Trade Dress Infringement: When Imitation is not Flattery – CorpLexia

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Jul 5, 2019
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The Trade Marks Act (TMA) was introduced in 1999 for the registration of Trade Marks in India and mainly to provide for better protection of the trademark for goods and services preventing their fraudulent use. Trade Mark refers to a graphically representable mark capable of distinguishing a particular good or service distinctively which includes the shape of goods, their packaging and combination of colours, etc. Under section 2(q) of TMA, a ‘package’ further includes a case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork.

This article seeks to analyse ‘trade dress’ as an intellectual property right, both in terms of the Indian and foreign jurisprudence on the subject.

[Akanksha Sachan is a Fourth Year student at Dr Ram Manohar Lohiya National Law University, Lucknow]

What is ‘Trade Dress’?

‘Trade Dress’ has not been explicitly addressed in the TMA but over the years, the holdings in various Indian case laws have established it to be an essential aspect of Intellectual Property Rights (IPR) infringement. Trade Dress can be referred to as a total ‘image and overall appearance’ of the business or its products. Trade Dress Infringement (TDI) protects the customers from fooled by the ‘look and feel’ of the fraudulent products. In India, Trade Dress does not specifically need to be registered but the infringement begins as soon as a competitor starts to exploit the intangible asset of longstanding reputation of another. One shouldn’t be allowed to enjoy the reap when one hasn’t sown the seed.

Trade Dress in India

The touchstone of the Trade Dress laws in India has come up majorly by the ruling of the courts in the absence of a lucid framework. TDI deals with the idea of providing protection with the IPR and tackling unfair trade practices. The similarity of the products should be substantial for the likelihood of confusion to result in infringement. Trifle resemblances will not find relief in law.

‘Deceptively similar’ has been defined under section 2(h) of the TMA and the Hon’ble Apex Court adds that, any mark which visually or phonetically satisfies the similarity, tots up as infringement. No further evidence is required and the onus of proof disappears. Indian Judiciary is stretching the protective thread to safeguard the Intellectual Property.

Foreign Jurisprudence

In contrast the Indian law, Trade Dress finds an explicit place in the United States’ laws and enjoys statutory protection under section 43(a) of the primary federal trademark statute, The Lanham Act. Civil action would arise out of any word/term/name/symbol when it is found to be misleading its origin, description or representation, which in turn is likely to cause confusion or deceive the consumer causing damage to the legitimate proprietor of the goods, service or commercial activity. For any infringement of a non-protected trade dress, the onus of proof of the injury lies with the claimant.

Simply and purely, color of the product is also permissible to be protected under the law. Trade Dress in the US offers a very broad range of protection from the interiors of a retail store to the design of a restaurant. Tech-giant Apple Inc. has reserved protection for the design of its retail store to shut down all the rival brands.

In the United Kingdom, common law remedy of ‘passing off’ is granted in cases of infringement. Evolving with time to match the international standards of the Intellectual Property Laws, Indian Laws have found its basis in Triple Identity Test which was established in Jiff Lemon Case.

i. Whether or not there exists a Goodwill/ Reputation of the goods and service in question?

ii. Whether or not there is a misrepresentation by the new product to defraud the customers?

iii. Whether or not there is/will be any damage to that Goodwill due to Misrepresentation?

If all these parameters are met with then Trade Dress Infringement may be concluded. These tests have been applied time and again to prove such infringement in Indian judicial pronouncements.

Tort of ‘Passing Off’

The object of ‘Passing off’ as a tort is to protect the goodwill attached to unregistered trademarks and is actionable under the Common Law stating one should not bear fruits of the labour of others. The owners of unregistered Trade Marks can seek relief under various sections of the TMA, section 27(2) provides for the right to institute a suit for such trademarks to start with. An injunction has been prescribed as the utmost remedy for infringement under section 135, with/without compensation for injury and damages as per circumstances.

Passing off is actionable and bears statutory remedy in TMA for the registered trademarks. It is advantageous for the owner of registered trademarks to club the claim of ‘passing off’ with the claim of infringement. The five essential elements for infringement are that, (1) misrepresentation should have taken place, (2) such misrepresentation when done during the course of trade in order to make profits, (3) the ultimate consumer mass of a previously existing monopoly should be the target, (4) the aim should be to injure the goodwill/reputation/business of such monopoly (5) actual damages are incurred by whom the infringement suit is brought.

Literacy Fluctuates Infringement

Literacy is the most basic currency in the knowledge economy. Literacy of the populace is an important consideration in the determination of a TDI. The ground reality in a country like India must be taken into consideration when applying/borrowing the principles of these laws in the Indian setting. It is highly probable that if an attempt is made to pass off a trade dress as the original product, the populace would mistake the fake for the real. This becomes more and more apparent moving from cities to towns to villages. This lack of discernability due to illiteracy is one of the weaknesses exploited in the TDI. The reputation of a company is exploited by the offender to earn a quick buck.

Trade Dress Infringement can also be life-threatening in sensitive areas like the pharmaceutical industry. Consumption of a certain drug which looks like the original one may lead to illness, disorders and diseases and many times they are just blind fakes or sugar pills that are sold off in the same trade dress. Strict tests should be applied while determining confusion and deception these sensitive areas looking to the egregious nature of the offence and potential/real harm to the people.


Protection of intellectual property is fundamental in today’s complex trade environment. Security of one’s investment and innovation in the creation of a product directly promotes innovation and research. The same goes for a trade dress. For a company, determining the appearance of a product is no longer a simple decision. It’s creation sometimes is subject to different but substantial R&D. The line between legality and TDI is a very thin one and so it needs to be analysed on sound principles and a balance must be struck between market freedom and the rights of the creator.

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Siddharth Kumar

Siddharth is the Founder of CorpLexia and serves as its Editor. He is a student of BBA LL.B (Hons.) and has a special focus on corporate, commercial, insolvency, arbitration, securities and competition laws. He can be reached at