Trade Dress as a form of Intellectual Property

Introduction

Have you ever bought a product because of its overall appealing appearance and feel? Turns out, there exists intellectual property protection for that too! Trade dress refers to the total visual appearance of a product or service. It comprises of elements that contribute to the image of a specific product or service. These elements include a particular colour or a combination of colours, shape, size, graphic designs, packaging, etc. Trade dress protection originates from Section 43(a) the Lanham Act, which is the trademark legislation prevalent in the USA. Although the Indian Trademark legislation does not expressly talk about trade dress protection, the definitions of the terms ‘mark’, ‘trademark’ and ‘packaging’ include all elements comprising a trade dress.

The traditional take on a trade dress is that it is “the manner in which a product was dressed up to go to market with a label, package, display card, and similar packaging elements.” Think about the attractive packaging of Ferrero Rocher. The moment you see the golden wrapper, you know it is Ferrero Rocher without actually reading the label. That is the whole idea behind trade dress- to act as a distinctive source identifier. Although trademarks also perform the same function, they protect particular features such as the logo, phrase or design. On the other hand, trade dress comprises of the complete features which contribute to the uniqueness of appearance of the product. However, the requirements for registering trade dress remain the same as those for trademarks. Besides products, the appearance and décor of a particular place can also avail trade dress protection. For example, Microsoft and Apple have sought trade dress protection for their distinctive retail store layout. In the digital era, trade dress protection is not restricted to products and services alone. The ‘look and feel’ of websites, applications and video games are also eligible for trade dress protection.

Essentials For A Trade Dress Infringement Claim

Let us analyse the various layers of a trade dress infringement claim through a hypothetical scenario. ABC Pvt Ltd and XYZ Pvt Ltd are food production companies. ABC is famous for its brand of biscuits called Emerald which comes in a heart-shaped box with bright-green packaging, with ‘Emerald’ written in a prominent font. The overall packaging of the product was considered to be unique for biscuits at that time. 6 years later, XYZ launched its own brand of biscuits called Clover, which also came in bright-green coloured, heart-box packaging, and ‘Clover’ written in a similar font as ‘Emerald’. How will ABC prove that Clover infringes Emerald’s trade dress?

1. Distinctiveness of the trade dress

Distinctiveness of the trade dress implies that it is easily recognised by the consumers. While determining the distinctiveness of the trade dress, one has to consider the product in its entirety instead of focusing on individual elements. This distinctiveness can either be inherent or acquired through secondary meaning. While considering if it is inherently distinctive, elements like the combination of colours, shape, packaging etc. play a key role. On the other hand, if the particular product has been in the market for a long time, consumers tend to associate the elements of the trade dress with that particular product. This is called acquired distinctiveness.

In our example, ABC has to prove that Emerald’s trade dress is distinctive either inherently or through secondary meaning.

2. The trade dress is non-functional in nature

Non-functionality is an added requirement under the American trademark law. In the past, functionality has been considered in two aspects: De Facto and De Jure.

• De Facto: The trade dress of the product performs the intended function, like a bottle of any design serves the function of holding fluids.

• De Jure: The trade dress "is essential to the use or purpose of the article or affects the cost or quality of the article".[i] If the shape of the product is used simply because “it works better” [ii]in that particular shape, it serves de jure functionality. It comes into the picture when the competitors of the product in question must use the trade dress to compete.[iii] The exclusive use of the trade dress by one company will act as a disadvantage for the competitors. For example, say that the rectangular-design packaging of a product is an important element of its trade dress, and there are very few ways in which the product in question can be packed. In such cases, the trade dress will still be considered to be functional and thus, not acceptable.

The modern view on functionality originates from the decision in Re Morton-Norwich Products, Inc.[iv], as per which the following factors must be regarded while determining functionality:

i. The existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;

ii. Advertising by the applicant that touts the utilitarian advantages of the design;

iii. Facts pertaining to the availability of alternative designs; and

iv. Facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

In our case, ABC will have to prove that Emerald’s unique packaging does not serve any utility, other than acting as a source identifier. It does not affect the quality of the biscuits in any way. Additionally, they have to show how Emerald’s competitors can easily opt for alternate shapes for packaging.

3. There arises a likelihood of confusion

If there is a possibility that an ordinary buyer will get confused regarding the origin or connection between two different products due to their similar visual appearance, it is said that there exists a likelihood of confusion between the products. It is not necessary to show that actual confusion has taken place; mere probability is sufficient. While examining this probability, the following aspects are studied:

• the strength of the trade dress,

• the labelling and other such elements that an ordinary purchaser may observe,

• the degree of similarity between the products,

• the infringing party’s intention behind using the similar trade dress,

• the marketing channels used to advertise the two products, etc.

In our example, Clover entered the market 6 years later than Emerald. During the said time, consumers had already started to associate the unique packaging with Emerald. With Clover entering the market, there exists a likelihood of confusion between the two products.

Now let us look at interesting instances where trade dress protection was claimed for the’ look and feel’ of products, a place and even a video game.

Instances of Trade Dress Infringement

1. Colgate Palmolive & Co v Anchor Health and Beauty Care Pvt Ltd [v]

Since 1951, Colgate had been selling tooth powder in a can with a distinctive colour combination (red and white with splashes of yellow). In 2002, Anchor came out with a look-alike version for a similar range of products. Colgate alleged that Anchor’s intention behind this action was to encash upon their reputation and goodwill. On the other hand, Anchor claimed that since the essential features of the label marks is the word mark and not the colour combination or overall get up, and as the two trademarks are entirely different, the plaintiffs cannot seek protection for the colour combination of the label. However, the Delhi High Court ruled that Colgate’s product had been in the market since 1951, and due to its distinctive colour combination, shape and texture, had acquired secondary meaning. The likelihood of confusion between the two products existed even though the trademarks ‘Colgate’ and ‘Anchor’ were different, as illiterate consumers will identify the products with the colour combination and not the English wordmarks. The Court concluded that:

Trade dress is the soul for identification of the goods as to its source and origin and can cause confusion in the minds of unwary customers, particularly those who have been using the product over a long period.

2. Two Pesos, Inc. v. Taco Cabana, Inc [vi]

Taco Cabana was an operator of a chain of Mexican restaurants. It sued Two Pesos, Inc., a similar chain, for trade dress infringement under Sec 43(a) of the Lanham Act. The District Court instructed the jury that Taco Cabana's trade dress was protected if it either was inherently distinctive (not merely descriptive) or had acquired a secondary meaning. The Court ruled in favour of Taco Cabana after the jury found, among other things, the trade dress was inherently distinctive but had not acquired a secondary meaning. Two Pesos appealed on the ground that “a finding of no secondary meaning contradicted a finding of inherent distinctiveness.” But the Court of Appeals rejected this argument. It was held that proof of secondary meaning was not required to prevail on a claim where the trade dress at issue was inherently distinctive.

3. Wal-Mart Stores, Inc. v. Samara Bros., Inc. [vii]

Samara Brothers Inc. designed and manufactured a children's clothing line. Wal-Mart Stores Inc. contracted with a supplier to manufacture outfits based on photographs of the Samara garments. When Samara came to know that Wal-Mart and other retailers were selling the outfits, it brought an action for infringement of unregistered trade dress under Sec 43(a) of the Lanham Act. When the jury decided in favour of Samara, Wal-Mart renewed a motion for judgment as a matter of law, claiming that there was insufficient evidence to show that Samara's clothing designs is eligible for trade dress protection. The District Court denied this motion and later, the Second Circuit Court of Appeals affirmed the denial. The U.S Supreme Court reversed and remanded the decision and was of the view that:

“In an action brought under Sec 43(a) for infringement of unregistered trade dress, a product's design is distinctive, and therefore protectable, only upon a showing of secondary meaning. In the case of product design, as in the case of colour, consumer predisposition to equate the feature with the source does not exist. Consumers are aware of the reality that, almost invariably, even the most unusual of product designs–such as a cocktail shaker shaped like a penguin–is intended not to identify the source, but to render the product itself more useful or more appealing.”

Thus, although the decision in the Two Pesos case established that trade dress can be inherently distinctive, it did not establish that product-design trade dress can also be inherently distinctive.

4. Tetris Holding, LLC v. Xio Interactive, Inc. [viii]

In 1984, Alexey Pajitnov created a video game called Tetris, which later went on to become a massive hit. Tetris Holding LLC was formed by Pajitnov with Henk Rogers, and the company owned the copyrights to the visual expression of the game. Years later, Xio Interactive developed a game named Mino, which was “strikingly similar” to Tetris. In 2009, Tetris Holding brought a suit against Xio claiming copyright and trade dress infringement among other claims. Regarding trade dress infringement, Tetris Holding had to prove that:

• the trade dress is distinctive in that it has acquired secondary meaning;

• the trade dress is not functional, and

• there is a likelihood that consumers will confuse Mino with Tetris.

The trade dress was described as “brightly-coloured Tetriminos formed by four equally-sized, delineated blocks, and long vertical rectangle playfield, which is higher than wide.” Xio alleged that the trade dress was merely functional. However, the Court ruled in favour of Tetris Holdings and held:

The colour and style of the pieces are not functional. These elements are not mandated by the use or purpose of the game because numerous other choices are available to a game designer without affecting the functionality of the game.

Conclusion

As consumers, we are all too familiar with the importance of trade dress of products and services. Courts in India have not shied away from addressing the issue of trade dress infringement in various cases. That being said, the jurisprudence around the concept is still developing in our country and will continue to do so as companies go on to realise the benefits of trade dress protection.

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References:

[i] Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850, n.10, 214 USPQ 1, 4, n.10 (1982)). [ii] In Re R.M. Smith, Inc., et al, 734 F.2d 1482 (Fed. Cir. 1984) [iii] Trade Dress: Everything You Need to Know, UPCOUNSEL (October 30, 2020), https://www.upcounsel.com/trade-dress [iv] In Re Morton-Norwich Prods., 671 F.2d 1332 (C.C.P.A. 1982) [v] Colgate Palmolive & Co v Anchor Health and Beauty Care Pvt Ltd, 2003 VIIIAD Delhi 228 [vi] Two Pesos, Inc. v. Taco Cabana, Inc, 505 U.S. 763 (1992) [vii] Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210 (2000) [viii] Tetris Holding, LLC v. Xio Interactive, Inc., 863 F.Supp.2d 394 (D.N.J. 2012).