PROTECTION OF TRADE DRESS- COMPARISON BETWEEN INDIA AND US

The whole concept of Trade dress was first identified by the US. The Trade mark Act, 1999 somewhat follows the path of English Trademark Act, 1994 which traced Trade Mark through The Lanham Act. Trade Dress means a visual impact of products in the minds of consumers. It involves packaging, shape and combination of colors which can be registered by a person in way of their business and services. Trade dress helps the customers to differentiate its product from the many other products which are available in the market.

Trademark Nov 4, 2020 0 Add to Reading List

PROTECTION OF TRADE DRESS- COMPARISON BETWEEN INDIA AND US

Introduction and Meaning

The whole concept of Trade dress was first identified by the US. The Trade mark Act, 1999 somewhat follows the path of English Trademark Act, 1994 which traced Trade Mark through The Lanham Act. Trade Dress means a visual impact of products in the minds of consumers. It involves packaging, shape and combination of colors which can be registered by a person in way of their business and services. Trade dress helps the customers to differentiate its product from the many other products which are available in the market. Mere a type of packaging can aid an illiterate consumer to find out his products among several others. The main aim of this is to prevent customers to buy some other company’s product as it helps in safeguarding of goods and services from duplicating or copying. Trade dress provides a distinction to the product and thereby adding a unique feature to one’s product.

A Trade Dress provides distinction on the basis of shape, size, texture and color etc. Packaging also gives a distinct feature to the product.

Need for Trade Dress

Customer chooses a product because they are attracted to its quality and representation. It is the appearance of the product which makes it different and that’s what urges customers to buy. As there are so many products in the market that’s why even the educated ones find it difficult to choose from similar looking product. This is the reason as to why trade dress should be protected. It will help in eradicating confusion in the minds of customers and will also establish a feeling of stability and distinctness in the minds of manufactures and producers.

Provision for Trade Dress Protection in India

Initially, there was no proper definition of trade dress in India and as per Trademark Act, 1999. But due to the increasing development and recognition given to Intellectual property, Trade dress is gaining importance day by day. Therefore, a new amendment was inserted introducing trade dress protection under section 2 of the trade mark act. Hence, duplicating or copying business is strictly prohibited under state and federal laws.

The definition of trade dress includes all the important ingredients of the trade mark provision under the US law. As a whole idea, trade dress can include the design of the cover page of the book, the visual appearance of the picture, design of shoes etc. Indian courts have safeguarded trade dress through common law remedy- ‘passing off’.

The shape of goods registration of trade mark is incorporated under Section 9(3) of the Trademarks Act, 1999. It also talks about the Doctrine of Functionality which aids in preventing a person or party from getting a trade dress in the functional element of the given product. Trade dress protection is provided to both registered and unregistered trademark.

Opinion of Indian Judiciary

There have been several instances where the courts have given their judgment on the basis of a trade dress factor of the product. It has also viewed trade dress as an important part of the Intellectual property. Judiciary has acknowledged the elements like shape, colors and packaging as an important part of trade dress protection.

Trade Dress Protection in US

The provision regarding trade dress is embodied under Section 43(a) of the Lanham Act which states trade dress as a representation of the specific product in size, shape, color etc. It is available for both registered and unregistered. And for the trade dress the product should be distinct or widely recognized by the common man.

The act provides civil aviation against the individual who uses any word, term, symbols or their combination etc in relation with any good belonging to another which causes misunderstanding. Uniqueness under the US law can be said as generic, descriptive, suggestive, arbitrary, and fanciful. Generic words cannot be protected as they are the common thing in all the products and every individual should be allowed to use that particular term. It is very important to prevent unfair practices which are prevalent in such type of industry.

Distinctiveness and non-functionality are the two important criteria for the protection of trade dress in US.

For the claiming the plaintiff should proof that he owns a protectable trade dress in a design which is distinct and the accused trade dress contains confusion in its product.

If the defendant trade dress is not registered, then the plaintiff must prove about non-functionality. And if it’s registered then the burden of functionality lies with the defendant. The remedies which can be awarded include injunctive relief and monetary damages.

Comparison between India and US

There is not a lot of difference in the provisions of trade dress of these two countries. One of the difference can be that in US trade dress gets registered by providing specific conditions while in India the act doesn’t consider the term trade dress for which it doesn’t get protection. Certain attributes like colour combination, shape etc of the product can be registered. The US has a well established law for trade dress protection while India is still in recognition phase of the said protection. It will take some time for a better establishment and enforceability of this provision. But that being said both the countries have same trade dress protection.

Case Laws

Cadbury India Limited Vs. Neeraj Food Products, 2007

In this case there was an issue in the name of JAMES BOND which was quite similar to GEMS of the Cadbury. The court held that the name is similar and also the packaging of Neeraj Foods is same as Cadbury. Therefore, Neeraj Foods were prevented from using such packaging.

Gorbatschow Wodka Kg Vs. Jogn Distilleries Limited, 2011

Both of these were Vodka companies. John’s bottle was in same shape like Gorbatschow which has a unique shape. The court held that the shape has similarity and can cause confusion in the minds of people. Therefore they were stopped from manufacturing such bottles.

Conclusion

As the competition is growing, many companies are being registered and everyone wants to make their product as distinct and attractive as possible. This will include many trade dress protection in the future. It is different from the trademark as it includes words, logos and phrases. Trade dress is about the design, the dressing of the product. Trade dress can be protected by using passing off which creates a goodwill for any business or enterprise.

References