Blog Intellectual Property Law

Trade Dress Protection in India and U.S.A.

By: Diksha Garg


Intellectual and incorporeal property rights have been incorporated to protect the ownership rights of inventors. Over the course of the past few decades’ deliberations on whether the notion of product packaging and the appearance of the product could be considered within the purview of the aforementioned rights as well. A subset of trademark, trade dress necessarily refers to the “get-up” of a product.[1] It includes all composite aspects of a product that make up the visual appearance of the product.[2] While in its inception “trade dress” protected only the superficial aspects of the appearance of the product, the scope of the same was enhanced later to include “all elements of the product which is later presented to the consumer.”[3]

The raison-de-tat to extend protection not just to the commodity, but also to its appearance and packaging can be to identify and distinguish similar commodities, which is imperative for the consumer as well. One of the first instances to witness the protection of Trade Dress in the U.S was when the courts conclusively held that the “defendant’s packages constitute the unfair use of the plaintiff’s trade dress.”[4] Trade dress of a company is also protected to prevent any misperception for the consumers and to ensure that the product is from genuine manufacturers.

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Trade Dress Protection


The jurisprudence on trade dress protection is largely inspired from that of the United States. The U.S has surmised a statutory framework for the protection of trade dress rights. The Section 43(a) of the Lanham Act, 1946 provides for such protection.[5] Lanham Act accords protection to registered trademarks that are in “use in commerce” or have been acquired with a bona fide intent to use in commerce. As per the aforementioned provision: –

“Section 43(a) – (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which

  1. is likely to cause confusion, or to cause mistake, or to deceive […] as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
  2. in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act. 15 U.S.C. §1125.”[6]

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In regard to a trade dress infringement, the aggrieved party must sufficiently fulfil the test and show that the “get up” of the commodity is inherently distinct or has acquired distinctiveness via secondary means, that there is a possibility of misperception as to the genuineness of the commodity and that the trade dress is non-functional.[7] Based on the above criteria interpreted by the courts, to seek a remedy for the infringement of the trade dress, the aggrieved must show:

  1. Distinctiveness

A mark may be distinctive in two ways – inherently distinctive or acquire distinctiveness via secondary means.[8] To acquire Trade Dress through secondary means essentially refers to the ability to create a distinct association in the minds of the consumer of the mark and its origin. The trade dress is acquired through longevity in use and its favourable acceptance by the consumer.[9] The two-fold test of the Supreme Court was cemented in the case of Two Pesos v. Taco Cabana[10] while deliberating and examining the distinctiveness of products irrespective of their configuration and packaging.

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  1. Non-functional Trade Dress

There exists an interesting dilemma while examining the issue of non-functional aspects of trade dress. At the outset it must be realized that this criteria for qualification under trade dress rights, refers to the ability of the seller to show that the design or packaging as a whole is not functional.[11] The reason being that the ability to secure each aspect of a product as “trade dress” would only lead to monopolization and unfair competition. Trade dress must be considered as a complex composite of features jointly and not severally.[12] Furthermore, inclusion of the functional aspects of the product within the scope of trade dress regime would create a conflict between the trade dress rights and patent rights. Precedents dictate that, “there exists a fundamental right to compete through imitation of a competitor’s product, which right can only be temporarily denied by the patent or copyright laws.”[13]

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  1. Emulation of the Trade Dress Would Result in Confusion

The concern of a likelihood of confusion only arises when there is a possibility when the consumer may possibly, after viewing a mark or trait, associate or misperceive the product and services of one company/manufacturer to be of another.[14] The ascertainment of the “likelihood” is carried out not by assessing all aspects of the trade dress of the plaintiff and the infringer, but on the overall impression created.[15] Thus, in most cases the evaluation of the likelihood of confusion is perceived as a gordian knot allowing the company with the better goodwill and reputation to emerge victorious.


Though the jurisprudence of Trade Dress in India has evolved from that of the United States, it is notable that unlike the U.S, India does not have an explicit statutory backing to support the Trade Dress regime. However, the Section 2(1)(m) of the Trade Marks Act, 1999 provides some reprieve and recognises trade dress rights. The section defines a “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.[16] Further, “package” is inclusive of case, container, folder, et al.[17] Additional protection is accorded by including within the ambit of “trade mark,” the visual aspects such as shape of products while analysing the distinguishing aspects of a product and its graphical aspects to grant a trade mark protection.[18] As with regard to the various elements of trade dress protection, the criteria is identical to that of the U.S.[19]

Further, the courts have unambiguously held that use of similar packaging as that of a plaintiffs product would amount to an infringement of the intellectual property rights of the plaintiff and that the defendant is restrained from utilising the same.[20] In the widely known case of Gorbatschow Wodka K.G,[21] the hon’ble High Court of Bombay found that the shape of the bottle of the defendant was deceptively familiar to that of the plaintiff, and that continued use of same was likely to infringe the rights of the plaintiff and thus the defendant was restrained from further use of the same. In another instance, the courts have also recognised the colour combination of similar products operating under different trademarks as trade dress.[22] While deliberating in the case of Christian Louboutin,[23] the Indian Courts for the first time declared trade dress “well-known” status similar to trade mark.

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There is a world of difference between the jurisprudence and protection of Trade dress in India and U.S. The reason being that the laws of India are still at a nascent and developing stage. The formalisation of a Trade Dress regime happened only vis the amendments of 2003 and is not completely at par with that of the U.S. An added advantage for the U.S regime is the structure provided through the legislative provisions. However, Indian laws are not quite as far behind and the increase in competition in the market has contributed affirmatively towards the growth of trade dress concerns.

[1] Kiran Mary George, Trade Dress Law in The Commercial Kitchen: Exploring the Application of The Lanham Act to Food Plating in The Culinary Industry, 10 NUJS L. Rev. 3 (2017). Available at:

[2] Hartford House Ltd. v. Hallmark Cards Inc., 846 F.2d 1268

[3] Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27

[4] Eastman Kodak Co. v. Royal-Pioneer Paper Box Manufacturing Co. 197 F. Supp. 132 (E.D. Pa. 1961)

[5] Lanham (Trademarks) Act of 1946, 15 U.S.C § 1051 et seq.

[6] Ibid

[7] Gen. Motors Corp v. Urban Gorilla, LLC 500 F.3d 1222

[8] Abercrombie & Fitch Co. v. Hunting World Inc., 1 537 F.2d 4

[9] Vuitton et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769

[10] 529 U.S. 205

[11] American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136

[12] Ibid

[13] Wal-Mart Stores, Inc. v. Samara Bros, Inc., 529 U.S. 205

[14] Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837

[15] Fremont Co. v. ITT Continental Baking Co., Inc., 199 U.S.P.Q. 415

[16] Trade Marks Act, 1999, § 2(1)(m), No. 47, Acts of Parliament, 1999 (India). Available at:

[17] Ibid, at § 2(1)(q) – “package” includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper, and cork.

[18] Ibid, at § 2(zb).

[19] Subodh Asthana, Trade Dress Protection in India and US, IPleaders Blog, (Mar 15, 2021 10.30 PM),

[20] Cadbury India Limited & Ors. v. Neeraj Food Products, 142 (2007) DLT 724

[21] Gorbatschow Wodka K.G v. John Distilleries Ltd., 2011 (47) PTC 100 Bom

[22] Colgate Palmolive Co v Anchor Health and Beauty Care Pvt. Ltd., 2003 (27) PTC 478 Del

[23] Christian Louboutin Sas v Mr. Pawan Kumar & Ors., 2018 SCC OnLine Del 9185

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