Trade Dress Protection- Relative Analysis of India and US Orientation

Trade dress is a complete commercialized picture of the product and linked with its origin and differentiates it from other products. It may be inclusive of the shape or design of the product, product smoothing and wrapping, furnishing or the domain in which the service is offered, dimensions, forms, shades, appearance and product customization etc. Packaging of each product will be discriminated when compared to other thus, constituting uniqueness to its trade.
The functionally illiterate purchasers will discriminate the good or commodity on the basis of its wrapping. The shade of the good or commodity also adds a unique identity to the commodity or good entirely as these form the components. It chiefly comprises the outer aspects of the commodity.
Trade dress is differentiated from a trade mark in the way that the latter deals with terms, symbols or designs, expression, emblem etc. which are fastened on the commodity or good so as to recognize the product from other and trade dress is the outward form of the commodity or good which is used to identify the producer thus marking producer’s individuality. It is the way in which the good/service is offered to the customer. This abstraction originated in U.S. Trade dress should be inoperative in order to achieve protection by law. This article shall be inclusive of the law in consideration to trade dress protection with respect to India and U.S.
Intent Behind Initiating Trade Dress:
Trade dress protection is aimed to safeguard customers from wrapping or outlook of commodities or goods that are patterned in a way to emulate other commodities or good and to prevent a costumer from purchasing a commodity or good under the notion that it is another. For instance: Apple Inc. contemporarily obtained the registration over the design of its flagship Apple Stores as trade dress.
Prerequisites of Trade Dress:
Any one thing that generates the complete glance and grain of a brand in the marketplace could be termed as a trade dress. On a serious note, customers possess the conception that the trade dress is a prime measure of differentiating the goods and commodities of one from the rest. The layout of shapes, patterns, shades, or substance that  frame the trade dress in question must not give out a utility or function outside of generating recollection in the costumer’s mind.
The de jure demand for the registration of trade dress is identical to the registration is word/ logo mark.
Trade dress can be procured for the dimension of the bottle of the wines, dimension of the furniture, and at present even the structure or the pattern of a studio or showroom. Few of the known trade dress are: – shape of Pepsi bottle, front grill on the Rolls Royce. With enhancement in competition trade dress dispenses a new convention to procure the undefiled characteristics of trade of peculiarity.
Trade Dress Protection:  Analysis of Indian Orientation:
India holds not an exact definition of trade dress protection as per the trademark act 1999. But owing to the moderate expansion in intellectual property laws India is at present, at par with international standards. The latest amendment acknowledges the trade dress protection by dint of the novel definition of Trade Mark which falls under Section 2 of the Trade Marks Act: Sec 2 of the Trade Marks Act imparts the subsequent definition such as:

  • Trade mark 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.
  • Package includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, and lid, stopper and cork.
  • Mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.

Hence the new definition of trade mark under Indian law consists of all the components of the trade dress as under U.S. law. The Indian courts have been acknowledging the idea of trade dress from even before 2003.
In case of dimensions of goods registration of the trademark apart from this other standards are still submitted 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.
The above-mentioned information brings out that one of the prime propositions behind trade dress protection that is serviceability is also acknowledged under Indian Trade Mark law.
So as to ascertain the issue of uncertainty of consumers, point of interrogation which erupts is whether it is complete a likeness of trade dress which is significant or the plight is to be decided by juxtaposing the discerning attributes.
An additional concerned impediment is the applicability of type consumers and essence of commodity to reach a conclusion that the issue of uncertainty owing to similarity/sameness of trade dress. Uniqueness is one of the prime features in Indian Trade mark reign thus this same is applicable to trade dress also. A trade dress shall be distinctive i.e. effortlessly acknowledged by the costumers. Trade mark protection is accessible to both registered and unregistered trademarks, so the instance shall be same with trade dress.
The act grants for taking action against use of indistinguishable trademarks of another which is not recorded, which is well liked among the public and in that respect it is a comprehensible alliance of the trademark and the commodity which the common man can simply associate. Indian courts have usually declared their resolution constructed on the trade dress factor of the commodity. These cases are enumerated as follow:
Cases in Consideration to the Indian Position :
Honourable Supreme Court of India has put down the criterion for contrasting between two marks in Parle Products (P) Ltd. v. J.P. & Co. Mysore, and 1972 AIR 1359. Here, the packets of biscuits manufactured by both the appellants and respondents were realistically of the very same dimensions, the shade plot of both the wrappers were almost alike, and the patterns on both, though unlike, but were closely related or resembling that one could undoubtedly be trapped into an erroneous circumstance and will thus purchase for the other.
The Supreme Court has put down that for reaching a conclusion whether one trace is ambiguously similar to another the vast and crucial characteristics of the both have to be taken into consideration. They are not to be kept alongside to determine out the distinction in the patterns and it would be adequate if the mark carries a complete similarity with the other. Regardless, a usual buyer is not accomplished with the capacity of monitoring of Sherlock Holmes.
In Vicco Laboratories vs. Hindustan Rimmer 1979, the pattern of simulation of trade dress was declared even when there was no misleading affinity between the marks. In this case, both expressions trade dress and fact get-up were utilized and the court governed that in spite of  two marks ‘Vicco’ and ‘Cosmo’ used by the plaintiffs and defendants respectively were no doubt different and the mark ‘Cosmo’ by itself was in all probability not to mislead but the overall outlook and the shade plot of the tube and carton adopted by the plaintiffs and the defendants were alike in each and every detail and were likely to generate uncertainty and mislead the consumer effortlessly.
However, after a certain period Division Bench of High Court of Delhi in Kellogg Company v. Pravin Kumar Bhadabhai, 1996, rejected the plea or claim of similar get-up or trade dress. The discourse is in consideration to the plaintiff’s sale of cornflake with cartons possessing the details written as KELLOGG’S CORNFLAKE. The respondent was selling cornflake using a carton more or less similar in size, but with the title AMIS ARISTO CORN FLAKES written at the same place where the appellant’s display the words KELLOG’S CORNFLAKE. The Division Bench concluded that the principal of fading memory or imperfect recollection should not be pressed too far and the goods in question sold to people belonging to middle class or upper middle class, who are fairly educated, has to be tested accordingly.
The judgment in Kellogg Company’s was taken as contentious and it was uncertain whether it accurately reflected the position of law on this facet.
This controversy arose due to the fact that the principles put down in Kellogg Company’s case were depending on the dictum of Lord Halsbury in Schweppes Ltd.’s case wherein a reference was declared to a consumer who wasn’t careful that he did not focused and the label wasn’t nursed as it should be, but grasped the bottle which was unaccompanied by the required consideration and without giving a proper read to what was written in a plain format. Such a consumer was held not a person who would form the basis of a test for passing off.
However, this proclamation was a withdrawal from the established law of the Supreme Court of India in consideration to passing off the matters that the case of passing off has to be settled after comparing vast similarities and the test is always from the side or notion of an incautious purchaser.
Subsequently, in S.M. Dyechem Ltd. v. Cadbury (India) Ltd. 2000, the pronouncement of Lord Halsbury was dependent on and it was put down that in circumstance of a contravention or passing off, the vast dissimilarities need to be taken into consideration followed by their comparison.
In ITC Limited v Britannia Industries Limited, the Delhi High Court examined the problem of unregistered trade dress in consideration to biscuit packaging. ITC filed the law suit for passing off to protect its rights in the yellow and blue wrapping of Sun feast Farmlite Digestive. All Good biscuits and avoid Britannia from the usage of a misleading similar trade dress for its Nutri Choice Digestive Zero biscuit packaging or wrapping. The court allowed the injunction however, the Division Bench reversed the order on appeal. It held that within a period of six-months , the yellow and blue colour combination has not become as a unique identity of ITC so as to claim exclusivity and inhibit it’s usage by a competitor.
In the case of Colgate Palmolive & Co. V Anchor Health and Beauty Care Pvt. Ltd. the combination of the colour red and white was in dispute. It was held that when the colour (shade)combination, wrapping, dimensions of container of both the product is same then consumer uncertainty will be at its peak in consideration to the genesis of the both the products. If a functionally illiterate ignorant consumer utilizes another commodity/good based on the physical aspect of the commodity he has been utilizing it amount to passing off.
To put this in different words if the first view of the item without going into the minuscule descriptions of the shades combination, outlook or lay out present on the container and wrapping imparts the idea of misleading in consideration to these constituents, it is a case of uncertainty and accounts for passing off one 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. v. Neeraj Food Products 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 later on upheld the packaging/ wrapping of Neeraj food product to be same to that of Cadbury and in due course Neeraj foods was prohibited from utilizing mentioned trademarks and also the wrapping similar to that of Cadbury.
In the case of United Distillers Plc v. Jagdish Joshi & others the plaintiff was the owner of trademark Johnnie Walker for Scotch whisky. The defendants were manufacturers of Johnnie Walker Gutka. Whereby, the plaintiffs sued the defendants for violation of trademark and trade dress. The court upheld that the trade dress utilized by the defendant has a similarity with the trade dress of the plaintiff and had breached the same.
In the case of L’Oreal India Pvt. Ltd. and Anr. Vs. Henkel Marketing India Ltd. and Anr. The 

packaging/wrapping of L’Oreal products GARNIER- COLOUR NATURALS and the product of Henkel Marketing India Ltd, Palette-Permanent Natural Colours was claimed to be uniform. L’Oreal initiated proceedings for passing-off arguing that it was a considerable replication and/or colourable duplication of L’Oreal label/trade dress. The court laid stress on the misleading similarity between the trade dresses of the two products which could generate uncertainty in the mind or thoughts of the consumers. It was upheld that, since the trademark of both the products was specifically written in the concerned trade dresses, there was no point of uncertainty among the costumers who are probably from the middle class or upper middle class. Thus, trade dress infringement was not made out and L’Oreal didn’t win the proceedings.

Trade Dress Protection: Analysis of U.S. Orientation:
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 complete picture or overall look and may be inclusive of characteristics like figure, dimension, shade or shade combinations, grain, graphics or maybe few techniques of sales. Trade dress is applicable to both registered and unregistered trade dress. In case of the unregistered trade dress, the foundation for conservation is section 43(a) of the Lanham Act which aids protection or conservation for any word, term, name, symbol, or device, or any combination thereof utilized or in relation with any goods or services, or any container for goods.
It aids for civil action against any person who utilizes any term or phrase, name, symbol or device linked with any commodity or services concerned with another in order to invoke uncertainty or to mislead in relation to the production of the related commodity or services. It also aids that in a civil action for trade dress breach for trade dress not registered on the principal register, the person who declares trade dress protection carries the burden of proving that the content looked for being safe guarded is not functional.
Functional characteristic of a product is not safeguarded under the act. As regards the constituent of distinctiveness or uniqueness which falls under the US law may be classified as general, illustrative, suggestive, unpredictable or ornate symbols are sanctioned to trademark protection, unalike to Indian law, because of their innate behavior to recognize a specific origin of a product.
Generic or general symbols cannot be safeguarded as trademarks due to the reason being that the quantity of such proper terms is restricted and all merchants should be equitably permitted to utilize these terms to outline their own commodities when being in a competition for consumers. Uniqueness and impracticality are the two prime most standards for granting trade dress protection in US. A plaintiff declaring an assertion for violation must plead and show beyond doubt the below mentioned three constituents.
The plaintiff is owner of a safeguarded trade dress in a distinctly effective design or amalgamation of constituents that is either unique inherently or has gained uniqueness by undergoing secondary way, i.e., buyer association of symbol with source.
The accused mark/symbol or trade dress generates a concept of uncertainty in relation to its origin, or as to financing, joining or connection. This constituent is independent whether the defendant’s package or trade dress is similar to plaintiffs; preferably, it is the similarity of the complete impersonation that is to be tried out.
When the trade dress is unregistered, the plaintiff possesses the duty to demonstrate that the trade dress is not functional or impractical. When the trade dress is registered, the registration is speculative proof of impracticality, and the burden of demonstrating practicality lies on the defendant. The next point is engrossing, and to fulfill it, the trade dress looking for being safeguarded must not function. That is, the arrangement of dimensions, designs, shades, or substance that constitute the trade dress in argument may not be appropriate for a purpose or may function outside of generating acknowledgement in the costumers mind. If the abovementioned three constituents for trade dress violation are met, two solutions are accessible: injunctive relief (a court order restraining one party from infringing on another trade dress) and/or money damages.
Cases in consideration to the U.S. Position:
In the case of Two Pesos v Taco Cabana, Two Pesos was the owner of the developing chain or strings of restaurants. The restaurants gave prominence to vivid shades, arts, frescos, interior dining, patio areas, and overhead garage doors to demarcate the interior zones from the exterior, stepped exterior of the building and neon stripes on the building. Two Pesos was a competing chain that acquired a similar design.
Taco Cabana sued, putting forward in an argument that trade dress was breached. The district court and fifth circuit found the Taco Cabana design to be trade dress and to be breached by Two Pesos. The court upheld the conclusion of the district court and court of appeals that the restaurant design in question was inherently unique and thus demanded no depicting of alternate explanation. The court marked down that to acquire alternate or secondary explanation in the case of an inherently unique trade dress would punish people just starting a business who have not yet evolved consumer recognition of their mark.
In the case of Traffic Devices v. Marketing Displays, Marketing Displays upheld a patent on a traffic sign with two springs that would not blow over in the wind. As per the assertion, the springs were at distance. Throughout the tenure of the patent, a competitor instituted a sign where the springs were attached or close enough. Marketing Displays won the patent infringement action under the doctrine of equivalents. Following this, Marketing shows marketed signs with two springs close together.
The patent expired and Traffix initiated a competing sign. Marketing Displays sued Traffix and argued trade dress protection as the product design has acquired secondary explanation or meaning. The lower court upheld that since the design was in practicality it could not be accorded trade dress protection.
Nevertheless, the US Supreme Court discerned that a specific pattern/dimension is said to be effective only when by refusing it to the competitors, they are accorded an adverse disposition. The court also added that where the expired or perished patent asserted the characteristics in questions, one who tries to set up trade dress protection must possess the huge charge of proving that the characteristic is not in function; for example, by proving that it is solely attractive, subordinate, or peremptory facet of the device. Thereby, it countermanded the order of the lower court.
after conducting a research I can draw a conclusion that there is hardly a much contrast between the laws of trade dress protection in both these nations.
The paramount distinction is in US, trade dress gets registered under some specific conditions whereas in India the Trade Mark Act does not acknowledge the term Trade dress Protection as a consequence  it is not accorded shielding under the act. Nevertheless a specific characteristic of trade dress gets safeguarded such as shades combination, dimension, and wrapping of a product, these can be registered.
In certain instances as noted above the idea or notion of trade dress has been acknowledged. U.S. possesses an exceptionally secure viewpoint when it comes to trade dress protection. Nonetheless India is also advancing in acknowledging trade dress protection.