Everything about the term “Trade dress” that you must know

Introduction

Have you ever wondered why some products are easily identifiable right from the shelf of supermarkets? It’s because of their unique trade dress. Trade dress refers to the total package of elements that make up a product's visual impression and it can serve both as protection from infringement and while also providing competitive advantages that create recognition amongst consumers. Understanding what ‘trade dress’ is and how it is protected against infringements is important for all businesses, regardless of their size.? In this blog post, we will discuss trade dress within the Indian legal framework, exploring when it is given protection, and how businesses can protect themselves against potential infringement issues. With this knowledge, you can be sure that your business has taken all possible steps to ensure its intellectual property ownership rights are being respected across India's ever-evolving landscape.

What is a trade dress??

Trade dress refers to a product's or service's overall presentation or overall feel. It includes all of the elements such as features, looks, shape, colour, and font that comprise the trade dress and must enable consumers to identify the source of the goods or services.

Trade dress for a product might include the container, accompanying displays, and even the product's configuration. It could be the décor or environment in which a service is delivered for a service, such as the distinctive decor of the Bukhara restaurant by ITC.

In recent years, courts have defined trade dress as the specific "look and feel" of a website's or a mobile application's design and layout. For example, the look of the Apple store has secured a design patent for its distinct rectangular shape store.?

Origination of the concept of trade dresses

The concept of trade dress arose from the Lanham Act, of US legislation. A product's trade dress can be protected without formal registration with the PTO under Section 43(a) of the Lanham Act. However, the definition of trade dress was solidified in the case Wal-Mart Stores vs. Samara Bros. 529 U.S. 205, 120 S. Ct. 1339 (2000), where it was expanded beyond its original scope. While trade dress originally referred solely to the packaging or 'dressing' of a product, numerous courts of appeals have since broadened its interpretation to include the overall design of a product.

Essential features to obtain a trade dress?

The following are the primary components of a trade dress:

• It encompasses things like the product's configuration, size, form, colour, and texture, among other things.
• It's likely that the product's packaging will be original.
• Additionally contributing to the product's unique personality is its colour.
• All the essential prerequisites for Obtaining a Trademark Registration

The following are the standards that must be met in order to register a product's trade dress:

• It is required to be expressed graphically.
• It must stand out from the other options.
• It can only be used in conjunction with the products or services of a third party.
• It is required to be in written format

Trade Dress in India

There is no precise definition of trade dress under the Trademark Act of 1999 in India. Due to the evolution of intellectual property laws, a new amendment to Section 2 of the Trademark Act recognizes trade dress protection through a new amendment which stated that:?

Section 2 of the Trademark Act defines a trademark as a pictorial representation and the overall appearance of a product that distinguishes one person's goods and services from those of others, such as the shape of items, their packaging, and their colour combination.

Additionally, this section defines the terms "package" and "TradeMark." The term "package" encompasses any box, receptacle, vessel, bottle, etc. "Trademark" contains a device, brand, ticket, signature, etc., as well as the shape and colour combination of items.

All of the components of trade dress under U.S. law are now included in the definition of a trademark in Indian law. Magazine cover art, the style of a lamp, the look of a pair of athletic shoes, and so on could all be considered examples of trade dresses. However, a trade dress cannot be applied to a novel idea or an original notion. Using a common law remedy called "passing off," the Indian courts have recognized the importance of protecting trademarks and service marks .

Numerous cases have been decided by the courts on the basis of the trade dress of the goods in issue. Trade dress has been recognized as an integral part of IP protection by Indian precedents as well. The product's packaging, design, and colour scheme are all examples of what the Indian judiciary considers to be trade dresses.

Famous legal battles for trade dress?

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

G for genius??

Namely, J.P. introduced a new brand of biscuits that competed with ParleG. It appeared that the company's product packaging for both products were the same colour, design, and size. Due to their deceptive likeness, the court ruled that the packets may not be placed side by side for consumers to make direct comparisons. Since it is not distinguishable from similar products, it confuses consumers. The Court's ruling went against J.P. and Company, prohibiting them from producing products with the same hue, pattern, and dimensions.

Merwans Confectioners Pvt Ltd v M/s Sugar Street & Ors

Facts:

• The applicant, Merwans Confectioners Pvt Ltd, had been operating a business under the "Merwans" brand since 1930 and had gained popularity for its freshly baked goods.

• In 1972, they launched the "Merwans" brand, which had been in use since January 1, 1978, according to the Trade Mark Registry.

• In 2015, Merwans Confectioners Pvt Ltd entered into a Franchise Agreement with M/s Sugar Street, granting the latter the right to use the distinctive trade dress associated with the "Merwans" brand.

• Over the course of four years, Merwans Confectioners Pvt Ltd developed a unique trade dress, investing time and money into creating a distinctive decor, layout, and design for their outlets.

• The Franchise Agreement was terminated by Merwans Confectioners Pvt Ltd in 2019, citing violations by Sugar Street.

• Merwans Confectioners Pvt Ltd claimed that Sugar Street continued using the same trade dress, causing confusion and passing off their products as Merwans.

Issues:

• Whether Sugar Street continued to use Merwans Confectioners Pvt Ltd's trade dress in their business, leading to infringement of Merwans Confectioners Pvt Ltd's claimed mark.

• Whether Sugar Street's use of similar equipment and cabinets constituted an infringement of Merwans Confectioners Pvt Ltd's trade dress rights.

• Whether the termination of the Franchise Agreement allowed Sugar Street to continue its business with a similar trade dress.

Judgement:

• The Court observed that Sugar Street had returned all items provided by Merwans Confectioners Pvt Ltd and had obtained equipment and cabinets from generic providers, not uniquely designed by Merwans Confectioners Pvt Ltd.

• The Court noted that there was no clause in the Franchise Agreement restricting Sugar Street from continuing a similar business with different equipment.

• Trade dress law does not grant exclusive rights to ornamental and aesthetic features without a source-identifying function.

• The test for trade dress infringement is the likelihood of confusion or deception among unsophisticated customers, regardless of minor differences in the trade name.

• The Court ruled in favour of Sugar Street, stating that there was no infringement of Merwans Confectioners Pvt Ltd's trade dress.

• They concluded that Sugar Street had lawfully used their own equipment and had no connection to Merwans Confectioners Pvt Ltd's business or products after the termination of the Franchise Agreement.

Final words

Adopting a distinctive trade dress is essential for businesses to stand out in today’s competitive marketplace. A multi-faceted approach to marketing includes advertising, branding, and packaging which plays an important role in helping brands create a strong visual identity. Taking timely steps to protect this getup can go a long way towards ensuring that the business enjoys optimal protection from imitators seeking to capitalise on its reputation. It focuses on preventing others from intentionally taking commercial advantage by prominently trading or ‘passing off’ their products as those of the original trader.??