Wednesday, September 17, 2008


Trade Mark is a badge of origin, of the quality of the products, and thus helps the public in removing any confusion in their minds as regards to the source of the products. In contemporary times there has been an expansion in the scope of registered marks. Trade dress is a part of this expansion.

In India with the liberalization of the economy and India opening its doors on investment in any every sector, numerous foreign brands in FMCG sector are entering the Indian market. Therefore to distinguish goods from the competition, FMCG companies invest heavily not only on devising brand names but also on creating trade dress or packaging to act as identifiers.


Products have a personality. A key element of a products personality or brand image is its packaging. Trade dress consists not of words or symbols but of a products packaging.[1] In recent years the concept of trade dress has been expanded to encompass the design of a product.[2]

Trade dress involves the total image of a product and may include features such as shape, colour or colour combinations, textures, graphics or even particular sales techniques.[3]

Trade dress is of great importance as illiterate people get confused if there exists two products with similar trade dress. Illiterate people look at the colour, shape, image, textures etc of the product when they purchase it.

In the United Kingdom Trade dress is protected under the law of Passing Off. Passing Off is a common law remedy for protecting unregistered Trademarks. In the United States of America they can be registered under Section 2 of the Lanham Act and even without registration, a non functional, distinctive trade dress is protected under Section 43 (a) of the Lanham Act. The requisite conditions for registering a trade dress with the U.S Patent and Trademarks Office are that it should be -

1)      inherently  distinctive or has acquired secondary meaning and

2)      is non functional.

In India the concept of trade dress is encompassed in the broad definition of Trade Mark.  Under Section 2(m) of the Trademarks Act, 1999

mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.


The definition above includes shape of goods packaging or combination of colours or any combination which are those elements which constitute the total image of a good or trade dress.


A landmark judgement of importance in India which deals with this concept in detail is that of Colgate Palmolive Co. v. Anchor Health and Beauty Care[4]. In this matter, an ad interim injunction restraining defendant(Anchor Health and Beauty Care)  from use of trade dress and colour combination similar to that of plaintiff (i.e a red and white colour combination) was applied for. The Court held that the visual impression of product gives overall impression to customer as to origin of goods and if first glance of article gives impression as to deceptive similarities in respect of colour combination, getup etc. it is a case of confusion and that such similarities amounts to passing off one's own goods as those of another with a view to encash upon goodwill and reputation of latter.[5]


It was held by the Court that an ordinary consumer gets an overall impression of source/ origin of goods from colour combination, shape of the container, packaging etc. The court also opined that no party can have monopoly over a particular colour but if there is a substantial reproduction of the colour combination in the similar goods either on the container or packaging which over a period of time has been imprinted upon the minds of consumers, it is certainly liable to cause confusion but also dilution of distinctiveness of colour combinations.

In another matter of S.V.S. Oil Mills vs.S.V. N. Agro-refineries & another[6], the plaintiff firm was manufacturing and marketing various kinds of refined edible oils under the registered trade mark "SVS" with inverted triangle and a distinctive colour scheme and get up of red and yellow. The defendant, an erstwhile partner of plaintiff firm constituted another firm, which was in the same business, using same trademark "SVS" but with a different colour scheme, the Court held that,

 "the material form, colour and getup of the wrapper or label or container of the articles are the physical means of expression and the design of the container or the label is of great significance as it is meant to catch the attention of any purchaser. The design of the label would include not only the trademark, but also the colour scheme and getup of the wrapper or container as well. It is well known that there are several eye-catching designs and the customers who are familiar with the articles would invariably be guided and attracted to purchase goods by the sight of label. There is a power behind the design of the label as the customers have the intuitive instinct to select the goods by the design, colour, getup and the trade name and if the goods of same kind, with the same colour scheme and getup in the labels belonging to two manufacturers with phonetic similarity in trade names are exhibited or offered for sale, a normal consumer of average intelligence with imperfect memory would take one article as belonging to other".

Thus from the above it is apparent that even though there exists no specific provision as regards trade dress, protection for the same is provided for in our country  by the filing of  a suit for passing off or a suit  for the  infringement of trademark.


Though this concept is a new one, it is a major part in determining the commercial success of a business enterprise and therefore its protection is of the utmost importance.

[1] Two Pesos vs. Taco Cabana Inc., 505 U.S. 763(1992)

[2] Wal-Mart Stores Inc. vs. Samara Bros. Inc., 120 S.Ct.1339(2000)

[3] John .H. Howard Co. vs. Clarke Checks Inc., 711 F2d 966 (11th in  1983)

[4] 2003(27)PTC478(Del)

[5] Ibid

[6] 2004 (29) PTC 548 (Mad) (DB)]

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