long-standing history of recognizing and protecting trade dress
rights, with a robust legal system and extensive case law precedents.

While both India and the US offer avenues for trade dress protection, the US has a more
explicit and well-established legal framework, including registration procedures and
enforcement mechanisms. However, India is making strides in recognizing and protecting
trade dress rights within its evolving legal landscape.

Conclusion
The comparison between trade dress jurisprudence and protection in India and the United
States reveals significant disparities stemming from the developmental stages of their
respective legal frameworks. While the U.S. boasts a well-established regime with robust
legislative provisions, India's laws are still evolving, having formalized a trade dress regime
only through amendments in 2003. Although Indian laws are not as advanced as those of the
U.S., the burgeoning competition in the market has catalyzed the growth of trade dress
concerns, indicating a positive trajectory for future development.

Trade dress protection extends beyond traditional trademarks to encompass various visual
elements like product packaging, bottle shapes, or showroom designs. As competition
intensifies, trade dress offers a new avenue for securing distinctiveness, allowing even
illiterate consumers to differentiate products based on packaging or color. Unlike trademarks,
which focus on words or logos, trade dress pertains to the overall appearance of a product,
serving as an identifier of its producer. While U.S. laws provide stronger protection with
specific provisions, India's recognition of trade dress protection in select cases highlights the
need for further strengthening legal frameworks to deter unauthorized copying and safeguard
the reputation and goodwill of businesses.