By: Nidhi Tandon
Today, the visual appearance of the product and product packaging play a critical role in ensuring identify specific products and eventually buy them. Trade dress relates to the overall appearance of a product, i.e., visual features or sensual appearance of a product such as its size, shape, packaging, colour or combination of colors, textures, graphics that is being used by companies to market and sell their products.
Concept of Trade Dress in India: Trade dress has not been defined specifically in the Trade Marks Act, 1999 (Act) unlike the US law which recognizes the concept of trade dress under Section 43(a) of the Lanham Act. However, section 2 of the Act provides a statutory framework to protect trade dress by broadening the definition of trademarks to include shape of goods, packaging and colour combination.
The term “mark” has been defined to include a “device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof”; and “package” includes “any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork.” Section 2(zb) of the Act defines a “trade mark” as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours. These provisions ensure that there is protection for product packaging (including its colour combination, size, shape. etc.) or product design/ configuration (such as a shape mark).
Passing off action: Trade dress in India is accorded common law protection in the same manner as that of an unregistered trademark by way of obtaining relief through passing off action against use of similar trade dress. To obtain relief under passing off of trade dress it is the duty of the plaintiff to prove that:
The trade dress of the plaintiff’s product has acquired distinctiveness coupled with reputation and goodwill which is built over time so that it can be distinguished from a competitor
The plaintiff’s trade dress is deceptively similar and is used by a third party to ride on the goodwill of the plaintiff’s product.
Creation of confusion in the minds of the consumers due to similar packaging or look or feel of the two products.
The jurisprudence around trade dress protection has been developing in India with various Indian courts protecting trade dress in India by considering various aspects relating to packaging and visual appearance of a product. We take a look at some interesting cases below:
Gorbatschow Wodka K.G. v. John Distilleries Limited. (May 2011, Bombay HC): Gorbatschow Wodka (GW), one of the most premium brands of vodka in the world have a unique bulbous shape bottle inspired by Russianarchitecture which has acquired distinctiveness and goodwill over the years. John Distilleries, an Indian company launched a product called “Salute Vodka’ with a similar shaped bottle as that of GW. In a suit for infringement filed by GW before the Bombay High Court, it was alleged that John Distilleries had adopted a deceptive variation of the shape of the bottle of GW. The Bombay High Court stated that the shape of the bottle launched by John Distilleries is deceptively similar and that it would tarnish the image of GW if John Distilleries is allowed to sell the same. While stopping the defendant from using the distinctive shape of the bottle on similar lines as that of the plaintiff for selling their products, the court held that the distinctive shapes of products and their packaging can be accorded trademark protection and registered as trademarks.
Colgate Palmolive Co v Anchor Health and Beauty Care Pvt. Ltd. (October 2003, Delhi HC): Colgate Palmolive (CP) sought an interim injunction against Anchor Health for use of a similar trade dress and colour combination of red and white in relation to an identical product ( tooth powder) when the trademarks being used by the two parties were completely different. While recognizing the concept of trade dress, the High Court of Delhi noted that it is the overall impression that a customer gets as to the source and origin of the goods from the visual impression of colour combination, shape of the container and packaging. If an illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for a longer period by way of getting the goods in a container having particular shape, colour combination and getup, it amounts to passing off.
Christian Louboutin Sas Vs Mr. Pawan Kumar & Ors. (December 2017, Delhi HC): This landmark case is the first instance in India where a court has declared a trade dress a well-known status just like a trademark. Christian Louboutin (CL) argued that its shoe with a red sole clearly identifies its product distinguishing it from third parties. The ‘red sole’ trademark has thus become the signature of CL as ithas obtained trademark registrations in different jurisdictions including India and simultaneously enjoys a trans-border reputation where its customers across the globe are well aware of the goodwill and reputation of the mark. The defendants were local shoe dealers manufacturing and selling shoes with a red sole thereby infringing CL’s trade marks. Looking into the material evidence led by the plaintiff, the Delhi High Court permanently injuncted the defendants from manufacturing, selling or in any way dealing with the footwear bearing CL’s registered trade mark for “Red Sole”.
While the jurisprudence around trade dress is still at a nascent stage in India, these cases point to the growing significance of courts according trade dress protection on similar grounds as that as of a trademark or a brand name that has acquired distinctiveness over a period of time.
 Section 2(m) of the Trademarks Act, 1999
 Section 2(q) of the Trademarks Act, 1999