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Protection Of Trade Dress In India
According to the current trend, any new product which is being launched in the market has some sort of distinct packaging as it is considered imperative for the purposes of distinguishing their products from others and it also helps in attracting a larger customer base. This distinct packaging assists the consumers in associating a product with a particular brand which helps in developing the goodwill and reputation of the brand. However, numerous parties have tried to replicate these distinctive packaging in their own product with the malafide intention of misusing the goodwill and reputation of the already established brand.
The concept of trade dress can be interpreted within the definition of trademark, which has been defined under Section 2(zb) of the Indian Trademark Act which prescribes it 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”.Additionally, ‘mark’ has also been defined under Section 2(m) of the act to include the shape of goods, packaging etc.
Scope for Protection of Trade Dress in India
Under the trademark law, the trade dress encompasses the visual aspect of a product and it comprises several distinctive features with respect to the shape, size, packaging, colour combination, textures, graphics etc. Even though there is no separate provision which specifically deals with ‘Trade Dress’, in the Indian Trademark Act, 1999, it is offered protection under the common law of passing off which includes the aspect of packaging, shape of goods, colour combination etc. For the purposes of qualifying under the common law of passing off, the packaging and the design of the product should have some kind of inherent distinctiveness or the product could also have acquired a distinctive character from its presence in the market over a considerable amount of time. The main objective behind providing protection to trade dress is to prevent the untrained eyes of the customers from getting deceived who might purchase the deceptively similar product with a similar packaging instead of the original product.
As the law related to trade dress in India is still very underdeveloped and in a very nascent stage, the judiciary plays a very significant role in the development of laws related to trade dress and providing protection to the same. One of the very first case which provided protection to trade dress was Colgate Palmolive Company v. Anchor Health &Beauty Care Pvt. Ltd. (2003), the issue before the court was regarding the red and white colour combination being used for the purposes of packaging of the products which was likely to deceive the consumers. The court in this accentuated on the fact that for the purposes of determing any infringement, the overall similarity in the product packaging should be taken into consideration and not the dissimilarity. It was also established that the presence of any actual confusion is not necessary as the mere likelihood of confusion is sufficient for proceeding with the action of passing off. This case laid down the groundwork for the trade dress protection in India.
In the case of Ferrero Spa & Nr v. M/S Ruchi International &Anr (2018), the defendant was importing chocolates from China and sold these chocolates under the name of ‘Golden Passion’. However, the issue which arose before the court was that the packaging of these chocolates was almost identical to the packaging of the ‘Ferrero Rocher’ chocolates which is very well known in the market. Justice Khanna, in this case emphasized on the fact that the defendant by using a very similar/identical packaging for the chocolates has caused severe damage to the trade dress and mark of the petitioner. Thus, the Delhi High Court granted a permanent injunction in the favour of the petitioners awarding them damages for a total sum of ten lakh Rupees on account of infringement of trade dress.
In another landmark case of Christian Louboutin Sas v. Mr. Pawan Kumar and Ors (2017), the petitioner wasthe owner of aluxury shoe brand and the issue at hand was pertaining to his brand of shoes which were well-known in the market to have red soles. Moreover, the mark ‘RED SOLE’ was already assigned to Christian Louboutin. The defendant in this case was a local shoe manufacturer who was also using red soles in their shoes. The Delhi High Court in this case for the first time declared the trade dress to possess the status of a well-known mark similar to that of an actual trademark. However, subsequently in the case of Christian Louboutin Sas v. Abudekar and Ors., the court refused the grant of trademark for the red coloured soles of the heels on the ground that any mark which consists of any single colour cannot be considered for the purpose of registration as a mark since the trademark act requires the existence of combination of colours as per the requirements of section 2(m) of the Trademark Act, 1999.
Furthermore, it needs to be understood that for the purposes of qualifying for infringement of any trade dress, the existence of likelihood of confusion is considered imperative. In the case of Merwans Confectioners Pvt Ltd v. M/s Sugar Street &Ors (2019), the plaintiff claimed that they had developed an inherently distinctive trade dress for their mark of ‘Merwans’ which made their product easily identifiable. The plaintiff had earlier entered in a franchisee agreement with the defendant, however, the same was subsequently cancelled due to some violation on behalf of the defendants. The issue which arose before the court was whether the defendants can continue to use the trade dress of the applicant after the franchisee agreement has been terminated. The court in this case opined that as per the law concerning trade dress, any product feature which is merely aesthetic in nature with no source-identifying role cannot be provided with the exclusive rights. The Bombay High court in this case opined that for the purposes of determining any infringement with respect to the Trade Dress, the test which is applied pertains to the aspect of likelihood of misunderstanding, deception or any kind of confusion which might affect the buying decision of the end consumers. This judgment modified the criteria with respect to the infringement of trade dress and set a much higher bar which mandatorily required the existence of some kind of misunderstanding in the naive minds of the consumers.
The concept of Trade Dress is still evolving in India and the courts have played a crucial role in the development of the laws pertaining to trade dress. The trade dress protection is available for shapes of bottles, showroom designs etc. Protecting trade dress is imperative as it helps in providing a distinctive characteristic to the products in the markets which helps the end consumer in identifying them and distinguishing them from the other products in the market.
The essential elements of the trade dress include the shape, size, colour combination, overall packaging of the product etc. along with the characteristics of a trademark which requires it to have a distinctive feature and it should be capable of graphical representation. Also, the scope of trade dress protection is comparatively a lot broader than the protection offered by the trademark law. This can be attributed to the fact that trade dress protection not only protects the aspects pertaining to the product design and packaging which are not registerable under the trademark law, but it also focuses on the entire brand image of the product.
Author: Siddharth Raj Choudhary – a Student of School of Law (Bennett University), an intern at IIPRD, in case of any queries please contact/write back to us via email [email protected].
2003 (27) PTC 478 Del
RFA (OS)(COMM) 13/2018 & CM 29064/2018
 CS(L) NO.1100 OF 2019