TRADE DRESS: AN EVOLVING FACET OF THE IP REGIME
This article has been authored by Muskan Saxena, a fourth-year law student at Jagran Lakecity University, Bhopal.
Visual appearance and packaging of a product is a crucial and determining factor of consumer response in the market. There has been a transitional shift in the preferences of the consumer. While the quality of the product is still the predominant factor, the overall visual impression of the product also has a significant impact on the choice of the consumer. The overall product appearance and design entails a differential advantage over competitors in the market. It makes it easier for consumers to identify the product and thereby influences their choice. This is the reason why manufacturers or traders invest a huge sum of money in the packaging of the product.
Competitors often indulge in deceptive practices such as copying of packaging, using a similar trade name, colour scheme, graphics, texture etc. which might create confusion in the minds of prospective consumers. They indulge in such practices to take advantage of the goodwill and reputation of the established enterprises. To protect the appearance or overall look of a product from imitation or theft by competitors, Trade Dress can prove to be a resourceful asset.
This article shall explore the concept of ‘Trade Dress’ as an evolving facet of the Intellectual Property Regime (‘IP regime’). It compares the protection accorded to trade dressing in India with that in the US and makes out a case for strengthening our laws.
Pre-requisites of Trade Dress
a) Anything that constitutes the appearance and perception of a brand in the marketplace can be a trade dress.
b) Consumers perceive such trade dress as the prime indicator of distinguishing the goods from the goods of the competitors.
c) The trade dress in question should not possess utility beyond serving as a source of recognition of the product in the minds of the consumer.
d) The statutory requirement for registration of trade dress is the same as that of registration of word/logo mark.
Evolution of the Concept
The concept of trade dress was first given statutory recognition in the US under Section 43(a) of the Lanham Act.According to this section, the overall appearance of the product including shape, colour combination, size, etc. constitutes a trade dress. It can be claimed for both registered and unregistered visual representations.
Trade Dress Protection in the US
A civil action can be taken against a party whose product’s appearance can be associated with goods belonging to another person which creates confusion. For the protection of trade dress, it is quintessential that it should be unique, distinctive, or widely recognized by the public. Distinctiveness and Non-functionality are the important conditions for trade dress protection in the US. The functional feature of a product cannot be protected under trade dress. The element of distinctiveness is classified as generic, suggestive, descriptive, fanciful, etc. Generic marks are not protected as trademarks so as to give equal opportunity to merchants to use these terms to describe their goods.
To claim for infringement, the plaintiff has to prove the following three conditions:
a) The plaintiff owns a distinctive design or combination of elements that is eligible for protection of trade dress.
b) The trade dress in question creates confusion.
c) The plaintiff has to prove that the trade dress is not functional when the defendant’s trade dress is not registered. In cases it is registered, the burden of proving non-functionality lies on the defendant.
If the above three conditions are fulfilled, then the plaintiff can seek the following remedies:
a) Injunction (The court orders injunction to restrict the other party from infringing trade dress of another party).
b) Monetary Damages (Compensation for loss suffered by the injured party).
Trade Dress Protection in India
The Trademarks Act, 1999 (‘Act’) does not provide for a definition of trade dress. However, it recognizes trade dress under Section 2(1) (zb). This was done to keep up with the development of the IP regime. The scope of the definition of Trademark has been broadened to include the shape of goods, packaging, and colour combination. The definition of “mark” includes names, letters, words, combination of colours, device, label, brand, ticket, shape of goods, signature, packaging, and any combination thereof. Whereas “package” implies box, bottle, vessel, container, etc.
According to Section 2 (1) (zb) of the Act, a trademark can be defined as a mark that can be graphically represented and has the capacity of distinguishing the goods or services of one person from another. This provision ensures protection for the overall packaging of the product and also for the design or configuration of the product.
Section 9(3) provides that a trademark can be registered when:
(a) The shape of the product is not the result of its nature.
(b) The shape of the product does not provide substantial value to it.
It can be inferred from the above provision that the Doctrine of Functionality has been recognized by the Indian Trademark Law. The aspect of distinctiveness is also a key feature for Trademark and trade dress in the sense that it must be easily recognized by the consumers.
In India, protection is accorded to trade dress in the same manner as that of an unregistered trademark. The aggrieved party can seek passing off action against the use of similar trade dress. In order to get relief under passing off for trade dress, the plaintiff has to prove that:
a) The trade dress of the plaintiff’s product has gained distinctiveness and earned goodwill and reputation which is built over time so that his product can be distinguished from that of the competitor.
b) The third-party has used a trade dress deceptively similar to that of the plaintiff’s product to take advantage of his established goodwill and reputation.
c) There has been confusion in the minds of the consumers because of similar packaging, feel or look of the two products.
In the case of Cadbury India ltd v. Neeraj Food Products, the court held that the word JAMES BOND is visually similar to the registered trademark GEMS of Cadbury. The packaging of Neeraj Food products was also similar and therefore it was restrained from using such packaging.
Similarly in the case of Pidilite Industries Limited v. Poma –Ex Products, the issue pertained to the infringement of the mark FEWIKWIK by the defendant’s mark KWIKHEAL. There was also a question of trade dress as the packaging of the two products was deceptively similar. The Court held that defendant had used a trademark similar to that of the plaintiff and the packaging of the product is likely to cause confusion in the minds of the consumers.
In the case of Merwans Confectioners Pvt. Ltd. v. Sugar Street, the Court held that to claim protection under trade dress, the visual representation must have a source-identifying role. Mere aesthetic and decorative features without having any source-identifying role cannot be protected under trade dress law.
Hence, the Indian judiciary has recognized the concept of trade dress as being an essential aspect of the IP regime by considering various aspects related to the visual appearance of a product.
Comparison between India and the US
From the above discussion, it can be inferred that the laws on trade dress are quite similar. However, the major point of difference is that upon fulfilment of certain given conditions a trade dress gets registered in the US. Whereas in India, the Trademarks Act does not recognize the term Trade Dress explicitly and therefore it does not get protection. But certain aspects such as the combination of colours, shape, etc. can be registered. Also, the trade dress protection is established in the US whereas India is progressing to recognize trade dress protection.
Identification of Trade Dress: A Conundrum
Although an amendment was made to the definition of Trademark to recognise trade dress, yet it is a challenge to determine as to what combination of design would constitute a company’s trade dress. The scope of Trademarks was broadened to include overall appearance of the product but still accused infringers have been able to successfully counter the claims on the ground that the elements sought for protection do not fall within the ambit of Trade Dress. There is a possibility that the person asserting Trade Dress is unable to articulate which combination of design would constitute a Trade Dress when there is overlap of elements: picture of people, device, multi-coloured background, packaging etc.
In the Merwans Confectioners case, the plaintiff’s claim for protection of its décor was rejected on the ground that mere asthetic and decorative feature would not constitute a trade dress. The plaintiff contended that the décor (cabinets, counters, labels etc.) of its outlets is distinctive and is exclusively associated with it. Although it was proved that the defendants were not using the plaintiff’s décor after the termination of franchise agreement, yet the décor in question could qualify for a Trade Dress. Since there is ambiguity with respect to combination of design which could be eligible for Trade Dress, the plaintiff could not articulate and qualify for the claim.
Bolstering the Enforcement of Trade Dress: A Desideratum
The person asserting Trade Dress is usually encountered with the two problems:
a) Inability to determine the combination of elements or design to be protected
Although overall look or graphical representation constitutes a Trade Dress, yet the enterprise claiming Trade Dress might want to ascertain the combination of core design elements, which if replicated, would amount to infringement. Such ascertainment of elements would not only help parties in enforcing their rights in court, but also help in maintaining consistency (while developing new version of the design) in the design so that greater equity can be built in the Trade Dress rights. This determination of arrangements or combination of elements of design of a product would not per se constitute a Trade Dress, but can surely act as a guidepost that can help in identification of Trade Dress and what actions causes its infringement.
b) Inability to identify specific part of accused infringing designs
There can be a situation wherein the defendant deals in varied designs and can deny the allegations of infringement on the ground that the complaint of the plaintiff fails to identify which of its design is causing infringement. This problem can be resolved if the Trade Dress owner defines that which of its designs contains the protected elements. This would also reduce the ambiguity and make it clear to the opposing party as to which of its design it must defend in lawsuit.
Protection can be claimed under trade dress when the product is identified and recognised by consumers. When a product becomes identifiable by consumers, its brand value increases. Therefore to maintain and increase brand value trade dress protection is quintessential. By according protection of trade dress in various judgements the courts have recognized its growing importance.
Imitation and duplication of product design has become an intentional strategy of the new enterprises to take advantage of the established goodwill of the original enterprise which results in latter suffering substantial losses.Trade Dress can be an indispensable asset which provides lifetime protection to the overall appearance of the product. The Trademarks Act, 1999 does not provide a definition of Trade Dress, however it has been recognised under Section 2(zb) of the Act. Although the scope of the Trade Dress is broad, yet there is ambiguity with respect to combination of elements of design which would constitute a Trade Dress. The present mechanism calls for resolving the problem regarding articulation of Trade Dress and strengthening of enforcement mechanism. This would not only aid in litigation but also help the enterprises in maintaining consistent look of their design.