Some of the International Rulings on Trademark and trade dress.

Trade dress is the distinctive visual characteristics of a product or service that allows consumers to quickly identify its source. Trade dress could point to the design of a product or its packaging, or the distinctive decor of the retail space where a product is sold or a service is provided. A trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods/services of one manufacturer or seller/service provider from those of another and to indicate the source of the goods/services.

The difference between a trademark and trade dress lies in their specific functions and the types of protection they offer to businesses. Here’s a detailed breakdown:

1. Trademark:

• Definition: A trademark is a distinctive sign, symbol, word, name, logo, or combination of these, used by a business to identify and distinguish its goods or services from those of other companies.
• Purpose: The primary function of a trademark is to identify the source of goods or services, helping consumers recognize and associate them with a particular business.
• Examples: Logos (e.g., the Nike swoosh), brand names (e.g., Coca-Cola), and product packaging (e.g., the distinctive shape of a Coca-Cola bottle).
• Legal Protection: Trademarks are protected under trademark laws (e.g., the Lanham Act in the U.S.), which prevent others from using confusingly similar marks that could mislead consumers about the source of goods or services.
• Types of Marks: Trademarks can include words, logos, sounds, colors, and even smells (in some cases).

2. Trade Dress:

• Definition: Trade dress refers to the overall visual appearance or packaging of a product or its environment that signifies the source of the product to consumers. This can include the shape, color, design, or layout of a product or store.
• Purpose: The goal of trade dress protection is to prevent others from imitating the overall look and feel of a product or business environment in a way that could confuse consumers.
• Examples: The distinctive layout and design of an Apple store, the shape of the Coca-Cola bottle, or the interior design of a restaurant like McDonald’s.
• Legal Protection: Trade dress is also protected under trademark law, but it requires proof that the design is distinctive and non-functional. It must also show that it serves as a source identifier and is not merely ornamental or functional.
• Types of Trade Dress: It can include product packaging, product shapes, store design, and even the overall look of a restaurant or hotel.

Key Difference

Some famous international precedents on trade dress and the decisions made in these cases:

1. Qualitex Co. v. Jacobson Products Co. (US)

• Court: U.S. Supreme Court
• Year: 1995
• Decision: The U.S. Supreme Court ruled that a color can function as a trademark under the Lanham Act, which includes trade dress protection. The case involved the green-gold color of Qualitex’s dry cleaning press pads, which Jacobson Products used without permission. The Court held that trade dress could extend to color if it serves as an indicator of source, not just a decorative or functional feature.

Source: https://supreme.justia.com/cases/federal/us/514/159/

2. Tiffany & Co. v. eBay, Inc. (US)

• Court: U.S. Court of Appeals for the Second Circuit
• Year: 2010
• Decision: Tiffany sued eBay, claiming that counterfeit Tiffany jewelry was being sold on the platform, and that eBay was infringing on its trade dress (specifically the distinctive packaging of Tiffany products). The court found that eBay had a responsibility to prevent the sale of counterfeit goods and that Tiffany’s trade dress (including its distinctive packaging) was protectable. However, eBay was not held liable for infringing Tiffany’s trade dress as it was not directly involved in the sales.

Source: https://law.justia.com/cases/federal/appellate-courts/ca2/08-3947/08-3947-cv_opn-2011-03-27.html

3. Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (US)

• Court: U.S. Supreme Court
• Year: 2000
• Decision: Samara Brothers, a clothing manufacturer, sued Wal-Mart for copying its distinctive children’s clothing designs. The Court ruled that product designs (as opposed to product packaging) are not inherently protectable under trade dress law unless they have acquired secondary meaning (distinctiveness). In this case, the Court found that Samara Brothers had not shown sufficient evidence of secondary meaning for its design to be protectable as trade dress.

Source: https://supreme.justia.com/cases/federal/us/529/205/#:~:text=216%20WAL%2DMART%20STORES%2C%20INC,SAMARA%20BROTHERS%2C%20INC.&text=We%20hold%20that%2C%20in%20an,a%20showing%20of%20secondary%20meaning.

4. L’Oréal v. Bellure (EU)

• Court: Court of Justice of the European Union (CJEU)
• Year: 2009
• Decision: The CJEU held that the trade dress of L’Oréal’s perfumes (including packaging and appearance) was protected under EU trademark law against imitations that could confuse consumers. The case involved Bellure, which sold lower-cost perfume imitations that copied L’Oréal’s packaging, and the court ruled that such copying could lead to unfair competition and misleading advertising.

Source: https://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:62007CJ0487:EN:HTML

5.  Starbucks Corporation v. Starbucks Coffee (Shenzhen) Co. (China)

• Court: Shanghai No. 1 Intermediate People’s Court
• Year: 2006
• Decision: Starbucks sued a Chinese company for infringing on its trade dress by opening a similar-looking coffee shop under the name “Starbucks Coffee.” The court ruled in favor of Starbucks, stating that the Chinese company’s store design and overall presentation could mislead consumers into thinking it was affiliated with the U.S. coffee giant. This decision was based on the argument that Starbucks had established a strong reputation in China and that the similarity in store design could confuse consumers.

Source:https://flatfeecorp.com/articles/starbucks-versus-shanghai-xingbake-2005-trademark-lawsuit-china

6. Colgate Palmolive Company And Anr. vs Anchor Health And Beauty Care Pvt. Ltd. on 29 October, 2003

In this case, the plaintiffs (a company) argued that the defendants had copied their trade dress, specifically the colour combination, packaging, and shape of the container, which had been registered as a trademark for toothpaste. The plaintiffs contended that the defendants’ use of the same colour scheme (red and white), combined with similar packaging and container shape, led to confusion among consumers and diluted the distinctiveness of the plaintiffs’ product. The plaintiffs also presented evidence showing a rise in the defendants’ sales after adopting the similar trade dress.

The court emphasized the importance of protecting trade dress, which includes not just trademarks but also the overall appearance and design of a product, including size, shape, colour combinations, and graphics. While no one party can claim exclusive rights over a particular colour, substantial reproduction of a colour combination, especially one that has been established over time, can cause confusion and harm the distinctiveness of a product’s identity.

In this case, the court found that the defendants’ actions amounted to trade mark infringement and “passing off” (misleading consumers about the source or origin of goods). The court noted that for illiterate or unwary consumers, the distinctiveness of the red and white colour combination was crucial for identifying the source of the product, and the similarity in trade dress could easily lead to confusion.

The decision reinforces the broad protection of trade dress, including the overall product image, to avoid consumer confusion and protect brand identity.

Source: https://indiankanoon.org/docfragment/1306228/?formInput=trade%20dress%20%20doctypes%3A%20judgments

7. Cadbury India Limited And Ors. vs Neeraj Food Products on 25 May, 2007

In this case, the plaintiff filed a passing off action against the defendant, claiming that the defendant had adopted a packaging style (pillow pack) that was deceptively similar to the plaintiff’s packaging, leading to confusion among consumers. The plaintiff relied on the concept of “trade dress” or “get up,” arguing that the overall appearance of the product’s packaging had become distinctive and was an integral part of the product’s identity, making it subject to protection under trademark law.

The court discussed the principles of passing off based on trade dress and get up, referring to legal texts like Kerly on Trademarks and prior case law. It was noted that while imitation of trade dress could amount to passing off, a trader’s goods are typically recognized by their general appearance, and such cases depend on whether the overall get-up could lead to confusion.

The court also referenced Kellogg Co. v. Praveen Kumar Bhadabhai, where the similarity in packaging was outweighed by the prominent display of the trademark “Kellogg’s,” and confusion was not found among educated customers. In contrast, the plaintiff argued that its customer base included uneducated and illiterate people who could be easily misled.

For the plaintiff to succeed in a passing off claim based on trade dress, it was emphasized that the plaintiff must prove that its trade dress has become distinctive through use and that the defendant’s trade dress is likely to deceive or cause confusion. The court also rejected the defendant’s argument that the trade dress used by other companies, like Nestlé’s Smarties, was similar, as no evidence of the reputation or widespread use of the Nestlé product was presented.

Main Decision: The court focused on the plaintiff’s need to prove that its trade dress was distinctive and had acquired consumer recognition. It also held that the defendant’s packaging had the potential to cause confusion, particularly among less educated customers, who might be misled into thinking the defendant’s product was the plaintiff’s. The court rejected the defendant’s argument about other brands’ packaging and found that the defendant had not demonstrated that the plaintiff’s trade dress was commonly used or lacked distinctiveness. The case emphasized that trade dress protection extends to features like packaging when they are likely to deceive or confuse consumers.

Source: https://indiankanoon.org/docfragment/652828/?formInput=trade%20dress%20%20doctypes%3A%20judgments

8. Pfizer Products Inc. vs B.L. & Company And Ors., on 10 April, 2002

In this case, the plaintiff (the maker of VIAGRA) filed a suit against the defendant (the maker of PENEGRA), claiming that the defendant had adopted a trade mark and trade dress that were confusingly similar to its own. Specifically, the plaintiff argued that the defendant’s drug, PENEGRA, was marketed under a name phonetically similar to “VIAGRA” and was sold in packaging that mirrored the blue diamond-shaped tablets of the plaintiff’s product. Additionally, the defendant had launched a website (www.penegra.org) that copied elements from the plaintiff’s official website (www.viagra.com). The plaintiff alleged that these actions were done with the malicious intention to mislead consumers and ride on the reputation of the VIAGRA brand.

The plaintiff also pointed out that despite the defendant changing the color of the tablets to pink and discontinuing the copied website, this did not negate the initial dishonest intentions, which were evident from the product’s original launch.

The defendant countered that trade dress protection should only apply if the design elements were non-functional and had acquired a secondary meaning, and that the plaintiff had failed to provide evidence supporting this. They also argued that the public in India was largely unaware of VIAGRA’s trade dress, as the product had not been officially launched or advertised there.

Main Decision: The court concluded that although the defendant had modified some features (e.g., changing the tablet color), the initial actions (similar name, packaging, and website) were deceptive and intended to mislead consumers into believing that PENEGRA was related to VIAGRA. The court emphasized the importance of evaluating the situation at the time the lawsuit was filed, not based on subsequent changes. The defendant’s actions were deemed to have unfairly taken advantage of the plaintiff’s goodwill and reputation.

The court found that the plaintiff had a legitimate claim for passing off, as the similarity in trade dress and the defendant’s efforts to associate its product with VIAGRA could likely cause confusion among consumers. However, the court also noted that trade dress protection requires evidence that the features were non-functional and had acquired distinctiveness, which the plaintiff failed to fully demonstrate.

Source: https://indiankanoon.org/docfragment/145093/?formInput=trade%20dress%20%20doctypes%3A%20judgments

8. Rich Products Corporation And Another vs Indo Nippon Food Limited on 19 February, 2010

Summary of the Case:

The plaintiffs filed a lawsuit seeking a permanent injunction to prevent the defendant from using the trademark “BELLS WHIP TOPPING,” claiming it was deceptively similar to their registered trademark “RICH’S WHIP TOPPING.” They also sought a perpetual injunction against passing off and infringement of copyright related to trade dress, packaging, and product instructions. They requested further relief including the delivery of infringing goods and packaging materials.

Plaintiffs’ Arguments:

• The plaintiffs argued that their trademark, “RICH’S WHIP TOPPING,” along with its distinct red, blue, and white packaging, is easily recognizable and serves as a substitute for fresh dairy cream due to its longer shelf life.
• They believed that the defendant’s use of “BELLS WHIP TOPPING” was an attempt to mislead consumers by copying their trademark and trade dress.
• They sought to protect their intellectual property and stop the defendant from using the term “WHIP TOPPING” in connection with their product, claiming it was a part of their registered trademark.

Defendant’s Defense:

• The defendant denied the plaintiffs’ claims, asserting that the mark “BELLS WHIP TOPPING” had been in use since 1995 and had acquired its own reputation and goodwill.
• They argued that “WHIP TOPPING” was a generic, descriptive term used across the industry for imitation dairy products and could not be protected as a trademark unless it had acquired a secondary meaning.
• The defendant also pointed out that the plaintiffs’ trademark was a composite mark (including “RICH’S WHIP TOPPING”) and contained a disclaimer on the words “S” and “Topping,” making it difficult for them to claim exclusive rights over those elements.
• They further argued that their trade dress was different from the plaintiffs’ packaging and that there was no likelihood of confusion.

Court’s Decision:

• Trademark Infringement and Passing Off:
• The court found that the defendant’s mark, “BELLS WHIP TOPPING,” and its packaging were not deceptively or confusingly similar to the plaintiffs’ trademark “RICH’S WHIP TOPPING” or its trade dress. The court sided with the defendant, finding no infringement or passing off.
• Generic Nature of “WHIP TOPPING”:
• The court agreed with the defendant’s argument that “WHIP TOPPING” was a generic and descriptive term commonly used in the industry for imitation dairy products. As such, it could not be protected as a trademark unless it had acquired secondary meaning, which the plaintiffs failed to establish.
• Copyright in Trade Dress:
• The plaintiffs’ claim to copyright in their trade dress was rejected. The court found that the plaintiffs had not provided sufficient evidence of originality or authorship regarding the trade dress or artistic work.

Main Decision:

The court ruled in favor of the defendant, rejecting the plaintiffs’ claims for trademark infringement, passing off, and copyright infringement. The court concluded that the term “WHIP TOPPING” was generic, and the defendant’s use of “BELLS WHIP TOPPING” and its packaging did not cause confusion with the plaintiffs’ products. Consequently, the lawsuit was dismissed.

Source: https://indiankanoon.org/docfragment/172757974/?formInput=trade%20dress%20%20doctypes%3A%20judgments

10. Kellogg Company vs Pravin Kumar Bhadabhai And Another on 15 February, 1996

Summary of the Decision:

The appeal in question was filed by Kellogg Company against the order passed by the learned single Judge in IA 2094/94 in Suit 432/94 on 31.10.1995. In that order, the learned Judge had dismissed Kellogg’s application for a temporary injunction under Order 39 Rule 1 of the CPC, which sought to prevent the defendant from using a similar trade dress. The dispute centered on the concept of ‘trade dress’, with reference also made to the artistic work in the packaging (carton) under the Copyright Act, although the primary focus was on trade dress.

Trade Dress Argument:

The appellant, Kellogg Company, argued that the trade dress of the defendant was similar to its own, potentially misleading consumers and constituting passing off. They contended that the defendant’s packaging design was likely to cause confusion among consumers.

The defendant, however, argued that their trade dress was distinct from Kellogg’s and that no confusion or passing off was likely.

Court’s Reference to Case Law:

• The learned Single Judge referred to the decision in Colgate Palmolive v. K. F. Pattron (1978 RPC 635), where the Court found the defendant’s trade dress to be distinctly different from the plaintiff’s. This was crucial in deciding that there was no prima facie case for granting an injunction in favor of Kellogg.
• The Judge also referred to the case of Cadbury Schwepper Pty. Ltd. v. The Pub-Squash Co. Ltd. (1981 RPC 429), where the Privy Council had ruled that even though the defendants’ product packaging was similar to the plaintiff’s, the distinguishing feature in the product name was sufficient to avoid confusion. The Privy Council emphasized that over-emphasis on packaging could stifle competition, and the differentiation in the name played a crucial role.

Court’s Conclusion:

The learned Judge concluded that the appellant (Kellogg) had not proved a prima facie case of confusion or passing off. He stated that the trade dress of the defendant was entirely different from that of Kellogg’s, and therefore, there was no likelihood of confusion.

As a result, the Judge found that the balance of convenience did not favor the plaintiff and declined to grant the injunction.

Main Decision:

• The Court ruled in favor of the defendant, holding that the appellant had failed to prove a prima facie case of passing off or trade dress infringement. The Court declined to grant the temporary injunction requested by Kellogg, finding no substantial similarity in the trade dress of the two parties that could confuse consumers.

Source: https://indiankanoon.org/docfragment/1064244/?formInput=trade%20dress%20%20doctypes%3A%20judgments