Everyone knows that via trademarks we can protect the name, identity, value and reputation of our brand. Not just this, but the logo, taglines, slogans or phrases associated with a particular business and even signatures can be trademarked too. But have you ever wondered about the registration of a trade dress? Do you know what is a “Trade dress”, whether in India it can be protected or not and if yes, then how is it registered in India? This article will answer all these fascinating questions.
WHAT IS A TRADE DRESS? HOW IT’S DIFFERENT FROM A TRADEMARK?
Both, a trademark and a trade dress, hold a significant role in helping businesses protect their brand from increased infringement & replication and make their goods/services stand out uniquely in the ever-growing global market.
But where does the difference lie then?
In general, a trademark is a graphically represented mark which can be a word, phrase, numeral, logo or symbol whereas a trade dress involves the aspect of the “overall visual appearance” i.e., “look and feel” of goods or services that identifies and distinguishes the originating source among others and protects all characteristics including the “shape, packaging, colour or graphic design of the product/services”.
Also, it comes as no surprise that trade dress protection in this digital era does not remain limited to physical goods/services but can be granted to the “look and feel of websites, applications and video games” too. Therefore, the major difference between a trade dress and a trademark, is that a trademark generally includes the name or logo, while a trade dress covers the overall image and design of the product/services.
CAN YOU CLAIM PROTECTION FOR TRADE DRESS IN INDIA?
Though the present Trade Marks Act,1999 in India does not mention trade dress separately but includes all its aspects in the definition of the mark under Section 2(1)(m) of the act which extends the scope of “mark” to include the “shape of goods, packaging and combination of colours” & under Section 2(1)(q) it further defines “package” to cover all possibilities. Hence, trade dress is statutorily protected under the ambit of the Act.
It is also offered protection under the “common law of passing off”. Under this, it is protected in the same fashion as an unregistered trademark and requires no formal registration. Moreover, it is primarily associated with the goodwill built by the trade dress in the market.
For a kind reference, the landmark case “Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd.” (2003) was one of the first cases which primarily decided on the passing off of a product by using the same trade dress and provided the groundwork for the trade dress protection in India. The Hon’ble Delhi High Court in the case “Christian Louboutin Sas v. Mr. Pawan Kumar and Ors” (2017), for the first time, declared “the trade dress to possess the status of a well-known mark similar to that of an actual trademark.”
Therefore, in a nutshell, the answer is “Yes. Trade dress is protected in India.”
EXAMPLES OF TRADE DRESSES REGISTERED IN INDIA
- The shape of the “Coca-Cola” bottle.
- The shape of the “Gorbatschow vodka” bottle.
- The overall appearance of the “fevikwik” packet.
HOW DO YOU REGISTER A TRADE DRESS IN INDIA?
Though there is no separate mechanism for the formal registration of a trade dress under Indian Laws, a proprietor can register his trade dress as a trademark under the relevant provisions of the “Trade Marks Act 1999, on the government’s official website i.e. https://ipindia.gov.in/.
As mentioned above, a trade dress provides a legal safeguard to the overall appearance of goods/services i.e. the shape, configuration, colour combination, and packaging as well as extends its scope to protect the “website, applications and video games” also. Under Indian laws, it is not considered different from a trademark and is protected as a “trademark” itself through statutory and common law provisions. Moreover, in a time when everything is getting digitized, the registration of a trademark as well as of a trade dress becomes extremely crucial to protect the brand’s value from any unauthorized use and enforce its legal rights.
Author’s Name: Gunjeeta (National Law Institute University, Bhopal)