INTRODUCTION

In the recent past, there have been numerous instances, in India, wherein trade dress has been the subject of passing off actions. A trade dress is the get-up, look as well as the feel of a product. A trade dress plays a significant role in relation to the whole identity of a commercial product as well as its market, since the unwary customers’ have an imperfect recollection and they are of average intelligence. It is also observed that such a trade dress is also claimed in respect of the colors of the packaging of the product and no less than the shape of the goods. For the determination of where the exclusivity of a user of a trade dress ends and the rights of the world begin. This area of the trade marks law still remains untouched. However, the Trademarks Act, based on and unlike the UK law of Trademarks, 1999 has made an attempt to codify the law on trade dress in India and it was done by bringing it within the ambit of a trademark by the recognition of a mark as including design as well as the combination and packaging of the colors for a product. This in turn gives the users of the trade dress both a statutory as well as a common law remedy for the unauthorized usage of such a get-up of their product.

Meaning and Concept

 Trade Dress means a visual appearance of the products which includes within its ambit the packaging, shape as well as combination of colours which can be registered or protected by the competitors in terms of their services and business. It helps the consumers in identification of the product and hence distinguishes it from other available products. It also proves out to be an aid to the illiterate customers to differentiate the product on the basis of the packaging of the product. This concept of the trade dress was first recognized by the US. The new Trade Marks Act 1999 came into force in September 2003. It is mainly based on the English Trademark Act, 1994 which recognized the concept of trade dress on the lines of The Lanham Act.

Trade Dress is recognized by US law under Section 43(a) of the Lanham Act, (this Act includes the regulation of trademarks as well as trade dress.

Aim:-

  • The Trade Dress protection is mainly aimed to protect consumers from the packings or appearance of the product that are designed to take other products.
  • It also prevents the consumers from purchasing a product with the belief that it belongs to others.
  • The main aim is also to protect the goods as well as the services from being copied. It should be distinct from others and not identical.
  •  It should also not create confusion among the minds of the consumers in order to ensure that there shouldn't be any unfair use of that product.

Essentials Elements of Trade Dress:-

Trade dress includes:-

  • shape,
  • colour,
  •  texture,
  • size,
  • Product configuration etc.
  • Packaging of a product
  • The colour all of the above mentioned are likely to be unique as well as give a distinct identity to the particular product.

Trade Dress Protection in India

The visual appearance of the product persuades the consumers to purchase their preferred product. It is difficult to differentiate the two products which look similar. As a result of these reasons trade dress requires protection. It requires protection in order to prevent the customers from being in a sense of confusion while they are purchasing any product at the same time it is also required to safeguard the interests of genuine manufacturers. Even the Products should be unique and distinct from the other products.

In India, there is no as such a particular definition of trade dress under the Trademark Act, 1999. However, the development in Intellectual Property Laws resulted in a new Amendment which recognized trade dress protection through a new definition of a trademark under the Section 2 of the Trademark Act,1999. The laws of unfair competition regulates the Trade Dress. Businesses are prohibited from duplicity or imitation by State as well as the Federal Laws.

According to the Section 2 of the Trademark Act, a graphical representation as well as the overall appearance of a product leads to distinguishing the goods as well as the services of one person from the other persons like the shape, size of goods, their packaging and combination of colours.

The Courts have also given their decisions based on the trade dress factor of a product many times. The precedents established by the Indian Judiciary have also led to the establishment of trade dress as a vital aspect of Intellectual Property Protection. The Indian Judiciary has recognized several features such as the shape of the product, packaging of the product as well as combination of colours as trade dress.

Series of Judicial Pronouncements in respect of trade dress:-

Parle Products(P) Limited Vs. J.P and Company,1972

J.P launched a brand of biscuits which was somewhat similar to ParleG. The packaging of the J.P as well as  ParleG product looked like having the similar design and same colour and size. It was held in this case by the court that it contains misleading or deceptive  similarity and therefore both the packages can’t be kept side by side and hence can not be compared. It leads to creation of confusion in the minds of the customers and even it is not distinct from others. Hence, the order of the court was against the J.P and Company which refrained them from using the same, design, colour and size.

Colgate Palmolive and Company Vs. Anchor Health and Beauty, 2003

The dispute in this case was in respect of the combination of colour- red as well as white. The Court in this case held that if the colour of both the products would be the same then it would create a sense of confusion in the minds of the consumer with respect to the product’s origin. If an illiterate consumer uses another product on the basis of its physical appearance then it would lead to passing off (it is similar to another the product of another party including the registered/unregistered trademark).

Cadbury India Limited Vs. Neeraj Food Products,2007

The dispute in this case was in respect of the name of “JAMES BOND” which was somewhat similar to GEMS of Cadbury. It was held in this case by the Judiciale that the word JAMES BOND is physically similar to the trademark registered by the GEMS of Cadbury. Furthermore, the High Court also held that Neeraj Foods also holds similarity in terms of packaging to Cadbury. Hence, Neeraj Foods is restrained from using such packaging as it was similar to Cadbury.

Gorbatschow Wodka Kg Vs. John Distilleries Limited, 2011

In this case, both Gorbatschow Wodka Kg as well as John Distilleries Limited were two vodka companies. John manufactured bottles similar to the Gorbatschow which consists of a unique bulbous shape which was inspired by Russian Architecture. It was held in case by the court that there exists a deceptive similarity in the shape which can lead to creation of confusion in the minds of the consumers. Therefore, John Distilleries was restrained from making use of that shape of the bottle for the purpose of selling their products.

Merwans Confectioners Pvt. Ltd. vs. M/s. Sugar Street & Ors.

The Bombay High Court has recently given a  recognition to the concept of Trade Dress in the present case. In this case, Merwans seeked for a grant of an interim injunction against the Sugar Street from making a use of the Merwans' trade dress as well as any of the products bearing its distinctive trade dress which is deceptively similar to that of registered trade mark of Merwans and which is inclusive of Merwans' distinctive trade dress for the purpose of passing off the products or the goods which were sold from the shop of Sugar Street as that of Merwans and also for the various other form of reliefs.

In the present case,Sugar Street happened to be Franchise of the Merwans for the time period 2015-2019. However, the Franchise Agreement was terminated by Merwans by the virtue of a Notice. As a result of which Sugar Street claimed to have refurbished their shop and it also claimed that it had goods in their shop which were provided by a new supplier of bakery products.

The issue that was put forth before the Bombay High Court was whether Merwans’ trade dress was continued by Sugar Street in the shop while it carried on its business and if it is doing so, then in such a scenario whether there exists any infringement of the mark which is claimed by Merwans.

The Bombay High Court in this case held that while visiting the shop of Sugar Street the customers of Merwans wouldn’t be confused since it wouldn’t carry any impression as such that the products which are being sold by Sugar Street in the shop were that of Merwan.

Conclusion

Trade Dress is a form of intellectual property. Trade Dress is one of the essential characteristics of the visual appearance of a product or its packaging. Trade Dress also signifies the product’s source to the customers. Trade Dress is simply the appearance of the product which helps in identification of the producer of any particular product. Under the common law, a trade dress may be protected by making the use of passing off which tends to provide businesses goodwill.