TRADE MARK - Evolving
Dimensions of Trade Dress Protection in India-In today’s competitive, visually
driven marketplace, consumers identify products by their overall visual
identity such as colours, shapes, packaging, and presentation rather than just
brand names or logos. These elements shape perceptions, influence choice, and
strengthen brand recognition, making appearance central to branding and market
positioning. Legal protection has evolved accordingly: once limited to
packaging, it now covers distinctive visual characteristics that indicate
origin. When these characteristics function as indicators of origin, they
acquire legal significance and merit protection under trademark law.
Indian trademark law, however,
does not clearly define or regulate trade dress. The Trade Marks Act, 1999 does
not recognize trade dress as a separate form of protection and only refers
indirectly to packaging and other visual elements. Due to this lack of clarity,
courts have taken the lead in developing the law on trade dress. Most of this
development has taken place through passing off actions and judicial
interpretation of general trademark principles.
Black’s Law Dictionary defines trade dress as “visual impression that is
made by totality of all elements used to package or present a service or good
for sale giving it a recognizable look.”
Trade dress, therefore refers
to the overall visual appearance of a product that helps consumers identify its
source. Unlike traditional trade marks, which protect brand names or logos,
trade dress protects how a product looks including its packaging, colour
schemes, shapes, layouts, graphics, and overall presentation. What matters is
the combination of these features, not any single element in isolation, as it
is the overall impression that consumers associate with a particular brand.
A clear example for this is the
iconic purple packaging of Cadbury Dairy Milk, along with its font, layout, and
imagery. Consumers recognize the chocolate almost instantly, even without
reading the brand name. While the colour alone is not unique, the full
combination of visual features has become strongly associated with the brand.
Enforcing Rights over Unregistered Trade Dress
In actions relating to trade
dress infringement, an unregistered trade dress is ordinarily protected through
the common law remedy of passing off, aimed at preventing unfair competition.
To claim protection of an unregistered trade dress in such litigation, three
essential requirements must be satisfied. These requirements constitute the
three-prong test which requires the plaintiff to establish distinctiveness,
non-functionality, and likelihood of confusion, when asserting rights in an
unregistered trade dress or alleging unfair competition, along with the
identification of the elements constituting the trade dress.
In a trade dress infringement
suit, the plaintiff must first clearly identify the combination of packaging or
design elements constituting the trade dress for which infringement is alleged
and protection is claimed. In doing so, the plaintiff must consider whether the
combination is distinctive, unique, and non-functional, whether it identifies
the source or origin of the plaintiff’s goods or services, and whether the same
or a substantially similar combination has been imitated by the defendant.
Inherent Distinctiveness or Acquired Distinctiveness
Under the three-prong test, the
plaintiff must establish that the trade dress is either inherently distinctive
or has acquired secondary meaning. A trade dress is inherently distinctive when
it clearly indicates the source of the product, enabling consumers to
distinguish it from competing goods, and such trade dress is protectable
without proof of secondary meaning. In this context, only fanciful, arbitrary,
or suggestive trade dress qualifies as inherently distinctive.
Non-Functionality
In a trade dress infringement
action, the plaintiff must show that the trade dress is ornamental or
decorative and does not serve any utilitarian function. The defendant may argue
functionality by demonstrating that the trade dress is essential to the product’s
use or purpose, affects its cost or quality, and that exclusive rights would
place competitors at a significant non reputation related disadvantage.
Likelihood of Confusion
Once the plaintiff establishes
protectable rights in the trade dress, the next question is whether the
defendant’s trade dress creates a likelihood of confusion. Infringement occurs
where such similarity is likely to cause consumer confusion as to the origin,
sponsorship, or approval of the goods or services.
In assessing the likelihood of
confusion, courts weigh factors including:
1. The strength of the trade dress (more
distinctive or well-known trade dress enjoys broader protection)
2. Similarity between the parties’ trade
dresses
3. Similarity of goods or services offered
under the trade dress
4. Overlap in distribution channels and
customers
5. Purchaser sophistication and product cost
(more careful or expensive purchases reduce likelihood of confusion)
6. Similarity in advertising and promotion
methods
7. Defendant’s intent (good faith vs
imitation) and
8. Evidence of actual confusion, which,
while not required, strongly supports a finding of likely confusion.
Protection of Trade Dress by
Registration
Under Indian trademark law,
statutory protection of trade dress requires compliance with only two
conditions namely non-functionality and inherent distinctiveness or acquired
secondary meaning. The requirement of likelihood of confusion, which is essential
in actions concerning infringement of unregistered trade dress, need not be
proved for the purpose of registration, provided the application is made in
accordance with the prescribed statutory procedure.
Judicial Pronouncements and Case laws
ITC Limited v Britannia
Industries Ltd, 2023 SCC OnLine Mad 6972
The Madras High Court upheld a
lower court order restraining ITC Ltd. from selling Sunfeast Mom’s Magic Butter
Cookies in a blue wrapper deceptively similar to Britannia’s well-known Good
Day Butter Cookies. Despite differences in brand names and individual elements,
the overall colour scheme and packaging were likely to confuse consumers. The
Court held that ITC’s design infringed Britannia’s trade dress and reflected
dishonest adoption, upholding the injunction while allowing the sale of
existing stock already in blue wrappers.
Pernod Ricard India (P) Ltd. v.
Gagan Wine Trade and Financiers Ltd., 2023 SCC OnLine Del 5711
The Delhi High Court granted a
permanent injunction in favour of Pernod Ricard India (P) Ltd., restraining
Gagan Wine Trade & Financiers Ltd. from using the ‘Imperial VAT No. 1’
label, packaging, and trade dress found deceptively similar to Imperial Blue
whisky. The Court held that imitation of key elements particularly the blue,
white, and gold colour scheme, brand presentation, and insignia placement
amounted to infringement and passing off. The defendants were permitted to
clear existing stock within a limited period and to use the mark in new,
non-infringing packaging.
Zydus Wellness Products Limited
v. Cipla Health Limited, 2023 SCC OnLine Del 3785
The Delhi High Court restrained
Cipla Health Limited from using the marks GLUCO-C and GLUCO-D for oral
rehydration products, holding them deceptively similar to Zydus Wellness
Products Ltd.’s GLUCON-C and GLUCON-D. However, the Court found no deceptive similarity
in the defendant’s trade dress, noting that the overall packaging and
appearance were sufficiently distinct from the perspective of an average
consumer with imperfect recollection. It further observed that use of the marks
Prolyte Gluco-C++ or Prolyte Gluco-D++, together with a distinct trade dress
and prominent display of Cipla Health’s identity, negated any likelihood of
passing off.
Colgate Palmolive Co v. Anchor Health and
Beauty Care Pvt. Ltd, 2003 (27) PTC 478 Del
Colgate Palmolive sought an
interim injunction against Anchor Health and Beauty Care Pvt Ltd. for using a
similar red-and-white trade dress for tooth powder, despite the two party’s
marks Colgate and Anchor being distinct. The Court held that passing off
depends on the overall visual impression conveyed by the colour combination,
container shape, packaging, and get-up, particularly from the perspective of an
illiterate or unwary consumer. In assessing passing off, similarities and not
dissimilarities are decisive. As the trade dress and overall presentation were
substantially similar, the Court held that the use fell within the mischief of
passing off.
Conclusion
In today’s competitive
marketplace, a product’s visual identity i.e., its trade dress has become as
crucial to brand recognition and consumer choice as its name or logo. Indian
jurisprudence, though yet to codify trade dress as a distinct form of protection,
has gradually developed a framework through which both registered and
unregistered trade dress are safeguarded. Courts have played a pivotal role in
shaping the contours of trade dress law, relying on principles of passing off,
inherent distinctiveness, non-functionality, and likelihood of confusion to
resolve disputes. While statutory registration provides stronger, more secure
rights, unregistered trade dress continues to enjoy protection under common law
remedies, ensuring that consumer perception and brand identity are not unfairly
exploited.
As the market becomes
increasingly visually driven, the recognition and protection of trade dress in
India are likely to expand further. Strengthening legal clarity, awareness
among businesses, and consistent judicial interpretation will be key to ensuring
that trade dress continues to serve as a vital tool for distinguishing
products, promoting fair competition, and protecting intellectual property
rights in the modern commercial landscape.
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