Trade dress protection: comparative study of us and Indian position

Trade Dress Protection: Comparative Study of US and India

This article on ‘TRADE DRESS PROTECTION-COMPARATIVE STUDY OF US AND INDIAN POSITION‘ was written by Shruti, an intern at Legal Upanishad.


The concept of Trade dress was first founded by the US and the English Trademark Act, 1994 was followed by the Trademark Act, 1999 which traced trademark through The Lanham Act. In India, the concept of trade dress is in the development stage and it has now started to expand from traditional forms to non-traditional forms like the design of a doorknob, lamp, magazine, sports shoe, style of a rock music group, etc.

The aim here is to stop the consumers or the customers to buy other company’s products which helps in protecting the services and goods from copying or duplicating. So, it differentiates the products and adds a unique feature to one’s product. Trade dress is different from a trademark as the trademark talks about phrases, emblems, logos, symbols, etc. that are on the products to differentiate it from other products.

This article will focus on trade dress protection and the comparative study of the US and Indian Position.

What is a Trade Dress?

Trade dress is a product’s overall commercial image which helps in identifying the product, its source and distinguishing it from various other products. It includes packaging, design, or shape of a product, size, texture, color, product configuration, etc. which can be registered by a person in way of their services or business. Many illiterate customers tend to differentiate the products based on the packaging.

Example of Trade Dress:

Some of the requirements are it must be distinct from others, in a printed form, graphically given, and used as services or goods from others. An example of trade dress can be, a restaurant will be able to protect its layout, décor, style, menu including the nature of the place where food is prepared and how the food products are stored in the dining area, etc by using trade dress

India’s position in trade dress protection:

There is no correct definition for trade dress protection under Trademark Act 1999, but with the growth of intellectual property laws, India is a part of international standards. After making a new amendment, the definition of a trademark was given under section 2 of the Trademark Act. Section 2 talks about the graphical representation and the overall appearance of a product which differs the services and goods of one another. This section also includes the terms Mark and Package.

Indian Courts recognized the concept of trade dress before 2003. In Indian Law, the new definition for the trademark consists of every trademark element that is under US Law. A creative concept and a general idea cannot be considered a trade dress. The Indian Courts also give protection to trade dress through the remedy of common law passing off that is enforcement against unauthorized use.

Section 9, subsection (3) of the act talks about the registration of the shape of goods. This section describes that a mark should not be registered as a trademark if:

  • The shape of goods that comes from nature
  • The shape that gives the goods a substantial value

From this, it’s clear that the Indian Trade Mark Law also considers trade dress protection. Distinctiveness is also considered an essential aspect under Trademark and Trade Dress.  Similar to trade dress, the trademark also protects both unregistered and registered trademarks.

In India, the act opposes the use of similar trademarks by those who have not registered their trademark which the public will be able to identify easily. There are many cases in which the Indian Courts have decided on the trade dress factor of the product. The court has also considered trade dress as one of the important parts of Intellectual property and acknowledges elements like colors, shape, and packaging as the important things under trade dress protection.

Case: Cadbury India Limited and Ors vs Neeraj Food Products.

Held: The Delhi High Court held that, as Cadbury has the trademark “GEMS” registered, the trademark “JAMES BOND” is phonetically and physically similar to this and the Court also held that Neeraj Foods was not allowed to use Cadbury’s trademark and the packaging as it was similar to that of Cadbury (Sharma, n.d.)

Trade dress protection: comparative study of us and Indian position
Trade Dress Protection: Comparative Study of US and India

Trade dress protection in the U.S:

The trade dress protection is stated under section 43(a) of the Lanham Act. This act states that trade dress includes overall appearance like shape, color, combination, size, etc., which applies to unregistered and registered trade dress. Here, to protect the trade dress it should be recognized by the public widely and it should be unique. Under this section of the act, the use of a combination or the use of any words, name, symbol, terms, etc., that belongs to another person will lead to confusion and is considered civil aviation. A functional feature is not provided under this act.

Non-functionality and distinctiveness are the main criteria for protecting the trade dress in the U.S, if this is not followed then compensation must be paid to the affected party. Under U.S law, distinctiveness can be described as descriptive, arbitrary, generic, or suggestive. As most merchants should use Generic marks to describe their products while competing, it is not protected under trademark.

To claim for infringement, these elements should be proved. They are, the plaintiff is supposed to have a trade dress in a unique and perfect design or combination of distinctive elements, confusion must be created by the accused and if the trade dress is registered by the defendant, then, the plaintiff has to prove that it is not functional but if the trade dress is registered, then the defendant must take the responsibility to prove the functionality.

If these elements are not met, the following two solutions are available:

  • Money compensation that is the injured party will get compensation
  • Injunctive relief. One party will be stopped from infringing on the other party by the order of a court. (Mishra, 2020)

Case: Wal-Mart Stores vs Samara Bras

Held: Samara was producing children’s clothes decorated with appliques and they were marketed through the department stores in the U.S. Wal-Mart sent overseas suppliers photographs of samara’s products and instructed them to produce copies of them. Later the copies were sold out by Walmart, so, samara sued wall-mart. The court gave a judgment in favor of Walmart because a distinction between product packaging and product design was found by the court.

Comparison between India and US:

There is no big difference between both countries when it comes to trade dress. One of the biggest differences can be that the trade dress can get registered if specific conditions are provided in the U.S while in India, the act doesn’t consider the term trade dress for which it doesn’t get protection. Several attributes such as the products with shape, color combination, etc can be registered.

The US has very well established for protecting the trade dress. India is still in the recognition phase when it comes to trade protection so, some time is required to bring out better enforceability of this provision but in both countries, the protection available for trade dress is the same. (Kulshreshtha, 2020)


Trade dress and trademark are different things. Trade dress is about the overall product including the design, dressing, color, and so on. Some of the famous trade dresses are the shape of the Coca-cola bottle and the Rolls Royce, it basically deals with the appearance of the product in order to identify and differentiate the product.  

As the competition is developing, everybody is working hard to make their product unique and distinct from others and also as attractive as possible. With this increase in competition, trade dress gives a new forum to secure the aspects of business that are untouched. This will lead to much more protection for trade dress in the future.