Introduction
With the advent of novel methods of commercializing a brand, unconventional aspects like aesthetics and look and feel of a product have become important in creating segmentation in the market. The interplay of various intellectual property rights associated with a product have raised questions on the ambit of protect-ability of such features individually and in combination with other features, and the Courts in India have time and again expanded their interpretation in relation to the same. One such arena is the protect-ability of the elements of a product which create an image or appearance of a product in the minds of a consumer, including but not limited to appearance, shape, design and packaging, together acting as source-identifier for such product. For e.g. the shape of a shampoo bottle, ornamental features of a mobile phone etc. In common parlance, such composite image of a product is denoted as "trade-dress".
Indian Law on "Trade Dress"
Indian law does not recognize the concept of trade dress specifically unlike the United States where the concept of trade dress has been provided recognition under the Lanham Act, 1946. However, Section 2(1)(m) of the Trade Marks Act, 1999 ("Act") defines a "mark" to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof and therefore it can be construed that, the Act indirectly provides for the protection of trade-dress to include shape, packaging or combination of colors or any combination thereof.
Indian courts, considering the growing importance of trade dress of a product as a source identifier, have afforded protection to trade dress. Recently, the Hon'ble High Court of Delhi in Devagiri Farms Private Limited v. Mr. Sanjay Kapur & Another (2016(65)PTC349(Del) elaborated on various legal principles which are to be kept in mind while addressing a trade dress infringement issue.
Facts of Devagiri Farms Private Limited's case
The respondents Sanjay Kapur and Naina Kapur sell tea under the brand name "San-cha" for over 30 years, which they pack in a soft paper packet shaped as a rectangular cuboid the package being slipped into a fabric sleeve and tied at the mouth by a traditional drawstring/dori. The appellant Devagiri Farms sells tea under the trademark BAGAN. The grievance is to the fabric sleeve(s) used by the appellant. An ad interim injunction has been granted in favour of Kapurs and against the appellant. The counsel for the appellants had contended mainly on the grounds that the packing that the Kapurs seek to restrain is generic and has no distinctive value qua its products; (ii) there are various distinguishing factors in the style and get up of the two brands and hence the consumers are able to distinguish the same, Further, it was urged that pouches of the defendant bear the label 'Bagan Fresh' in a very conspicuous manner dispelling any apprehension of any customer or consumer being deceived. They further argued that logo of both the parties displayed on the packages differ and there is a marked difference in colour scheme of both the brands.
The court put to rest the case by upholding the grant of injunction by the single judge while inter alia observing that (i) Firstly "It is the overall get up and similarity which has to be seen and not the minor variations because it is similarity which strikes and not the dissimilarities which distinguish when an ordinary person recollects an object seen in the past"; (ii) Secondly, in response to the appellant's argument that logo of both the parties displayed on the packages differ and there is a marked difference in colour scheme of both the brands, the court observed that "There is no case law cited, and we know of none that merely because a trademark is displayed on the packaging material, notwithstanding a striking similarity in the packaging material there would be no likelihood of deception whilst it may be true that in issues concerning trade dress the Courts have considered the display of a trademark, but it is only one of the various factors put in the weighing basket. "
Conclusion
With the rising competitiveness, trade dress of a product can be an important instrument to tap markets and provide further distinctiveness to a product. This judgment can be seen as providing a precedential value and paving a way for wider protection in trade dress infringement cases.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.