Balancing legal protection in India

The judiciary has long recognised trade dress and the get-up of goods, and has traditionally provided protection from unauthorised appropriation under the tort action of passing off. This article analyses trade dress protection in India and how it interacts with Indian design law, as encapsulated by the Designs Act 2000.

Trade dress and trademarks
The concept of "trade dress" is anchored in trademark law and has its origin in US law, although it can also be traced back to the common law doctrine prohibiting unfair competition. Trade dress (like a trademark) acts as a source identifier, albeit an unregistered one. Simply put, trade dress is an arrangement by which a particular product can be distinguished on the market by virtue of its packaging, colour, design or schematic arrangement (see Wal-mart Stores Inc v Samara Bros Inc (2000) 529 US 205 (SC)).

Under the Trademarks Act 1999, the shape of goods, packaging or combination of colours or any combination thereof come under the definition of a "mark". A "package" is further defined under the act as any case, box, container, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper or cork. Thus, the new definition of "trademark" in India broadly encompasses most of the elements of trade dress. Hence, it is theoretically possible to apply to register trade dress under the Trademarks Act.

Trade dress offers wider protection than a trademark in terms of packaging and product design (ie, the overall look of the product), as well as focusing on its entire selling image. This broad aspect of trade dress is evident in the manner in which it has been interpreted by the courts. Trade dress protects aspects of packaging and product design that may not be registered for trademark protection because the evaluation of trade dress infringement claims requires the court to focus on the claimant’s entire selling image. In cases where passing off is claimed, a court may take into consideration and compare the competing trade dress in its entirety to reach a prima facie view of whether there is a likelihood of confusion (ie, the shape of container, colour, printing and the interplay of all those elements apart from the distinctive feature must be taken into consideration – for example, see Smithkline Beecham plc v Hindustan Lever Ltd (2000) PTC 83 Del).

Trade dress comparison is of the utmost evidentiary value in proving passing off. It is used to establish whether a likelihood of confusion may take place, as was done by the Delhi High Court in Stokley Van Camp v Heinz India Pvt Ltd (MANU/DE/1202/2010, decided in CS(OS)514/2010 on 31st May 2010), wherein the trade dress (ie, the packaging, get-up and overall appearance of the competing products – Gatorade and Glucon D-Isotonik – along with similar sounding slogans) was in question. The court decided, on the basis of trade dress, that there was no likelihood of confusion between the two products.

One of the earliest cases dealing with the concept of trade dress was William Grant & Sons Ltd v McDowell & Company Ltd (55 (1994) DLT 80), which was decided by the Delhi Court in 1994. In this case the defendants had created a label similar to the plaintiffs’ Glenfiddich brand of whisky. The court held in the current instance:

“What is necessarily to be seen in the case of passing off, is to compare the whole of the plaintiff's label with the whole of the defendant's label. When so compared, in my view, there are common black, red-rust and golden colours, there are common use of scrolls, common use of ghosted letters for the purpose of writing the name of the whisky, there is common stag/sambhar with antlers, thistles are to be found in both the labels, scrolls being found both on the top and the lower part of both the labels. All these similarities, as a whole, in my view, go to show that the defendant wished to make its label a close approximation of the label of the plaintiff, as it possibly could. It only made colourable variations in the way the golden scroll curved. In the case of the plaintiff's scrolls, they curve upwards, and, therefore, the defendant's scrolls curve downwards. This is so far as the top part of the label is concerned. Although the label used by the plaintiff is far more attractive to the eye than the label of the defendant, nonetheless the similarities between the two cannot be missed.”

The definitive test for the use of trade dress to establish passing off in the clearest possible terms is given in Colgate Palmolive v Anchor (108 (2003) DLT 51; 2003 (27) PTC 478 (Del)), wherein the judge stated:

“It is the overall impression that customer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging etc. If an illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, colour combination and getup, it amounts to passing off. In other words if the first glance of the article without going into the minute details of the colour combination, getup or lay out appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one's own goods as those of the other with a view to encash upon the goodwill and reputation of the latter.”

A pertinent question which arises at this juncture pertains to the very nature of trade dress. The design given to a product (or its container) by a manufacturer may also serve to distinguish it from competing products of other manufacturers and hence may be a protectable trade dress.

Design
A "design" under Section 2(d) of the Designs Act 2000 is defined as:

“features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.”

Thus, it is evident that the Indian legislature thought it fit to exclude trademarks as defined under the Trade and Merchandise Marks Act 1958 from design protection to any trademark. However, surprisingly, even after the Trademarks Act was notified in 2003 and the definition of "trademark" under Section 2(1) (zb) was widened to include “shape of goods”, there was no amendment to the definition of a "design" in the Designs Act 2000 to exclude the definition of 'trademark' under the new Trademarks Act.

This leads to a peculiar situation wherein it may be possible for the proprietor of a registered design to seek trademark protection even after the expiry of the 15-year protection period available under the Designs Act. However, this argument would be tested in light of the fact that the “shape of goods” has now been included in the definition of "trademarks" under the Trademarks Act and the intent of the legislature has never been to extend monopolies in design – hence the clear exclusion of 'trademark' under Section 2(d) of the Designs Act.

This article first appeared in World Trademark Review, published by The IP Media Group (www.worldtrademarkreview.com).