In the current times, where visual appearance of a product is so essential, the obligation to protect it also has increased gradually. This is termed as Trade dress in legal language. In countries like the US, there are separate laws to govern Trade dress. In India, there are no separate legislations to govern trade dress but the judiciary is taking due steps to safeguard it from being abused. The Trademark Act, 1999 enumerates the legal definition of Trademark, which contains the specifications of a Trade dress.
Product outlook and visual impact of any product, which has to be proposed in the market, has become one of the deciding factors regarding how the product will boost popularity among the eventual customers. In present times, consumer choices are undoubtedly affected not only by the quality but also by the overall packaging of the product. Packaging, design of the product, color blend, pattern, graphics which is addressed as trade dress are guarded from being exploited by the other parties who determine to replicate the product to take benefit of its earned goodwill. In India, there is no diverse law for the protection of trade dress. However, due to the progress in Intellectual Property Laws, a new Amendment was sanctioned for trade dress protection through a new definition of a trademark under Section 2(zb) of the Trademark Act.
Section 2(zb) of Trademark Act, 1999 states that "trademark" means 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 the shape of goods, their packaging, and combination of colors;
To attain protection, the complete image of the product has to be peculiar. While offering security to the right holders to protect their trade dress, the Indian courts have taken ample ingredients rather than simply sticking to the typical methods of figuring out a dispute in the direction of trademark infringement only.
JUDICIAL DECISIONS CONCERNING TO TRADE DRESS IN INDIA
In Colgate Palmolive And Company v. Anchor Health and Beauty, the dispute was pertaining to an amalgamation of colors red and white. The Court adhered, if the color combinations of both the products are not distinctive, then it will create a dilemma in the minds of the consumer about the basis of the products. If a consumer lacking education uses another product relying on the physical attributes of the product then it amounts to passing off.
Another case where trade dress was debated is the case of Pidilite Industries Limited v. Poma-Ex Products before the Bombay High Court. The crux of case was the infringement of the Pidilite Industries mark “FEVIKWIK” by the Poma-Ex Products mark “KWIKHEAL”, but the matter of trade dress also had an eloquent role to play in deciding the matter. The Pidilite Industries defended that they have a peculiar outlook of their product, which was designed by an employee of the claimant during employment. Poma-Ex Products has not been using its trademark packaging but has been using the packaging which is identical to that of Pidilite Industries product. Pidilite Industries' view was that the Poma-Ex Products has used the tiniest details of its product packaging and therefore has an open case of infringement and passing off. The Court while agreeing with the arguments of Pidilite Industries pronounced that the packaging of the Poma-Ex Products could cause turmoil among the consumers as the packaging of the two products were similar.
Britannia Industries Ltd v ITC Limited was decided by the Division Bench of Delhi High Court wherein the dispute concerned to ITC's yellow and blue packaging of Sunfeast Farmlite Digestive All Good Biscuits, where Britannia has imitated an identical color trade dress for its Nutri Choice Digestive Zero Biscuits. The Single Judge while passing the judgment in favor of the ITC noticed that within a short period, the product of ITC had gained enormous fame which was clear-cut from the sales of the product.
Britannia proposed an appeal before the Division Bench which overturned the order of the Single Judge making the following observations:
a) The yellow and blue packaging did not gain distinction to conclude that it is exclusively affiliated with ITC
b) Goodwill of ITC mostly counted on its trademark and trade name in it’s add commercials
c) The Court surmised that individuality is captured not only from unique outlook but also obtains some striking feature. In the case at hand, the yellow-blue combination of packaging did not fulfill the test of distinctiveness, and impugned order by the Single Judge was set aside.
One of the first cases in India where any Court has given well-known status to a trade dress was Christian Louboutin Sas v. Mr. Pawan Kumar & Ors . The luxury shoe brand of famous designer Christian Louboutin was in test. The issue was about the infringement of the trademark “Red Sole”. In this case, it was argued by Christian Louboutin that the shoe with red sole recognizes Claimant’s product make it peculiar from others. The “RED SOLE” has thus become the sign of originality to recognize Christian Louboutin’s products. It has registrations in various jurisdictions including India and relishes trans-border goodwill and fame by a plethora of factors. The respondent in the suit were local shoe merchants and sold shoes with red sole thereby infringing the trademark of Christian Louboutin. The Courts after considering the material proof permanently put a halt from producing, selling, or in any way dealing with "Red Sole" footwear and awarded damages in favor of the Christian Louboutin.
In Gorbatschow Wodka Kg v. John Distilleries Limited, the shape of the good was referred to as a trade dress. Both these companies manufactured vodka. Gorbatschow, which has a peculiar bulbous shape inspired by Russian architecture. The Court held that this shape is deceptively identical which can cause a dilemma in the minds of the consumers; hence, John Distilleries was barred from adopting the shape of the bottle for their products.
In the current times, where the market is brimming with new products every day, the consumers are facing difficulties to recall due to the jumble of products. For the same reason product packaging, color combination, and shape of the products plays a vital role in consumer’s choice of products. As already mentioned, the Trademarks Act, 1999 does not precisely deal with trade dress but the amendment has expanded the definition of Trademarks to be able to include the meaning of trade dress. Thus, Indian legislations have attained equilibrium with international laws in connection with trade dress. It may be noticed from the above-mentioned decision of various Courts of India that a trademark is not what it meant a few years ago but has incorporated the meaning of trade dress within it. The suit for passing off need not be only for a trademark or service mark or logo but a party aggrieved due to identical packaging, color combinations, design, or shape of the product can address the issue by filing a suit for passing off.