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TRADE DRESS WARS- AN ANALYSIS ON THE IMPORTANCE OF PROTECTING TRADE DRESS IN THE LIGHT OF LANDMARK JUDGEMENTS

SURANA & SURANA > அறிவுசார் சொத்து உரிமைகள்  > TRADE DRESS WARS- AN ANALYSIS ON THE IMPORTANCE OF PROTECTING TRADE DRESS IN THE LIGHT OF LANDMARK JUDGEMENTS

TRADE DRESS WARS- AN ANALYSIS ON THE IMPORTANCE OF PROTECTING TRADE DRESS IN THE LIGHT OF LANDMARK JUDGEMENTS

Rakshana MK – Associate, IP Practice

There are various factors that contribute to consumers associating to a particular product, service or the company providing such goods and according to reports, packaging of products has the ability to influence the purchasing public.

“Things do not pass for what they are, but for what they seem. Most things are judged by their jackets.” – Baltasar Gracian[1]

Isn’t it important that these jackets, id est. the packaging of such products, which plays such an important role in business, contributing to determination of choices of customers be accorded utmost protection and the infringement or the unauthorized usage of the same be prevented?  The response here is affirmative and this piece of writing focuses on understanding the importance of such protection.

Firstly, what does a trade dress mean? According to the Webster Dictionary Trade Dress refers to “the overall image of a product used in its marketing or sales that is composed of the nonfunctional elements of its design, packaging, or labeling (as colors, package shape, or symbols)[2]”. In other words, trade dress constitutes the overall aspect of products which differentiates particular goods from those of the others including package, the color scheme and combination, the shape of the pack, etc. Such trade dress contributes to differentiation of products from competitors and directs the consumers in the process of identification and association of the goods to its manufacturers/ producers. The objective of a trade dress protection is similar to that of a trademark protection; including-

  • Acting as a safe line to prevent customers from buying or preferring a product with the belief or idea that it belongs to or originates from some other manufacturer.
  • To distinguish and ensure that one’s product is distinct from others available in the market.
  • To avoid any ambiguity or confusion in the minds of the purchasing public and members of trade and to ensure that there is no unfair use of any product or service available in the market.

Now moving on to the question, why should trade dress be protected? To perceive this, the basic psychology behind consumers choosing products ought to be understood. The visual aspects and appearance of a product is what gets registered in the minds of the public and it is a well- known fact that when two products with similar or identical packaging is placed on the same platform, it can be difficult for literate consumers too to identify its origin or source. Here comes the question as to what about consumers with average minds and imperfect recollection. Thus, being the aspect that draws consumers to a particular product, which in turn contributes to business, the protection of trade dress is no drop in the ocean but the ocean itself.

Understanding the importance of protection of a Trade Dress, the next question that arises here is that, does it fall under the scope of any particular law or legislation in India? As mentioned in the epigraph, trade dress can be referred to as the packaging of particular goods or those representing specific services. The protection of trade dress can be drawn into the scope of the Trademark Act, 1999 by interpreting Sections 2(m) and 2(zb)[3], which defines Mark as “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof” and a Trademark as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors”. The explicit inclusion of the term packaging indicates that the protection of trade dress falls under the ambit of Trademark Act and related Intellectual Property legislations.   

The judiciary has given its opinion on trade dress infringement through several landmark judgements. The following contents of this article attempts to bring out the essence of trade dress protection and prevention of infringement in the light of landmark judgments such as:

  • ITC Ltd. vs Britania Industries Ltd [November 08, 2023]
  • Britannia Industries Ltd vs ITC Ltd & Ors.[5 April, 2021]
  • Colgate Palmolive Company vs Anchor Health And Beauty Care Pvt. Ltd. [29 October, 2003]

The Trade Dress conflict between two food industry giants, pertaining to their biscuit brands have been a routine now. Britannia and ITC have been involved in various trade dress disputes and one of the most recent one- the GOOD DAY v. MOMS MAGIC.

The instant case is a solid example of how overall similarities in packaging shall be a negative factor irrespective of the names of the brands or products being completely different from each other. The crux of the case is that Brittania initiated the suit against ITC claiming that the packaging of the Sunfeast biscuit was deceptively similar to its Good Day cookies holding the potential to cause confusion in the market. An interim injunction was granted in favour of Brittania, following which an appeal was initiated by ITC. The Division Bench’s consideration of various factors is the approach that has to be noticed here- though the names of the brands are completely different from each other, with specification of the names of the house brands, the color scheme, placement of artistic aspects, the conceptual similarities incorporated, i.e., the combination of the biscuit, the image of the butter and the design adopted slid as a negative factor for ITC. Apart from this, the concept of prior usage, the possibility of confusion among consumers in a single cursory glance and the concept of holistic comparison were beneficial enough for Brittania leading to a conclusion by the Hon’ble Bench that the Defendant’s packaging was deceptively similar to the decades’ prior packaging of the Plaintiff. 

The next case involving the same parties- NUTRI CHOICE DIGESTIVE BISCUITS v. SUNFEAST FARMLITE 5 SEED DIGESTIVE BISCUITS.

Source: SCC Online[4]

In the instant case, the Delhi HC opined that “the perception, whether in the case of infringement or passing off, is to be that of a person of average intelligence and imperfect recollection – not of an idiot, or an amnesiac. The average human mind has not been particularly conditioned to observe only similarities and overlook dissimilarities.” In the previous and the most recent judgement, though the brand names were different and clearly mentioned in the packaging, the Bench’s finding was that there were striking similarities in the overall look of the packages. In contrary, in the present case, the brand names mentioned in the respective packages was a clear point of distinctiveness. The Court concluded that the only common factor between the packages was the combination of colors, thus ruled in favour of ITC thus dismissing Brittania’s plea. Following the same, Brittania chose to initiate an appeal and it is pertinent to mention here that during the course of the appeal Sunfeast had modified its packaging against which Brittania had no objection. One key takeaway from this judgement is that, adoption of prominent elements distinguishing a product packaging from another has the potential to save the case even if there exists common elements between the trade dresses. 

Looking into another landmark judgement where the Court emphasized on the fact that copying of a “get up” is an important element of passing off. The case of Colgate v. Anchor also discussed about the concept of a packaging or a trade dress acquiring secondary meaning.

Colgate initiated a suit against Anchor for usage of trade dress which was deceptively similar to theirs and the combination of colors incorporated, that is red and white in respect of identical products/ goods, targeting the same set of consumers- Toothpowder. Colgate’s contention in the instant case was that the color combination/ scheme and the shape of the can, were developed by the Plaintiff, protected and nurtured by undertaking constant efforts, thus claiming that the same had contributed to acquiring of secondary meaning or significance. On the other hand, Anchor’s contention was that the color combination or the shape cannot be monopolized and denied all submissions in relation to secondary meaning or significance.

The Delhi HC compared the cans and its packaging from a layman’s perspective and affirmed the fact that “trade dress influences the overall impression that the customer gets as to the source and origin of the goods[5]. The class of consumers who would opt for or use the products were also an important factor of consideration and ruled in favor of Colgate. This judgment is till date considered as a landmark one which widened the scope of protection of trade dress based on appearance and visual factors under IP laws. 

From the above-mentioned judgments, it is evident that trade dress is an important element in the promotion of a brand or a product which leads to identification of origin or source of goods from a particular manufacturer or service provider. The protection of the same under the scope of Intellectual Property Rights is as important as protection of any other aspect of business. As far as the judiciary is concerned, various aspects are taken into consideration before concluding if deceptive similarities or near identicalness exists between two trade dresses or packaging including period of usage, acquiring of secondary significance, distinctive factors present, the nature of business and class of consumers. From the current trends, it can be concluded that the scope for protection of Trade Dresses under IP has been increasing day by day and the same is an important step to protect the goodwill and reputation of any business. 


[1] Baltasar Gracian: ‘Things do not pass for what they are, but for what they seem. Most things are judged by their jackets.’ — The Socratic Method (socratic-method.com)

[2] https://www.merriam-webster.com/legal/trade%20dress

[3] TRADE MARKS ACT, 1999 (ipindia.gov.in)

[4] https://www.scconline.com/blog/post/2021/04/22/britannia-and-itc-in-trade-mark-row-packaging-saga-intensifies/

[5] Colgate Palmolive India Ltd. & Anr. v. Anchor Health And Beauty Care Pvt. Ltd. (theipmatters.com)

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