Trade Dress – An Indian Perspective

The Concept

The concept of trade dress is in the development stage in India. Its meaning has now begun to expand, beyond the traditional forms of trade dress to the more nontraditional ones like cover design of a magazine, design of a door knob, appearance of a water meter or a lamp, design of a sports shoe, distinctive performing style of a rock music group, etc. As such, it comprises non­traditional trademarks based upon sound, texture, three­ dimensional shape, taste and smell and the following: color marks, sound marks, smell / scent / olfactory marks, shape marks, moving Image marks, holograms, gesture marks, taste marks / gustatory marks, feel marks / tactile marks, celebrity marks, digital marks. The statute, however, has yet to specifically recognize these forms.

 

Trademark protection of Trade Dress: Registrability of Trade Dress

Trade dress is registrable as a trademark by virtue of the following provisions of the Trade Marks Act, 1999:

  1. Section 2(zb) of the Trade Marks Act, 1999 defines “trade mark” as a mark capable of being represented graphically and which is capable of distinguishing the goods and services of one person from those of others and may include shape of goods, their packaging and combination of colors.
  2. In Section 2(q), the term “package” has been defined to include any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork.

Unique statutory or regulatory requirements that must be met in order to obtain registration of trade dress as a trademark are:

  1. It must be capable of being represented graphically.
  2. It must be capable of distinguishing the goods or services of one person from those of others.
  3. It must be used or proposed to be used in relation to goods or services.
  4. The use must be of a printed or other visual representation of the mark.
  5. Such use in relation to goods must be upon, or in any physical or in any other relation whatsoever to the goods, and in relation to services must be use of the mark as or as part of any statement about the availability, provision or performance of such services.
  6.  The use must be for the purpose of indicating a connection in the course of trade between the goods or services and some person having the right to use the mark, either as proprietor or by way of permitted user, as the case may be.

 

Types of Trade Dress

 

redandwhiteA. Product Label

Example of product label trade dress that is registered as a trademark is: Red & White (Application No: 1669589)

 

 

aeroplane

B. Product Wrapper

Example of product wrapper trade dress that is registered as a trademark is: Aeroplane 1121(Application No: 1550199)

 

rajnigandha

 

C. Product Container

Example of product container trade dress that is registered as a trademark is: Rajnigandha (Application No: 1607272)

 

tropicana

greygoose

 

D. Product Shape / Configuration

Example of product shape / configuration trade dress that is registered as a trademark is: Grey Goose (Application No: 1678280), Tropicana Twister (Application No: 1656287)

 

E. Single Colour

Single color label trade dress is not registrable as a trademark. Only a combination of colors can be registered as a trademark. A single color cannot be registered as a trademark [Section 2(1)(m)] primarily because a color lacks innate uniqueness and registration of a single color as a trademark could lead to the exhaustion of that color in a particular trade. For instance, if Cadbury registered the color purple as its trademark it could lead to the depletion of the color from that particular trade. A trademark may be limited wholly or in part to any combination of colors, and any such limitation shall be taken into consideration by the tribunal having to decide on the distinctive character of the trademark. So far as a trademark is registered without limitation of color, it shall be deemed to be registered for all colors.

kontron

 

F. Colour Combination

Example of a colour combination trade dress that is registered as a trademark is: Kontron-Ball with Device (Application No: 1696239)

 

G. Point of Sale Materials

Point of sale materials (e.g., banners, posters, shelf displays) trade dress are registrable as a trademark under the Trade Marks Act, 1999

Example of a point of a sale materials trade dress that is registered as a trademark is: Rab ne Bana Di Jodi (Application No: 1744356)

rabne

 

H. Exterior Building Design

Exterior building design trade dress is not registrable as a trademark. While a generic idea or concept cannot be registered as a trade dress, a combination of unique features may be registrable. For example, if the configuration of a building as well as its unique color combination features make the building unique and distinctive, the same shall be registrable.

 

bp

I. Interior Building Design

Interior building design trade dress is registrable as a trademark. However, a high threshold of evidence will be required to show distinctiveness.

Example of a interior building design trade dress that is registered as a trademark is: Building Design (Application No: 1236311)

 

J. Other Types

A trademark ordinarily comprises a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or any combination thereof, and a general perception about it is that it is a static, dimensional word, design or logo used to identify a product or service.

The concept of non­traditional trademarks is an innovative concept as it introduces an entirely new family of marks discrete and distinct from the traditional trademarks. Non­traditional trademarks, comprise different types of trademarks which do not belong to the conventional category of words, numerals, pictorial and logo marks, or any combination of these marks, and yet serve the essential purpose of a trademark by identifying the products or services as being from a particular undertaking. Non­conventional trademarks may therefore be visible signs (e.g., colors, shapes, moving images, holograms), or non­visible signs (eg: sounds, scents, tastes).

As such, non­traditional trademarks comprise marks based upon sound, texture, three­dimensional shape, taste and smell and the following:
1. color marks;
2. sound marks;
3. smell/scent/olfactory marks;
4. shape marks;
5. moving Image marks;
6. holograms;
7. gesture marks;
8. taste marks/gustatory marks;
9. feel marks/tactile marks;
10. celebrity marks;
11. digital marks;
12. trade dress.

These trademarks are exceptional and unique in nature because unlike their traditional counterparts, they are sometimes non­ocular (e.g., sound, smell, feel and taste); some are not static (e.g., moving image marks and digital marks); and others such as gestures and holograms have revolutionized both the fields of trademark law and marketing.

The Indian Trade Marks Act is yet to incorporate provisions involving the more non­traditional forms of trade dress.

Examples of these other types of trade dress that are registered as trademarks are: (Application No 1270406). The mark consists of the sound of a human voice yodeling the word YAHOO.

About This Author

Madhusudan is an Intellectual Property Attorney at Prometheus who is actively involved in enforcement actions such as sending Cease and Desist - cum - Demand letters, and taking suitable steps at various fora such as the Trademarks Office, Copyright Board, the IPAB (Intellectual Property Appellate Board), NIXI (National Internet Exchange of India), and the CAT (Cyber Appellate Tribunal).

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