A DPIIT Recognised Startup

law News

Trade dress protection-comparative study of US and Indian position



Trade dress refers to aspects of a product’s visual or sensuous appeal, such as its packaging, shape, or color combination, that can be registered and protected from being exploited by competitors in connection with their business and services. Their shape (3-dimensional), packaging, color, and graphic design are all characteristics.Trade dress protection is put in place to protect consumers against products that are packaged or appear to copy other products, and to prevent consumers from purchasing one product believing it to be another. Because there are so many products on the market, even the most educated people find it difficult to distinguish between things that appear to be comparable. The reason why trade dress should be protected is because of this. It will aid in the elimination of customer misunderstanding as well as the establishment of a sense of stability and distinctness in the thoughts of manufacturers and producers.

What are the essentials of Trade Dress?

There are a few essentials for trade dress. They are listed below:

  1. A trade dress is anything that gives a brand its overall look and feel in the marketplace.
  2. Consumers truly feel that trade dress is a reliable signal for distinguishing one company’s goods and services from those of competitors.
  3. The arrangement of shapes, styles, colors, or materials that make up the trade dress in question must have no utility or function other than to create familiarity in the mind of the consumer.
  4. The registration of trade dress is subject to the same statutory requirements as the registration of a word/logo mark.

Origination of Trade dress

The Lanham Act, a piece of US legislation, gave birth to the concept of trade dress. An item’s trade dress can be protected absent formal registration with the PTO under section 43(a) of the Lanham Act.

Two basic requirements under this act for registering trade dress were:

  1. “Use in Commerce”- One of the requirements is to file for registration with the intention of using it in commerce, provided it is not already in use in commerce when the registration application is filed. Exclusive rights to a trademark are granted to the first person to use it in commerce under Lanham Act registration procedures.
  2. “Distinctiveness”- The second criteria, that a mark be distinctive, refers to a trademark’s ability to identify and differentiate specific goods coming from one producer or source rather than another. A trademark’s distinctiveness is generally classified into four categories: arbitrary/fanciful, suggestive, descriptive, and generic.

Legal provision for trade dress in India

Unlike the United States, where the notion of trade dress is recognized under Section 43(a) of the Lanham Act, Indian law does not have a distinct provision for it in its existing Trade Mark statute.

Trade dress is gaining relevance day by day as a result of the increasing development and attention given to intellectual property. Therefore, with the new Trade Marks Act, 1999, which took effect in September 2003 and was primarily based on the English Trade Marks Act, 1994, the notion of “Trade Dress” was acknowledged in the same way that The Lanham Act did. Trade dress is recognized in the modified Act of 1999 by the new definition of trade mark, which includes the shape of items, packaging, color combinations, or any combination thereof. Generally speaking, it was inserted in section 2 of the TM Act, 1999.

All of the key elements of the trademark provision under US law are included in the definition of trade dress. As a whole, trade dress can include the design of a book’s cover page, the visual look of a photograph, the design of shoes, and so on. The common law remedy of ‘passing off’ has been used by Indian courts to protect trade dress.

Section 9(3) of the Trade Marks Act, 1999, incorporates the shape of product registration of a trade mark. It also discusses the Doctrine of Functionality, which helps to prevent a person or party from obtaining a trade dress in the product’s functional feature. Both registered and unregistered trademarks are covered by trade dress protection.

There have been various cases where the courts have made decisions based on the product’s trade dress. It also considers trade dress to be a significant component of intellectual property. The aspects of shape, colors, and packaging have been recognized as key parts of trade dress protection by the courts.

Legal provision for Trade Dress in US

Section 43(a) of the Lanham Act defines trade dress as a depiction of a certain commodity in size, shape, color, and other characteristics. It is open to both registered and unregistered users. In terms of trade dress, the product should be distinct or easily identifiable by the general public.

The statute protects civil aviation against anybody who uses any phrase, term, symbol, or combination of symbols in reference to another person’s property, causing confusion. Versatile, descriptive, expressive, creative, and imaginative are all examples of uniqueness under US law.Standardized words cannot be protected because they are found in all products, and anyone should be able to use them. Preventing unfair practices, which are common in this type of industry, is critical.

The two most significant criteria for trade dress protection in the United States are distinctiveness and non-functionality.

The plaintiff must show that he has a protectable trade dress in a distinctive design and that the accused trade dress causes confusion in its product.

If the defendant’s trade dress isn’t registered, the plaintiff will have to prove that it isn’t functional. If it’s registered, the defendant is responsible for its functionality. Injunctive relief and monetary damages are two types of remedies that can be awarded.

Connection between India and US laws on Trade Dress

The provisions of trade dress in these two countries are remarkably similar. One distinction is that in the United States, trade clothing is registered under specified requirements, however in India, the legislation does not consider the word trade dress, so it is not protected. Certain product characteristics, such as color combination, shape, and so on, can be registered.The United States has a well-established trade dress protection statute, whereas India is still in the process of recognizing it. It will take some time for this provision to be better established and enforced. However, both countries have the same trade dress protection.

Case Laws

  1. Cadbury India Limited and Ors. Vs. Neeraj Food Products[1], 2007

The Delhi High Court ruled that the brand “JAMES BOND” was visually and phonically similar to Cadbury’s registered trademark “GEMS.” The High Court also found the packaging of Neeraj food products to be identical to that of Cadbury, and Neeraj Foods was eventually barred from utilizing the trademarks and packaging of Cadbury.

  • Gorbatschow Wodka v. John Distilleries, 2011

Gorbatschow Wodka, the Plaintiff, filed an infringement suit in the Bombay High Court, alleging that the Defendant had infringed on its intellectual property rights by adopting a misleading version of the Plaintiff’s bottle shape.


Trade dress can be protected for the shape of a soft drink bottle, the shape of furniture, and, more recently, the layout or design of a showroom. The shape of a Heinz tomato ketchup bottle ia a good example of well-known trade dress. With increasing competition, trade dress offers a new venue for securing the previously unprotected parts of business identity.

[1]142 (2007) DLT 724

Contributed by:– Nidhi Jha, Legal intern at LLL

 Certification trademarkcopyright lawHigh CourtLegal NewsTrade dress protectiontrademark

Leave a Comment

Your email address will not be published. Required fields are marked *

Chat With Us
Scroll to Top