Products and services are distinguished by proprietors from their competitor’s products by conceptualizing various artistic getup, innovative shapes and designs and surface patterns of its product, implementing various modern technologies to give products a lasting and aesthetic look. The products with their distinctive shape, configuration, surface pattern and artistic work on them form a distinctive identity of their own, originating from the petitioner and as a whole forms a trade dress of the product. 

‘Trade Dress’ is protected under the Trademark Act (the Act) and is regulated by the laws of unfair competition. The expression ‘deceptively similar’ as defined in Section 2 (d) of the Act means that the similarity or resemblance must be such as it would be likely to deceive or cause confusion.

Registering artistic element as trademark 

In addition to color, sound, scent marks, etc., proprietors are now seeking to trademark the “layouts” of their stores and service outlets. Product packaging and trade dress registration has always been recommended for the wider scope of protection through trademark law. Shape trademark applications are also on the rise and must be represented graphically through drawings that depict all aspects of the mark. A detailed description of the mark’s constituent features must also be provided. The registrar has the authority to request different perspectives of the mark. It is necessary that the said artistic work is either inherently distinctive or has acquired secondary significance so as to distinguish one’s products from those of the others. It is interesting to note that these requirements apply to 3D marks. However, recent layout mark applications have included photographs, which make them easily recognizable. These marks are distinct from architectural trademarks, which were first registered in India for the Taj Mahal Palace Hotel and the BSE Building in Mumbai. Architectural trademarks protect the exterior images of buildings for commercial purposes. On the other hand, layout marks aim to safeguard the intricate arrangements of features, color patterns, and furniture within stores, including their interiors.

Product packaging, Trade Dress Infringement and Passing Off

In order to determine trade dress infringement, it is necessary to assess whether the infringement significantly impacts the overall appearance or impression of the plaintiff’s product, packaging, and advertising. This involves comparing the plaintiff’s product to the defendant’s product. If the defendant’s trade dress is remarkably similar to the plaintiff’s and is likely to cause confusion among consumers, then there is trade dress infringement. It is important to note that even if the defendant has not specifically infringed upon a trademark of the plaintiff, this does not negate the possibility of liability under broader rules of unfair competition through trade dress infringement. This can be addressed under the passing off laws.

Unfair competition, such as passing off, involves the defendant engaging in unwarranted actions that cause confusion among consumers. One such action is copying the plaintiff’s trade dress. Therefore, unfair competition occurs when the overall impression of a product’s packaging, size, shape, color, design, and name creates confusion about its origin. The defendant cannot avoid liability for unfair competition by separating different aspects of the plaintiff’s product, packaging, and labels and claiming that each aspect is not protectable on its own. Consequently, the plaintiff can challenge trade dress infringement from a broader perspective if the case involves unfair competition, such as passing off.

In one of the earliest cases on trade dress dispute in Parle Products(P) Limited Vs. J.P and Company1, J.P introduced a brand of biscuits that bore resemblance to ParleG. Both companies’ product packaging shared the same color, similar design, and size. The Court determined that this similarity was deceptive and misleading. The packaging could not be placed side by side or easily differentiated, causing confusion among consumers and lacking distinctiveness. Consequently, the Court’s ruling was unfavorable for J.P and Company, restraining them from using the same color, design, and size for their product.

In the case of Beiersdorf AG v. RSH Global Private Limited2, The defendants’ products were found to be deceptively similar to the plaintiff’s unique trade dress, which constituted a violation of the plaintiff’s registered trade dresses. The Delhi High Court instructed the defendants to cease using the plaintiff’s cosmetic products.

The case of Colgate Palmolive and Company Vs. Anchor Health and Beauty3 involved a disagreement over the use of the color combination of red and white. The Court determined that if both products shared the same color, it would lead to confusion among consumers regarding the product’s source. If an uninformed consumer chooses another product solely based on its physical appearance, it would be considered passing off, which is when a product is deemed similar to another party’s product, including registered or unregistered trademarks.

In Cadbury India Limited Vs. Neeraj Food Products4, there was a dispute over the usage of the name “JAMES BOND,” which was found to be similar to Cadbury’s registered trademark “GEMS.” The Court concluded that the word “JAMES BOND” bore a physical resemblance to Cadbury’s trademark. Additionally, the High Court determined that the packaging of Neeraj Foods was also similar to Cadbury’s packaging. As a result, Neeraj Foods was prohibited from using such packaging, as it was deemed too similar to Cadbury’s.

In Gorbatschow Wodka Kg Vs. John Distilleries Limited5, John Distilleries produced a bottle with a similar shape to Gorbatschow’s distinctive bulbous design, which was inspired by Russian Architecture. The Court determined that this shape had a misleading similarity that could potentially confuse consumers. Therefore, John Distilleries was prohibited from using this bottle shape to sell their products.

Why should you protect product get up as Trademark and not copyright

Copyright arises as soon as the creator creates the artistic work and can be claimed for a limited period. A new copy copyright can be created by tweaking the original work. Copyright does not offer protection for titles specifically, which is why trademarks become necessary. Trademarks can safeguard such titles. Once a trade dress, product packaging or shape of a product is registered as trademark, only the authorized user can utilize the trademark, preventing unauthorized use by others. It also enables the user to seek compensation or an injunction in cases of trademark infringement. Therefore, trademarks provide a better legal recourse for the aggrieved party in a court of law.

Author: Paramita Nandy Gupta, Trademark Attorney

Image courtesy: Freepik

  1.  AIR 1972 SC 1359 ↩︎
  2. CS(COMM) 48/2021 ↩︎
  3. (2003) 27 PTC 478 Delhi ↩︎
  4. 142 (2007) DLT 724 ↩︎
  5. 2011 (4) BCR 1 ↩︎

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