Trade Dress – Trade Dress and its protection

It is most common to think of legally protectable brand identifying symbols as the various words, phrases or pictorial logos we know as trademarks. Many merchants, however, especially in recent years, have also attempted to secure comparable protection for the shape and design of their product’s labelling or packaging or even for the shape and configuration of the product itself. In still others they have claimed a protectable interest in such exotic attributes as a sound or a smell. As for a mere illustration like trade dress generally, a party claiming legal protection for the single overall colour of its product must show that the colour is both distinctive and non-functional.

Collectively, product or packaging attributes which serve to identify goods or services are known as “trade dress”. As a general rule, the law protects trade dress, provided that it does, in fact, function to identify the goods or services in question, and provided that protection would not unduly burden competition. However, it took the courts some time to arrive at this straightforward result, and older cases sometimes denied protection where the band identifying material was unconventional in format. Moreover, it is for most of these more esoteric categories of identifying symbols the law imposes special or additional requirements before granting protection. 

Keywords- Copyright, Trade Mark, Insignia, Infringement. 

Introduction 

The trade dress of a product is the overall visual image that it presents to shoppers. It carries with it the form and colour of the packaging or container either in isolation or combined with the shape, placement and colour scheme of any labels, and the various visual design aspects of those labels. Moreover, as the Supreme Court of USA has recently noted, although “trade dress … originally enclosed solely the packaging, or ‘dressing,’ of a product, … in recent years, it has been dilated by several courts of appeals to encompass the design of a product.”

Elaboration

Trade dress protection is frequently sought for the totality of all the product or packaging features, it is entirely permissible for a merchant to seek such protection for a subset of features. Consequently, a firm might endeavour to protect only the shape of its container, independent of colours, labels and the like. The classically shaped glass COCA–COLA bottle is an apt illustration of a product container that serves to identify the source of the beverage inside for many consumers, even when the bottle is stripped of all labelling.

Not every aspect of a visual appearance, shape, design and colour will be treated as protectable trade dress, however. If a product is adorned with features which strike the consumer as primarily decorative or ornamental rather than as source designating, those features do not constitute trade dress, because they do not serve a source-designating function. For instance, in Knit waves, Inc. v. Lolly togs, Ltd (1995)” the plaintiffs sought to protect two different designs for girls’ sweaters as trade dress. Copyright law is often a viable and more appropriate legal alternative.

Sanjeev Narula, J. observed in a case where Plaintiff sought permanent injunction restraining infringement of trademark/copyright/trade-dress/writing style/colour combination/overall get-up; passing off rendition of accounts; damages; delivery-up, and other ancillary reliefs as Defendant was using the said registered mark along with its trade-dress and writing style in a completely different manner than their registration and was selling their products with a trade-dress that was closely identical to the Plaintiff, said mark was deceptively similar to the trademark/copyright/colour combination/ writing style/overall get-up to the Plaintiff's prior used registered marks, Defendant was actively advertising/soliciting for the impugned products on various third-party e-commerce portals such as-India mart and Flipkart - Such online usage by the Defendant is clearly causing damage to the Plaintiff, thus Defendant did adopt the similar trade mark thus copying the entire trade dress which is similar to the plaintiff himself. The Plaintiff established a prima facie case in its favour and the Defendant was directed to remove all third-party listings of impugned marks.

The Non–Functionality Requirement Manufacturers often incorporate elements into product or packaging design in order to make the product work better, to make it easier to use, display or ship, or to make it cheaper to manufacture. Examples might include an improved and more comfortable handle on a gallon jug of bleach, or a new shape of lampshade for a desk lamp that reduces glare and better focuses the beam of light. Such features are considered “functional.” Trade dress rights cannot be claimed in functional features and, to put the same idea the other way around, non-functionality is thus a prerequisite for trade dress rights. 

Secondly, to protect the functional package or product features falling under trademark law evidently undermines the policies attached to the patent system. Under the law ruling the patent system, one can only access the exclusivity of a  new technological development if the development conforms with the fair exact standards of novelty and non-obviousness. 20 More pedestrian innovations are not considered worthy of an exclusive right. If such features could nonetheless be protected as trade dress, firms would be able to make an end run around the standards of patentability, 21 and they would be able to claim this protection for an indefinite period, rather than for the limited term of years provided under patent law.

Thus, there are ample reasons to insist that a proponent of trade dress protection show that the alleged trade dress is “non-functional” before the law will grant exclusive rights. Viewed casually, however, this notion of “functionality” could lead to absurdities. For instance, one might reason that all product containers—no matter what they look like—are “functional” because they serve the function of keeping the product from running all over the place. It is undeniable, after all, that even the most elaborate bottle or the most intricate box performs the purpose of containing the product, preventing it from being spoiled or damaged, and making it convenient to transport. Similarly, no costume or uniform could ever be deemed non-functional since costumes and uniforms serve the function of preventing the user from appearing naked in public—undeniably useful for all but a few of us. Such a view of functionality would, however, deny protection to virtually all trade dress, a result that is both counter-intuitive and not required by any sound policy relating to competitor need and the integrity of the patent system. To avoid this result, when determining whether a trade dress is functional, courts focus on the specific design of the package or the product.

Non-functionality of trade dress is not enough, by itself, to warrant legal protection. The combination of features identified by the merchant must also be distinctive—they must serve to identify the brand of goods and distinguish it from competitive brands.

Court was heavily influenced by its desire to avoid burdening competition, and by its perception that any test of inherent distinctiveness for product design cases would encourage meritless suits designed to intimidate competitors.

R.D. Dhanuka, J. observed as per Civil Procedure Code, Order 39, Rule 1 and 2 as per Trade Mark Act, 1999, Section 29, Suit for injunction was filed, Applicant running business of bakery, Franchise agreement entered between applicant and defendant which was later terminated by applicant. Applicant stated that he designed decor used by the defendant. The Photographs produced by defendants as well as applicant and Court Commissioner does not indicate that stick-on labels affixed to cabinets prior to the date of termination of Franchise Agreement continued to be used by defendants. The Photographs brought on record by Court Commissioner sufficient to render finding that trade dress of applicant is not continued by defendants in said shop run by defendants, post-date of termination of Franchise Agreement and the Product feature whose only impact is decorative and aesthetic with no source identifying role cannot be given exclusive rights under trade dress law. The required test is whether there is likelihood of confusion or deceptiveness in minds of unwary customers irrespective of dissimilarities in trade name. The Interim application was dismissed. 

References

1. Intellectual Property – The Law of Copyrights, patents, and trademarks by Roger Schechter, and John R. Thomas.

2. Research Handbook on the Protection of Intellectual Property under WTO Rules.

3. Intellectual Property Rights and their implementations, edited by DR. Raj Kumar.   

                                                                                                                         Author: Enakshi Sarkar