Trade Dress Protection: Laws and Its Relevance

Trade dress protection and its relevance in business environments

In competitive business environments, companies are required to ensure that every single component of a product, including its packaging, taste, appearance, and look and feel can contribute and sustain the brand’s commercial viability and growth. The need for introducing creative and unique methods of packaging or configuring a product in an innovative manner has snowballed into the rise of trade dress protection. A trade dress can be defined as the outer, visual appearance of a product’s packaging or the product itself which indicates the source of the product to its customers. The legal protection that subsists on such trade dresses has time and again immensely benefited several industries. More specifically, several market research studies have noted that the introduction of trade dress protection has significantly benefited and furthered the food and beverage industry. Trade dress carries great significance in commercial environments. For one, when a trade dress is exclusive to a particular brand, consumers may interlink its external appearance to the company and the quality of its products. Thus, the trade dress here acts as a metonym for the brand. In order to reap the benefits of having a unique trade dress, it is imperative to legally protect it.  Legally protecting a trade dress may restrict unauthorized parties from duplicating the trade dress and commercially exploiting it. Additionally, a brand can also license a trade dress in order to obtain monetary advantages.

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 Legal prerequisites for protecting a trade dress

Most commonly, there are two pre-requisite factors that a trade dress must satisfy in order to obtain legal protection. These pre-requisite factors include distinctiveness and non-functionality of the trade dress.

• Distinctiveness

A trade dress is considered to be inherently distinctive and liable of legal protection if it consists of a unique pattern or a mixture of patterns that may help consumers identify the origin of the product. In other words, the external appearance or characteristics of the product or service must be exclusive to a brand in a manner that would help the consumers distinguish one brand from another.

• Non-functionality

In order to legally protect a trade dress, it is crucial for the trade dress to not have a functional purpose. This implies that the configuration and arrangement of shapes, designs, colors, materials that form the trade dress will not be protected if it serves a utilitarian purpose. Thus, the sole purpose of a trade dress is to simply help a consumer interlink a brand’s identity to the trade dress.

Trade dress laws in India, United States, and the United Kingdom

• Trade dress laws in India

Currently, IP laws in India do not facilitate the protection of trade dresses per se. However, trade dresses and their protection may fall under the ambit of the Trade Marks Act, 1999. The Act, to some extent, protects the “shape of goods” which may include trade dresses as well. Moreover, section 2 (zb) of the Act explicitly states that a trademark may represent a mark that is capable of being represented graphically and is capable of distinguishing the goods or services of one brand from another brand. Consumers can distinguish one brand from another and trace a product’s origin with the help of trade dresses. Therefore, trade dresses fulfill the criteria that are mentioned in section 2(zb). Furthermore, section 2(1)(q) of the Trade Marks Act mentions that legal protection may subsist on a ‘package’ which may include a case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper, and a cork. Thus, it can be implied that the Trade Marks Act can be used to protect trade dresses in India.

• Trade dress laws in the US and the UK

In the United States, trade dresses can be protected by the Lanham Act. The Lanham Act, also known as the Trademark Act of 1946 is the US Federal Statute that regulates trademarks, service marks, and unfair competition. Section 43(a) of the Lanham Act specifically deals with the statutory remedies that are available for false advertising. Section 43(a) states that:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which

(A) is likely to cause confusion, or to cause mistake, or to deceive […] as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) In commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

Shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act

According to this statute, if an infringer illegally copies a particular trade dress, the owner of the trade dress can take legal actions against the infringer. It is pertinent to note that it is not mandatory to register a trade dress as per the Lanham Act in order to legally protect it. However, it would be preferable to register the trade dress with the United States Patent and Trademark Office (USPTO). In the UK, a trade dress is protected by a common remedy called the ‘law of passing off’. Typically, the tort of passing off can protect the goodwill of a particular brand or product from misrepresentation by unauthorized parties. The law of passing off can be used to protect the external appearance, look and feel of a product as well as any marks that are related to a particular brand.

Amidst increasing competitiveness among brands in similar domains, a trade dress may play a significant role in helping consumers identify the origin and quality of a particular product. However, a trade dress that is generic with a utilitarian purpose cannot be legally protected. While several countries have laws that specifically protect trade dresses, in India, the Trade Marks Act facilitates the protection of trade dresses. Moreover, it is preferable to legally protect a trade dress in order to restrict unauthorized entities from duplicating or commercially exploiting it.

Author: Sanjana, a BBA LLB student of  Symbiosis Law School (Hyderabad), in case of any queries please contact/write back to IP And Legal Filings at  support@ipandlegalfilings.com.