World IP Day — Understanding Trade Dress: The Visual Identity of Products

This extract is taken from Elizabeth Verkey’s Intellectual Property, 2nd Edition, and is being published on the occasion of World Intellectual Property Day. It highlights the concept of trade dress as an essential facet of intellectual property law, with particular focus on its development and judicial interpretation in both international and Indian contexts.

Trade dress refers to the overall appearance of a product. The “trade dress may be a composite of several features in a certain arrangement or combination which produces an overall distinctive appearance”.¹ The overall image and appearance of a product includes features such as size, shape, colour or colour combinations, texture, graphics, and even particular sales techniques.² Trade dress also signifies and points to the origin of the product.

Under the Lanham Act, the plaintiff in a trade dress infringement has to show that the trade dress is non-functional and that there is a likelihood of confusion among the consumers as to the source. Functionality for trade dress relates to whether a feature of a particular trade dress turns on whether “protection of the configuration would hinder competition or impinge upon the rights of others to compete effectively in the sale of goods”.³ The determining factor is the possibility of developing alternative appealing designs. The court looks into not the individual elements, but the aggregate and sum of the parts rather than the individual components.

General Motors Corpn. v. Urban Gorilla LLC⁴ revolved around the trade dress of Hummer, which was the civilian version of the military Humvee. General Motors in their injunction suit contended that the Urban Gorilla product line infringed their trade dress. According to Urban Gorilla, Hummer trade dress is not inherently distinctive and based their reasoning on the boxy shape, split windows, and high belt line, which were common to military vehicles in general. General Motors claimed that their trade dress had an acquired distinctiveness. The Court made a detailed comparison of the trade dress of the Urban models and the Hummer. Though many differences were found in the wagon model of Urban, the Court found that they resembled the Hummer trade dress. But the slant back model and the combat versions were found to be different. The models were compared as encountered by the consumers in the marketplace. The Court found that “although Urban Gorilla has shown the functional aspects of several features of the Hummer trade dress, it has not shown that an equally functional design that is close in cost and quality is impossible”. The conceptual strength of the trade dress of Hummer was found against General Motors as that was being used by military vehicles also. But regarding trade dress, the Court found in favour of General Motors on the ground of non-functionality and acquired distinctiveness.

In India also, trade dress is one of the most important intellectual property asset of any business. The crux of the issue in EBC Publishing (P) Ltd. v. Rupa Publications India (P) Ltd.⁵ is the trade dress of the Coat Pocket Edition of the Bare Act of the Constitution of India published by the plaintiff. The plaintiff had a distinctive trade dress, including a signature “black-red” colour combination, with a specific font style, gold leafing, and overall trade dress, on thin bible paper. The plaintiff was consistent in their trade dress for all editions of their book and the Coat Pocket Edition of Bare Acts is their iconic product. The defendants started marketing Coat Pocket Edition of the Constitution of India and started selling through the same trade channels as that of the plaintiff. The defendant also imitated the essential features of the trade dress used by the plaintiffs, including the colour scheme, title placement, font type, and gold leafing. The defendant also changed the placing of their logo from the centre to the bottom right as that of the plaintiff’s Coat Pocket Edition. Even the lay out and presentation style of the listings of the defendant in the e-commerce platform was the same as that of the plaintiff. The Court found that the trade channels were the same and that the defendant has entirely copied the layout of the plaintiff’s product without any independent creativity. It was held that:

25. …To an unwary consumer of average intelligence and imperfect recollection, the trade dress of the defendant’s impugned Coat Pocket Editions is likely to appear identical to that of the plaintiffs’ Coat Pocket Editions.

The issue in Britannia Industries Ltd. v. ITC Ltd.,⁶ was one of passing off in relation to the trade dress/get-up. ITC filed suit against Britannia Industries Ltd. from violating its purported rights in the packaging/trade dress of its product “Sunfeast Farmlite Digestive – All Good” biscuit by allegedly using a deceptively and confusingly similar trade dress for its “Nutri Choice Digestive Zero” biscuit. Britannia Digestive biscuits are being sold under three different variants. One variant is the “Nutri Choice Hi Fibre Digestive” biscuit. The other variant is the “Nutri Choice Digestive 5 Grain” biscuit and the third variant is the one in issue, that is, the “Nutri Choice Digestive Zero” biscuit. The products are packaged solely in pillow packages. The claim of ITC was that the combination of yellow and blue that is used in its packaging for its “Sunfeast Farmlite Digestive – All Good” biscuit has become distinctive specifically of its goods. The primary ingredient for establishing passing off in get-up is whether the get-up is recognised by the public as distinctive specifically of the plaintiff’s goods or services. The plaintiff has to prove that the get-up bring in custom on account of it being a label or badge which indicates that the biscuits were ITC biscuits. The Court found that “the combination of yellow and blue as used by ITC for its ‘Sunfeast Farmlite Digestive – All Good’ biscuits has not become so identified with its goods as to become a ‘badge’ of its goodwill”.

While deciding passing off claims for the trade dress/get-up, it is essential that proof of the trinity of goodwill, misrepresentation and damage have to be established just like any other passing off action.

A copy of the book can be purchased here.