Trademarks and trade dress are considered part of intellectual property rights, as they are legal protections that protect the branding and overall appearance of a particular product. A trademark includes any word, symbol, logo, combination of colours, packaging, etc. It is like a sign on the goods and one uses it to distinguish his goods from others whereas trade dress is the overall appearance of the particular good. It can include the product’s shape, packaging, graphic design, and colour. Trade dress is also known as “get-up” because it refers to the overall appearance or complete look of the product, such as how someone might get up in a particular outfit. Trade dress is the extension of the trademark law. Examples of the trade dress are Coca-Cola’s contour bottle shop, McDonald’s restaurant interior design, and Apple’s minimalist store layout. Trade dress and trademark protects up to 10 years from the registration date. Characteristics of trademarks and trade dress were similar. A trademark should be distinctive, easy to spell and pronounce, short and unique, and visible to the customers, whereas a trade dress should be distinctive. In India, the trade dress and trade mark are protected under the Trade Marks Act, of 1999. It protects the whole visual appearance of the product. At the International level, Trademark and Trade dress was protected under the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights) which is part of the World Trade Organization, the Paris Convention for the Protection of Industrial Property, the Madrid Protocol and World Intellectual Property Rights. If any person uses a product with similar mark or packaging style, colour combinations in order to create confusion among customers or to deceive then he is liable for passing off. If person uses unauthorized trademark exactly then he is liable for trademark infringement.
Keywords: Trademark, Trade dress, IPR, Distinctive, overall appearance, Infringement, Passing off
INTRODUCTION
The concept of the “Mark” is ancient. The idea of “Mark” became prevalent after the Industrial Revolution when the production of goods increased all over the world. To distinguish the similar products marking of symbol became very important. At first, the Government of India introduced the Trademarks Act, of 1940 for uniform registration and later it was repealed several times. At present, the Trademarks Act, of 1999 protects the Trademark and Trade dress. Trade dress can be traced back to Roman times. To identify themselves trades used symbols or dress. For example, for surgeon barber’s red and white striped pole, Toga, tunica, Stola etc. In the US, The Lanham Act, of 1946 recognised the trade dress to protect the overall appearance of the product.
According to the Trademarks Act,1999, under section 2(1)(m), A “Mark” includes a word, brand, letter, signature, shape and packaging of goods, and a combination of colours and the mark should be represented graphically which distinguishes the goods or services from others.
By registration of the trademark, the right of proprietorship can be acquired. The main characteristics of the Trademark are distinctive and it should not be deceptive. Trademark protects the name of the product rather than an idea. Some examples of trademarks are DETTOL, MONT BLANC, ROLEX, SUNPHRAMA, THEOBROMA etc. For term of 10 years a trade mark is protected under Trademarks Act,1999. It can be renewed every ten years.
Under the Trademark Act, of 1999, there is nowhere mentioned any specific definition. It recognised the trade dress. Trade dress protects the visual appearance of the overall product which may include size, shape, packing, graphics, texture, colours etc. The Lahman Act which is also known as Trademark law amended in 1976 lastly which means any name, symbol, word or any combination used to distinguish goods or services can be registered as a trademark. Some Examples of Trade dress is the red sole of a CHRISTIAN LOUBOUTIN SHOE, THE RED TAB ON LEVIS JEANS, THE SHAPE OF COCO-COLA and VOSS BOTTLES etc. In India, both Trade dress and Trademarks are protected under the Trademarks Act, of 1999. Trade dress protection is up to 10 years and it should be renewed as long as used in trade and commerce. Infringement, passing off, penalties, registration, and remedies were under the Trademarks Act, of 1999.
At the International level, Trademark and Trade dress was protected under the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights) which is part of the World Trade Organization, the Paris Convention for the Protection of Industrial Property, the Madrid Protocol and World Intellectual Property Rights.
A Coca-Cola contour bottle was originally registered under a U.S. design patent in 1915 later after expiration it was registered as a trade dress under Trademark law. It will remain until it maintains distinctiveness.
RESEARCH METHODOLOGY
The present research paper is a Doctrinal research methodology. This research paper includes both Trademark and Trade dress comparative analysis. This research paper explains how to protect Trade dress and Trademark at both Indian and International levels i.e. treaties. This research explains the case laws related to both trade dress and trademark. The sources of Information from newspapers, journals, books and various websites.
LITERATURE REVIEW
The concept of Trademark and Trade dress has been discussed widely. Trademark and Trade dress are considered as part of Intellectual Property Rights. Trademark and Trade dress protects the logo, brand, combination of colours, packaging and overall appearance of particular product. The only difference between trademark and trade dress that trade dress protects whole appearance of the product where trademark protects logo, brand, name, words or images. In India they were protected under Trademarks Act,1999. Trade mark protected in different countries by different law based upon their jurisdictions. There are treaties like Madrid Protocol, Trips, World Intellectual Property organisation, Trademark law treaty to protect trademark internationally. In India, passing off and infringement of trademark and trade dress protected under Trademarks Act, 1999.
Difference between trademark and Trade dress
Trademarks were simple and narrow. They may be colour, logo, brand, words, or images whereas Trade dress is very complex and it is the whole visual appearance of the product. It is also known as “get-up”. i.e. how a person gets up for something similarly the appearance of the whole product. The elements of the trade dress are shape, colour, Three-dimensional configuration, and packaging.
Both trade dress and trademark can be registered in the US patent office but registration of trade dress is quite difficult. The trade dress needs to fill certain requirements such as being distinctive, non -functional, used in commerce and it should be unique. Both registered and unregistered trade dress can be protected.
There was a case which differentiated trade dress and trademark Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd, in this case, was held where the colour combination (red and white) which is a key element of the trade dress is different from the registered trademark. Though it may not be trademark infringement, it is trade dress infringement where trade dress constitutes the overall appearance and feel of the product. The most important argument was that a similar colour could lead confusion to among customers even though brand names were different.
TRADEMARK AND TRADE DRESS PROTECTION
- International Treaties
In Trip’s agreement there was no mention of trade dress and its protection the definition of the Trademark was very vast which includes the protection of three-dimensional products and packaging which are distinctive to other products and services.
Trademark law treaty which was adopted in 1994, its main aim is to harmonize trademark registration procedures across countries. At the International level, the Madrid protocol brought significant changes in the registration of trademarks. The Madrid Protocol allows the owners to apply for protection through a single application in different countries. The fee should be paid at once in one currency. Under Madrid protocol, three-dimensional shapes are registrable as trademarks.
- Trade Dress and Trademark Protection in the US
The first which has been introduce protection for trade dress is US under the Lanham Act, of 1946. The important provision of this Act is section 43(a) which prohibits misleading representation and false designation of the product. Trade dress should acquire secondary meaning through distinctiveness. It should be used in commerce and should be non-functional. In the landmark case of Wal-Mar stores Inc. V. Samara brothers, it was held that acquired secondary meaning. In the US, there were clear rules, registration and enforcement of trade dress. Trademarks also protected under the Lanham Act only. At U.S. Patent and Trademark Office, Trade dress can be registered as Trademark. Mostly Trade dress can be protected under common law without registration.
- Trade mark and Trade dress protection in India
In India Trademark is protected under the Trademarks Act,1999. Section 2 defines the trademark. According to the Trademarks Act,1999, under section 2(1)(m), A “Mark” includes a word, brand, letter, signature, shape and packaging of goods, and combination of colours and the mark should be represented graphically which distinguishes the goods or services from others. Trade dress is not specifically defined anywhere in the Trademarks Act, of 1999 but in the definition of the trademark, it includes the graphical representation, packaging and are the elements of the trade dress. In 2003 the Indian courts recognised the concept of trade dress. The elements in the trademark which are there were similar to the meaning of trade dress in US.
- Trademark and Trade dress protection in Russia
In Russia, Trademark and industrial designs were protected. Trademarks can include designs, combinations of colours, and combinations of elements as long as they are distinctive. Trade dress is protected either under the trademark or industrial designs. In part 4 of the Russian Civil Code or Legislative law there was no definition of the Trade dress. The whole appearance of the product is protected under the Trademark law or Industrial designs.
- Trademark and Trade dress protection in China
In China, trade dress is protected under the Anti-Unfair Competition law. It offers protection to the packaging, decoration or appearance of the product. It protects the same elements that other jurisdictions protect. In China under the “Trademark Law of the People’s Republic of China”, trademarks were protected. In China, to protect the trademark, it should be registered.
ENFORCEMENT OF TRADEMARK AND TRADE DRESS
Enforcement of Trademark and Trade dress involves protecting the brand of the company preventing the customers from being misled and taking legal actions to prevent others from using it confusingly. Identifying infringement and passing off of trademark and trade dress and preventing the owners.
- Passing off and Infringement
In the Trade and Merchandise Marks Act, of 1958 the concept of passing off wasn’t recognised and it is based on the common law. It is like a tort. In the Trademarks Act,1999, it was not defined. Section 27(2) of the Trademarks Act, 1999 refers to action against any person for passing off goods.
Trade Mark is also protected under the Trademarks Act, of 1999. The elements of passing off are deception, the likelihood of damaging the reputation of the plaintiff. The plaintiff must prove that the defendant used the mark to deceive or to cause confusion to customers. There should be malafide intention, or misrepresentation by the defendant. Under section 135, remedies for passing off are available. Even though a trademark is not registered it can be protected under common law remedy. Intention to deceive the defendant is very important in passing off. If anyone used similar appearance or look and feel of product likely to confuse customers then it comes trade dress passing off.
In a claim for trade dress infringement, the plaintiff must prove the distinctiveness, secondary meaning and non-functional. It should cause confusion to customers. Passing off of trade dress is protected under the Trademarks Act,1999. under section 29 of the Trademarks Act,1999, trademark Infringement was defined. In trademark infringement, the registration of the goods or product is necessary. No action will be taken if it is unregistered trade mark under section 27 of the Trademarks Act,1999. If the defendant uses, advertising goods and services, import and export of gods, using the labelling or packaging of the goods, using for an unfair advantage or with made intentions. The action for infringement is a statutory remedy conferred on a registered proprietor. Here the plaintiff needs to show the defendant’s mark is so close either phonetically or in visually. No other evidence is required to show plaintiff’s rights are infringed. To prove the infringement there is no need to keep them side by side. If the mark is similar then it is enough to prove.
One of the landmark cases of international infringements is Vaastu and Veda – VEDA Gmbh v. Mr. Nicholad Silverstone. In this case, the name “VEDA” has been appropriated by a German firm and obtained a trademark over it. The firm VEDA GmbH developed software and has obtained exclusive rights over the name and registered it in many countries. After few months later another German firm patented “vaastu” which is the aesthetic culture of India. This matter came before the World Intellectual Property Organisation through the web address of www.veda.com. Veda GmbH approached the WIPO Arbitration and Mediation Centre where it was held that the domain name was registered in bad faith and ordered to give veda.com to Veda GmbH.
Ferrero Spa &Nr V. M/S Ruchi International &Anr, this case was regarding the packaging of chocolate between “Golden Passion” & “Ferrero Rocher”. The Golden Passion chocolate packaging was similar to Ferrero Rocher which has goodwill in the market. The Delhi High Court held using similar packaging is trade dress infringement which caused loss to the plaintiff and ordered a permanent injunction with compensation of 10 lakhs.
In the case of Merwans Confectioners Pvt Ltd V M/s v Sugar Street & Ors, in trade dress jurisprudence, is a landmark judgement in India. In this case, the plaintiff claimed that they had trade dress with “Merwans”. The plaintiff entered into a franchisee agreement which later was cancelled. The issue was defendants were continuing the use of trade dress. It was held, After the completion of the agreement the applicant’s items were returned by the defendant. In a Franchise Agreement there is no clause prohibiting from carrying on the same business. Plaintiff claimed that the defendants used the same trade dress and décor and contended the passing off and causing delusional to customers. It was unfounded. It was also held that the defendant has no connection with the plaintiff’s products. It was held that trade dress is a visual appearance of the product including its packaging and design. It is ruled that purely decorative features cannot be granted exclusive rights under trade dress law.
Remedies for Trade mark and Trade dress Infringement & Passing off
Section 29 defines the infringement of a trademark. The remedies for infringement & passing off are Injunctions, Damages, and Accounting of Profits. In some cases, Criminal penalties are imposed. It depends on the jurisdiction. Section 103 of Trademarks Act,1999, Outlining Criminal Penalties. Under this section the imprisonment is from six months to an extension of three years and fine from fifty thousand to which may extend up to Two lakh rupees for infringing trademark rights.
SUGGESTIONS
- Trade dress should be defined. It can be understood what exactly trade dress is and the difference between trade dress and trademark can be understood.
- There are lot of legal disputes regarding Trade dress around the world so it would be better if separate Acts were implemented for Trade Dress protection.
- To avoid the passing off and Infringement the stricter punishments are required. So, the trade dress can protect.
- Due to lack of awareness the people don’t know how to register and protect the Trade Dress and Trademark. So, the awareness and campaign programs should be conducted.
CONCLUSION
The concept of Trademark and Trade dress has been discussed widely. Trademark and Trade dress are considered as part of Intellectual Property Rights. Trademark protects the words, logo, brand, name while Trade dress protects overall appearance of the product. Trade dress was nowhere defined. According to the Trademarks Act,1999, under section 2(1)(m), A “Mark” includes a word, brand, letter, signature, shape and packaging of goods, and combination of colours and the mark should be represented graphically which distinguishes the goods or services from others. In this definition the elements of trade dress included. The elements which are similar to Lahman act of US. There are international treaties to protect the trademark and trade dress. Trademark and Trade dress are protected up to 10 years and it can be renewed every 10 years. There are international treaties such as TRIPS, WIPO, Madrid agreement, Trademark law treaty. In India, passing off, Infringement of trademark protected under Trademark Act,1999. Remedies for infringement, passing off of trademark and trade dress are injunction, compensation and Accounting of profits.