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TRADE DRESS PROTECTION-COMPARATIVE STUDY OF US AND INDIAN POSITION

Author: Arya Sudhir Nikam, III year of B.A.,LL.B(Hons.) From Maharashtra National Law University, Mumbai.



Trade Dress denotes  the outward aspect of items, such as packaging, form, and colour combination, that can be registered or protected by rivals in terms of their company and services. It assists consumers in identifying and distinguishing the product from others. It also aids an ignorant buyer in differentiating a product based on its packaging. The US was the first to recognise this notion. The new Trade Marks Act 1999 went into effect in September 2003 and is primarily based on the English Trademark Act, 1994, which acknowledged the notion of trade dress along the lines of The Lanham Act.



Trade Dress protection is intended to shield customers against product packaging or look that is designed to compete with other items. It stops customers from purchasing a goods under the mistaken notion that it belongs to someone else. The major goal is also to keep goods and services from being copied. It should stand out from the crowd. It should not cause misunderstanding in the minds of customers so that there is no unfair usage of that goods.



Trade Dress Essentials

1. Shape, size, colour, texture, product arrangement, and so on are all examples.

2. A product's packaging is likely to be one-of-a-kind.

3. The colour of the product also contributes to its individual personality.



India's Trade Dress Protection Act

Under the Trademark Act of 1999, there is no explicit definition of trade dress in India. However, owing to changes in intellectual property laws, a new Amendment recognised trade dress protection under Section 2 of the Trademark Act through a revised definition of a trademark. Trade dress is governed by unfair competition laws. Both state and federal laws ban enterprises from impersonating or duplicating one another.



According to Section 2 of the Trademark Act, a trademark is a graphical representation and overall look of a product that differentiates one person's products and services from those of others, such as the form of items, their packaging, and colour combination. In addition, the terms "package" and "Mark" are defined in this section.Prior to 2003, Indian courts began to recognise the idea of trade dress.



The new Indian law definition of a trademark includes all of the components of trade dress under US law. Trade dress as a notion might encompass the design of a magazine cover page, the visual look of a lamp, the design of sports shoes, and so on.



A generic notion or a creative concept, on the other hand, cannot be protected as a trade dress. Indian courts have granted trade dress protection through a common law remedy known as "passing off" (enforcement against an unauthorised use).



The clause of Section 9(3) of the Trademarks Act 1999 states the form of products registration of the trademark.According to Section 9(3) of the Trademark Act of 1999, a mark may only be registered if it does not include:

A) A natural form of a product.

B) A form that adds significant value to the product.



This demonstrates the Doctrine of Functionality (which forbids a party from getting trade dress in a product's functional element), which is recognised under Indian Trademark Law. Distinctiveness is also an important factor in Trademark and Trade Dress, which indicates that a trade dress must be distinctive, i.e. easily recognised by customers. Trademark protection is provided for both registered and unregistered trademarks, as is trade dress protection.Many times, courts have made judgements based on a product's trade dress aspect. Indian judicial decisions have likewise identified trade dress as an important part of intellectual property protection. The Indian judiciary has recognised trade dress aspects such as product form, colour combination, and packaging.



Trade Dress Protection in the United States

Trade dress protection is specified in the United States under Section 43(a) of the Lanham Act, which states that trade dress is defined as the whole look of the goods, which may include size, form, colour combination, and so on. It is open to both registered and unregistered trade dress (the symbol, word etc. used by the company which is registered under the Trademarks Act 1999 is known as registered trademark and any symbol, word etc. used by the company but is not registered is know as unregistered trademark). The trade dress must be original, exceptional, or generally recognised by the public in order to be protected.


Section 43(a) of the Lanham Act prohibits civil aviation from using any word or combination of words, phrase, name, symbol, or other identifier linked with another's goods that causes confusion. This legislation does not cover a product's functional features.



Under US law, distinctiveness might be general, descriptive, suggestive, arbitrary, or whimsical. Generic marks cannot be trademarked since all merchants should be able to use such phrases to describe their items while competing with customers.



Trade Dress is significant because it prevents businesses from engaging in unethical acts. Section 43(a) of the Lanham Act prohibits civil aviation from using any word or combination of words, phrase, name, symbol, or other identifier linked with another's goods that causes confusion.



This legislation does not cover a product's functional features.



Under US law, distinctiveness might be general, descriptive, suggestive, arbitrary, or whimsical. Generic marks cannot be trademarked since all merchants should be able to use such phrases to describe their items while competing with customers. Trade Dress is significant because it prevents businesses from engaging in unethical acts.In the United States, the two most important criteria for trade dress protection are distinctiveness and non-functionality. This criterion must be followed for trade Dress protection; otherwise, compensation should be paid to the affected party.


If a plaintiff files a claim for infringement, he or she must demonstrate the following three elements:

i) The plaintiff has a distinctive trade dress in a flawless design or mix of features.

ii) Confusion is created by the suspected trade dress.

iii) If the defendant's trade dress is not registered, the plaintiff must establish that it is not functioning. If it is registered, the defendant bears the burden of demonstrating functioning.The third argument raised above is intriguing, and in order to fulfil it, the trade dress for protection must not be practical. The arrangement of forms, patterns, and colours leaves no doubt in the minds of the clients.



If the foregoing three trade dress components are satisfied, there are two remedies available:

-Suspension of proceedings (the Courts order to stop one party from infringing trade dress of another party)

-Financial Losses (compensation for loss suffered by the injured party).



The regulations governing trade dress protection in both of these countries are nearly identical. One distinction between US trade dress and Indian trade dress is that in the US, trade dress is registered by meeting specific standards, however in India, the Trademarks Act does not recognise the phrase trade dress, hence it is not protected. Certain characteristics of the goods, such as a colour combination, form, and so on, can be registered. The United States has well-established trade dress protection, but India is slowly making headway in recognising trade dress protection. However, both nations have identical trade dress protection.



Trade Dress protection can also be offered for the shape of a soft drink container, the shape of furniture, or the design of the showroom. Some well-known examples of trade dress include the shape of a Coca-Cola bottle and the grills of a Rolls-Royce car. With more competitors, trade dress offers a new venue for securing the aspect of distinctiveness. Even illiterate customers can tell the difference between products based on their packaging. The colour of a product also provides it with a distinct identity.



It is mostly concerned with the product's look. It differs from a trademark in that a trademark deals with words, logos, slogans, emblems, and so on that are fixed on a product in order to distinguish it from another.The look of the goods to identify the maker is referred to as trade dress. Under common law, trade dress can be protected by passing off, which protects a company's goodwill.