I.
Introduction
Trademark laws
are very different from other categories of intellectual property laws. They
are not concerned with inventions or creations. Trademark laws in essence,
protect the hard earned goodwill and reputation of a business, individual or
commercial enterprise. Though the main objective of the trademark law is to
protect business goodwill and reputation, the ultimate benefactor is the
public. Trademark as a badge of origin acts as identifiers of quality of the
products thereby helps the public in removing the confusion in their minds as
to the source of the products.
Of the late,
there have been many developments in the area of trademark laws. Earlier, only
marks or symbols were used to be registered as trademarks and were protected
under that mark. Now, due to the technological revolution in the communication,
media and other areas and due to the increased knowledge and perception of
individuals, business enterprises are showing more interest in registering non
conventional marks such as colour marks, shape marks, smell marks, sound marks,
advertisement slogans, trade dress etc. to capture the market.
In this paper,
we shall discuss the scope and development of trade dress in the United States of America
under the Lanham Act, 1946 with reference to Supreme Court’s observations in
the two landmark cases.[1] We
shall also see the beginnings of the trade dress protection in India in a
recent case decided by Delhi High Court[2],
under the Common Law of Passing Off.
Trade marks:
Trademarks can be seen as serving two main
purposes: first, to protect business reputation and goodwill and secondly, to
protect consumers from deception, that is to prevent the buying public
purchasing inferior goods or services in the mistaken belief that they originate
from or are provided by another trader.[3] A
mark may include any word, logo, device, branch, ticket, signature, name,
shape, packaging, combination of colours or any combination thereof[4].
To a layperson,
trademarks are often thought of as the public name of a producer or other
business. The Lanham Act defines trademark as “the term trademark includes any
word, name, symbol or device or any combination thereof
1. Used by a
person, or
2. Which a
person has a bonafide intention to use in commerce and applies to register on
the principle register established by this Act,
to identify and
distinguish his goods, including a unique product, from those manufactured or
sold by others and to indicate the source of the goods, even if that source is
unknown”[5].
As a direct
result, a trademark serves to both identify and distinguish seller’s goods to
prevent consumer confusion. The basic statutory definition of trademark appears
simple and indicates the basic function of a trademark. The basic requirements
may be summed up as:
1. Sign can be
represented graphically and it should be distinctive,
2. Can serve the
function of distinguishing the goods or services of one undertaking form those
of other undertakings;
3. The mark must
be used or intended to be used in the course of trade; and
4. The use must
be of visual representation of the mark/sign.
The European
Court of Justice in Canon Kabushiki Kaisha Vs. Metro Goldwyn Mayer Inc[6]
has stated “the essential function of the trademark is to guarantee the
identity of the origin of the marked product to the consumer or end user by
enabling him without any possibility of confusion, to distinguish the product
or service from others that have another origin”.[7]
In USA marks may
be classified in the increasing distinctiveness: generic, descriptive, suggestive,
arbitrary or fanciful[8].
Marks that are deemed suggestive, arbitrary, and fanciful are entitled to
trademark protection because their intrinsic natures to identify a particular
source of a product. In comparison, generic marks are those that refer to the
genus of which the particular product is a species, for example aspirin,
thermos. These marks are not protectable as trade marks because the number of
such appropriate terms is limited and all merchants should be equally allowed to
use such terms to describe their own goods when competing for customers.
II. Trade
Dress
We know that
logos, symbols, and names of products and companies can be afforded protection
under trademark law, but that is a very narrow view of what trademark law now
protects. Although it has limits, trademark law, in US, through Lanham Act,
will also protect slogans, phrases, packaging of products, and even the look of
the product itself. Furthermore, case law has interpreted Lanham Act
expansively. While determining what can qualify as a trademark, the Supreme
Court has stated that the language of the Lanham Act described “Universe in the
broadest of terms” in Qualitex Co. Vs. Jacobson
Products[9].
Trade dress
involves the total image of a product and may include features such as size,
shape, colour or colour combinations, textures, graphics or even particular
sales techniques.[10]
Trade dress can
be registered under section 2 of the Lanham Act, 1946. However, even without
registration, non-functional, distinctive trade dress is protected under
section 43(a) of the Lanham Act (forbidding false designations of origin and
false descriptions)[11].
This section is commonly referred to as providing federal common law protection
for trademarks and related source identifiers.
Trade dress can
be registered as a trademark with the United States Patent and Trademark Office
(USPTO) if the trade dress is: 1) inherently distinctive or has acquired
secondary meaning; and 2) is non-functional. While trade dress protection is
not expressly set forth in the Lanham Act, it has evolved and been recognised
through the development of case law.
The Lanham Act
protects Trade dress by preventing a second-comer from offering a product or
package that may cause consumer confusion with the first-comer’s product or
package. To offer this broad protection, courts have continually expanded trade
dress protection. Currently trade dress law protects almost any non-functional
element that the ordinary purchaser sees including a product’s overall image,
including its size, shape, colour, graphics, packaging, label, texture, colour
combinations and specific sales methods. Although often noting these individual
factors/ elements, courts will focus on the total combination of these elements
in a product’s design when determining trade dress infringement.[12]
To prove trade
dress infringement, a plaintiff must show 1) that the product is either
inherently distinctive or has acquired a secondary meaning and 2) that there is
a likelihood of confusion between plaintiff’s packaging and defendant’s
packaging.[13]
Traditionally,
trade dress referred only to the overall appearance of a product. Throughout
the 1980s, the term was expanded to include the shape and design of the product
itself. Products such as lightweight nylon bags[14],
rubik’s cubes[19] and even teddy bears were held to have a protectable trade
dress.[15]
Since the courts
concern is with protecting consumers from confusion as to source when granting
trademark or trade dress protection, the consumer has to first connect the
trademark or trade dress with a potential source of the product. This source
significance of a mark is known as its distinctiveness. In other words, a mark
must have become distinctive of the applicant’s goods in commerce in order to
deserve trademark protection.[16]
Two Pesos Case, 505 U.S. 763(1992
In Two Pesos, Inc. Vs. Taco Cabana, Inc., Taco Cabana, a Mexican restaurant chain Sued Two
Pesos, a rival Chain, claiming that Two Pesos deliberately copied Taco Cabana’s
Decor. Taco Cabana argued that the restaurant's trade dress, a combination of
non-functional features such as bright festive colours and distinctive roof
design, created a distinctive total image for its restaurant chain. As a result
of the distinctive image, Taco Cabana claimed it was entitled trademark
protection under the Lanham Act. The trial court agreed and held that the trade
dress may include the shape and general appearance of the exterior of the
restaurant, the identifying sign, the interior kitchen floor plan, the décor,
the menu, the equipment used to serve the food, the servers uniforms and other
features reflecting on the total image of the restaurant. The judge found that
Two Pesos intentionally and deliberately infringed Taco Cabana’s trade dress
and awarded Taco Cabana millions of dollars in damages.
The court, in a
unanimous decision, held trade dress that is inherently distinctive is
protectable under section 43(a) of the Lanham Act without a showing that it had
acquired secondary meaning.
In its decision,
the Supreme Court rejected the argument that competition would be hindered by
the protection of trade dress design and shape. The Supreme Court went on to
hold that requiring secondary meaning for a non-descriptive trade dress would
hinder improving or maintaining the producer’s competitive position. The court
concluded that any less protection given to trade dress would be contrary to
congressional intent and would undermine the purposes of the Lanham act, 1946.
In fact,
according to the court, “trade dress as
well as trade marks must be protected to secure to the owner of the mark the
goodwill of his business and to protect the ability of consumers to distinguish
among competing producers…. Trademarks foster competition and the maintenance
of quality by securing to the producer the benefits of good reputation”.
The Supreme Court believed that through protecting the producer’s property
rights in trade dress, the consumer is benefited by less confusion, assurance
of predictable quality, and increased competition.
Unfortunately,
the Supreme Court in Two Pesos did not provide clear guidance as to which test
to apply in trade dress cases in order to determine whether the trade dress is
inherently distinctive. The court accepted the Jury’s findings from the
district court that the elements of trade dress in this case were inherently
distinctive and ruled only on whether secondary meaning was further required.
After the two Pesos decision, the circuit courts struggled with the boundaries
and definitions that needed to be clarified in order to have uniformity in this
area of trade mark law.
The Circuit
Courts were divided on the question of the test to be adopted in finding the
inherent distinctiveness of the trade dress after the Two Pesos case. They
developed some tests to be adopted in finding the same.
In I.P.
Lund Trading Aps Vs. Kohler Co.[17],
the First Circuit court followed the test adopted by the Court of Customs and
Patents Appeals (CCPA) in Seabrook Foods, Inc. Vs. Bar
Well Foods Ltd.[18]
The Seabrook Foods test was “whether the design and shape of a combination of
elements is so unique, unusual or unexpected that one can assume without proof
that it will automatically be perceived by customers as an indicator of origin
– a trade mark”.
In Knit
waves, Inc. Vs. Lollytags Ltd.[19],
the second circuit was found that the proper enquiry for determining inherent
distinctiveness was to ask whether product features were likely to serve
primarily as a designator of origin of the product. It observed that trade
dress (product feature or appearance) must demonstrate that the primary purpose
behind the design was to identify its product source.
Wal-Mart Stores Case, 120
S.Ct.1339(2000)
The issue of
trade dress and inherent distinctiveness revisited by the Supreme Court in Wal-Mart, Inc. Vs. Samara Bros., Inc. In this case, Samara Brothers, Inc. designs and
manufacturers a line of children’s clothing. Samara Brothers primary line of
clothing is a line of spring/ summer one piece seersucker outfits decorated
with appliqués of hearts, flowers, fruits and the like. Wal-Mart is a national
retailer that sells, among other things, children’s clothing.
In 1995,
Wal-Mart contracted with a supplier to manufacture a line of children’s outfits
based on the Samara Brothers Line of seersuckers for sale in the 1996 spring/
summer season. Wal-Mart provided the manufacturer with photographs from the
Samara Brothers line and the supplier dutifully copied sixteen garments, with
only minor modifications. Wal-Mart subsequently sold the Knock-off Seersuckers
in 1996 for a gross profit of $ 1.15 million.
Samara Brothers
learned of Wal-Mart’s actions in June 1996 and filed suit in the US District
court for the southern district of New York, alleging that Wal-Mart’s sale of
the knock offs infringed the unregistered trade dress in its seersucker line of
clothing.
The court in
this case, overwhelmingly made more sense to limit Two Pesos and reign in the
expanding scope of protection afforded to unregistered trade dress under
section 43(a) of the Lanham Act than it did to maintain the status quo and
allow the scope of section 43(a)’s protection to expand further. Justice
Scalia, writing for a unanimous Court, stated, “a product’s design is distinctive, and therefore protectable, only upon
a showing of secondary meaning”.
Justice Scalia
began the opinion by remarking that a products trade dress is properly
considered a symbol or device subject to protection under Lanham Act Secton
43(a), notwithstanding the lack of textual protection for trade dress and that
the protection afforded to trade dress under sec. 43(a) has recently expanded
to included not only a products packaging but also the design the product
itself. Justice Scalia went on to point out that although section 43(a)
includes no textual distinctiveness requirement, the courts have universally
applied a distinctiveness requirement to trade dress cases because:
a) without
distinctiveness, a particular trade dress would not cause confusion as to the
origin, sponsorship, or approval of the subject goods as required by section
43(a), and
b) the
requirement for registering a mark (or trade dress) under section 2 of the
Lanham Act are generally applicable in determining whether a mark (or trade
dress) is protected under section 43(a).
Justice Scalia
also explained that the distinctiveness requirement could be satisfied in one
of two ways. First, a mark (or a product's trade dress) is inherently
distinctive if its intrinsic nature serves to identify a particular source.
Second, a mark or a product's trade dress can acquire distinctiveness even if
it is not inherently distinctive, if it has developed secondary meaning. A mark
or trade dress develops secondary meaning when in the minds of the public the
primary significance of a mark is to identify the source of the product rather
than the product itself.
Justice Scalia
specifically noted that the foundation for differentiating between marks that
are inherently distinctive and marks that have developed secondary meaning is
found in section 2 of the Lanham Act. Furthermore, section 2 of the act
specifically states that nothing there in will prevent the registration of a
mark used by the applicant, who has become distinctive of the applicant's goods
in commerce, however nothing in the act demands the confusion that every category
of mark necessarily includes… some marks that are inherently distinctive.
Moreover, with respect to least one category of mark – colours held that no
mark could ever be inherently distinctive.
Having laid the
groundwork to follow the reasoning of the Qualitex rather than Two Pesos, the
Wal-Mart decision effectively sounded the death knell for the doctrine of
inherent distinctiveness in product configuration by echoing that design like
colour is not inherently distinctive. The court proceeded by clarifying that
word marks and product packaging commonly derive their inherent
distinctiveness, “from the fact that the very purpose of attaching a particular
word to a product, or encasing it in a distinctive packaging, is most often to
identify the source of the product. Consumers are predisposed to regard such
symbols as indication of the producer, which is why such symbols almost
automatically tell a customer that they refer to a brand”.
Product Design Trade Dress Vs. Product Package Trade Dress: At the heart
of trade mark law is the desire not to confuse the consumer: not to confuse the
consumer as to the source of the goods and not to confuse the consumer as to
the quality of the goods. The Supreme Court’s decisions in Two Pesos and
Wal-Mart would seem to indicate that consumers would be easily confused by two
restaurants that are decorated in a similar manner but who have their trademark
names (which are not confusingly similar) emblazoned on their respective
buildings in three-foot high letters than by two lines of children’s clothing
that were meant to mimic each other and that are distinguishable only by a
small, cloth label sewn into the inside seam. Besides the obvious physical
differences between the two situations, today’s consumers also face potential
confusion distinguishing between house and national brands, which flood the
market place.
By drawing
artificial distinctions between product packaging and product configuration,
courts separated trade dress law in to two categories. Under the rubric of
trade dress product packaging is the actual package in which a product is
marketed. Examples of product packaging include the can for PAM Cooking spray,
OUZO Liquerer bottler[20] etc.
Trade dress
protection also extends to the very design of the product itself, such as its
configuration or shape. Product configuration, as distinguished from product
packaging, involves the products own three – dimensional shape for example the
shape and appearance of FERRARI automobiles.[21]
The lines of
demarcation, however, are not always clear. Some trade dress will not fit
easily into either category. Product configuration cases have developed the
most controversial area of trade dress law.[47]
III. Indian
Position On Trade Dress
The trademark
law in India
has undergone drastic reform resulting in the repeal of the Trade and
Merchandise Act, 1958, by the Trade Marks Act, 1999. This Act of 1999 came into
force from September 2003. The new Indian Trade Marks Act, 1999 makes the
Indian law at par with international standards. The new Act recognizes service
marks. It has done away with system of maintaining registration of trademarks
in part A and part B with different legal rights, and to provide only single
register with simplified procedure for registration and with equal rights.
The concept of
well-known trademarks is introduced. To streamline and simplify the procedure
of registration, it is now made possible to file one single application for
registration of mark in different classes of goods and services. The initial
term of protection is also enhanced from the previous 7 years to 10 years. The
new Trademark law has also broadened the definition of trademarks to include
shape of goods and combination of colour and it provides for registration of
collective marks owned by associations etc.
The Trade Marks
Act, 1999 is a copy of the UK’s
Trade Marks Act 1994 as we follow the English Trade Mark laws from the
beginning. Unlike the United States Lanham Act, 1946 the English Trade Marks
Act, 1994 and the Indian Act, 1999 do not have provisions like section 43(a)
(of Lanham Act) to protect un-registered trade dress or allow registration of
trade dress which qualifies the tests of distinctiveness and source identifier.
Trade dress can
be protected as getup under the law of passing off in UK and in India. Passing
off is a common law remedy for protecting unregistered Trade Marks. Effectively
it seeks to protect the rights of an individual or business, by protecting the
goodwill of that business from unfair trading by other parties. It prevents
other parties from carrying on business or selling their products under a name,
mark or description, which could mislead the public by confusing them to
believe that the business/ goods in question are those of plaintiff. Basically,
passing off is connected with protecting unregistered Trademarks. Getup,
packaging, business strategy, marketing techniques, advertisement themes etc.
can also be protected under passing off.
Lord Oliver
developed a list of three elements for determining passing off in Reckitt
& Colman Products Ltd Vs. Borden Inc.[22], Case namely:
1. the existence
of the claimant’s goodwill.
2. a
misrepresentation as to the goods or services offered by the defendant
3.damage or
likely damage to the claimant's goodwill as a result of the defendant's
misrepresentation.
So, passing off
essentially protects the goodwill of an individual or his business. Past case
laws have established that goodwill can exist in anything like mark, symbol,
device, shape, package, get-up, colour or colour combination of the goods or
any combination thereof. Therefore, Trade Dress can be effectively protected as
get-up under the law of passing off.
The Indian
gospel on trade dress had for a while been the decision in Kellog co. Vs. Pravin
Kumar Badabhai[23]
where the Delhi High Court, despite enumerating the similarities in the trade
dress of the plaintiff’s and defendant’s products, denied an injunction to the
former while observing that the test was to see the products as a whole and in
doing so the similarity in certain colour combinations was outweighed by the
differences in the word marks of the plaintiff and the defendants.
The recent years
have seen an interesting shift in judicial perception. While tests for passing
off have been interpreted with immense judicial creativity in relation to
essential products such as drugs and pharmaceuticals, passing off actions in
relation to consumer goods have continued to be governed by the relative
similarities or dissimilarities of the accompanying word marks. In Cadila
HealthCare Vs. Cadila Pharmaceuticals[24]
the Supreme Court of India has held that:
“Pharmaceutical products will be purchased by
both villagers and townsfolk, literate as well as illiterate and the question
has to be approached from the point of view of a man of average intelligence
and imperfect recollection. A trade may relate to goods largely sold to
illiterate or badly educated persons. The purchaser in India cannot be
equated with a purchase of goods in England. While we agree that in
trademark matters, it is necessary to go into the question of comparable
strength. In a country like India where there is no single common language, a
large percentage of population is illiterate and a small fraction of people
know English, then to apply the principles of English Law regarding
dissimilarity of the marks or the customer knowing about the distinguishing
characteristics of the plaintiff’s goods seems to over look the ground
realities in India.”[55]
At the same
time, the Delhi High Court in Untied Distillers Plc. Vs. Jagdish
Joshi,[56] a suit for passing off, evaluated the relative similarities
in the trade dress of the defendant and the plaintiff and held that a bare
perusal of the trade dress of the defendant denoted a striking similarity
between the defendant’s and the plaintiff’s products and the defendant's had
not given any satisfactory explanation as to why there were such similarities
with the plaintiff’s trade dress in their product’s trade dress.
In this
backdrop, the decision of the Delhi High Court in Colgate Palmolive Co. Vs.
Anchor
Health and Beauty Care Pvt. Ltd[25]
comes like a breath of fresh air, clearly charting new territory for Indian
trademark law. In this suit for passing off, the plaintiff sought an interim
injunction against the defendant’s use of the trade dress and colour
combination of red and white in relation to identical products i.e. tooth
powder, when the marks being used by the two parties were completely distinct,
being ‘Colgate’ and ‘Anchor’. In the judgment the court held:
“It is the overall impression that a consumer
gets as to the source and origin of the goods from visual impression of colour
combination, shape of the container, packaging etc. if an illiterate, unwary
and gullible customer gets confused as to the source and origin of the goods
which he has been using for longer period by way of getting the goods in a
container having particular shape, colour combination and getup, it amounts to
passing off. In other words if the first glance of the article without going
into the minute details of the colour combination, get up or lay out appearing
on the container and packaging gives the impression as to deceptive or near
similarities in respect of these ingredients, it is a cause of confusion and
amounts to passing off one's own goods as those of the other with a view to
encash upon the goodwill and reputation of the latter. Colour combination,
get-up, layout and size of container are sort of trade dress, which involves
overall image of the product's features. There is a wide protection against
imitation or deceptive similarities of trade dress as trade dress is the soul
for identification of the goods as to its source and origin and as such is
liable to cause confusion in the minds of unwary customers particularly those
who have been using the product over a long period of time”.[26]
In a detailed
ruling taking into account the acquired reputation of Colgate’s red and white
colour combination in its trade dress, the court held that as the trademarks
‘Colgate’ and ‘Anchor’ were written in English language they could not be
distinguished by ordinary customer of a country where bare literacy level is
abysmally low and said that if a product having distinctive colour combination,
style, shape and texture had been in the market for decades as in this case (it
was in the market since 1951) it lead to ineluctable inference of having
acquired secondary meaning on account of its reputation and goodwill earned at
huge cost. It said that the criteria was the overall impression from the look
of packaging or container containing the goods and articles that could
legitimately injunct its rival which was an element of unfair competition on part
of the infringing party.[27]
It is
interesting to note that the new Trade Marks Law 1999 has been expanded to
include shape marks and colour
combinations as marks. Under this, a product package (including its colour
combination, size, shape etc.) or a product design/ configuration (as shape
mark) may be registrable as a mark. Nevertheless, passing off may provide a
good alternative for protecting unregistered trade dress and the initiative has
already started with the Colgate Palmolive case.
IV. Conclusion
The basic
requirement for a mark to be registered as a trade mark are that it should be
distinctive, capable of graphical representation, capable of distinguishing the
goods or services as originating from a particular source from that of other
similar goods and that mark should not be functional in nature.
A mark may
include any word, logo, device, branch, ticket, signature, name, shape,
packaging, and combination of colours or any combination thereof. Traditionally
word marks, symbols or logos were registered as trademarks. Of the late, due to
the technological revolution in communication and mass media and due to the
increased levels of perception of an average consumer on brands, many business
entities are rushing to register nontraditional marks, such as colour, smell,
sounds, slogans, shapes etc as trade marks. Trademark offices, examiners and
courts are also neither discouraging nor encouraging these types of marks to be
registered. If they are capable of distinguishing the goods or services and
distinctive, they are being allowed to be registered as trade marks.
One such type of
development is trade dress protection. Trade dress involves the total image or
impression of a product and may include features such as size, shape, colour or
colour combinations, textures, graphics or even particular sales techniques.
Trade dress can be registered under section 2 of the US Lanham Act as a
trademark if it is inherently distinctive or has acquired secondary meaning;
and is non-functional. However, even without registration non-functional and
distinctive trade dress is protected under Sec.43 (a) of the Lanham Act. While trade
dress protection is not expressly set for the in the Lanham Act, it has evolved
and been recognised through the development of case law.
The Lanham Act
protects trade dress by preventing a second comer from offering a product or
package that may cause consumer confusion with the first comer’s product or
package.
The Two Pesos
case was the first case on the protection of trade dress to be decided by the
Supreme Court of the US.
It granted a some what broad protection to the trade dress of a Mexican restaurant
by noting that such trade dress was inherently distinctive and do not require
the proof of secondary meaning.
This case though
said product packaging trade dress can be inherently distinctive and do not
require the proof of secondary meaning, it did not set out a clear test as to
what constitutes inherently distinctive trade dress.
After this case
there was a split among the circuit courts in granting trade dress protection.
The split was mainly due to the question that which test was to be adopted to
establish inherent distinctiveness.
Under Common
Law, trade dress may be protected under passing off which protects the
commercial reputation and business goodwill. Past cases established that trade
dress can be protected as get-up under passing off. As far as India is
concerned, it is interesting to note that the new Trademarks Act, 1999 has
expanded the scope of trademark with the inclusion of shape of the goods and
colour combination in the list of marks, which can be registered as trademarks.
So, under this expansion, a product package or product design, which includes
shape, colour combination, may be registered as trademarks. There are no such
registrations filed as of now.
Another
interesting development regarding India is that in a recent case, the
Delhi High Court granted trade dress protection for colour combination (of Red
& White) and shape of containers (for tooth powder) under the law of
passing off. It noted that due to the high illiteracy levels in India trade
dress of a product has great impact on the consumers and cause confusion in
their minds.
References
Books
- Narayan P., “Intellectual Property Law”, 3rd Edn., Eastern Law House, New Delhi (2005)
- Robert P. Merges, Peter S. Merell, Mark A. Lemley, “Intellectual Property in the New Technological Age”, 2003, Aspen Publishers, New York, p.529.
- Cornish, W.R., “Intellectual Property”, Universal Law Publishing Co. Pvt. Ltd., 3rd Edn., Delhi (2004).
Articles
- Ranjit Kumar G., “Trade Dress Protection”, www.aplegaledu.com/articles.html
- Somesh Kumar P., “The development of Trade dress in India”, AIR 2004 Jour 22
Websites
[1] Two Pesos vs. Taco Cabana Inc., 505 U.S. 763(1992);
Wal-Mart Stores Inc. vs. Samara Bros. Inc., 120 S.Ct.1339(2000).
[2] Colgate Palmolive Co. vs. Anchor Health & Beauty Care Pvt. Ltd.,
IA No. 3502/2003 in suit No. 691 of 2003, decided by Delhi High Court on 29
Oct., 2003. Source-MANU/DE/1000/2003.
[3] David
Bainbridge, “Intellectual property”, 5th
(ed), 2002, Pearson Education, New
Delhi, pp. 532-533.
[4] Section
2 of the Indian Trademarks Act, 1999
[5] Lanham
Act Section 45(USA).
[6] (1999)
FSR 332.
[7] Ibid
at Para 28. .
[8] As
adopted by the Second Circuit Court in Aber
Crombie & Fitch Co. vs. Hunting World Inc., 537 F. 2d 4 (2nd
Cir. 1976) [called Abercrombie test].
[9] 514
US
159 (1995).
[10] John H. Harland Co. Vs. Clarke Checks, Inc., 711 F.2d 966 (11th
cir. 1983).
[11]
Section 43(a) of the Lanham Act, 1946 is commonly referred to as providing Federal
Common Law Protection for trademarks and related source identifiers. It says
that false designations of origin and false descriptions are forbidden. This
section reads as:
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
Is likely to cause confusion, or to cause mistake, or to deceive as to
the affiliation, connection, or association of such person with another person,
or as to the origin, sponsorship, or approval of his or her goods, services, or
commercial activities by another person, or In commercial advertising or
promotion, misrepresents the nature, characteristics, qualities, or geographic
origin of his 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 act.
[12] Charles
Gielen, “Case Comment, EC: Trademarks-Shape mark- Whether Registrable as
Trademark”, E.I.P.R. [2003] 25(2), N28-29.
[13]
Sara Lee Corp. Vs. Kayser – Roth Corp. No.6: 92CV00460,
1992 US Dist. LEXIS 22598. The court listed separate likelihood of confusion
standards for trade dress cases in Sara Lee Case. The factors included:
1. The strength or distinctiveness of the trade dress. 2. The
similarity between the trade dresses of the packages. 3. The similarity of
goods and services, which the trades dress, identifies. 4. The proximity of the
two products in sales presentation. 5. The similarity of retail facilities and
trade channels used to market the two products. 6. The similarity in
advertising used by the sellers of each product. 7. The likelihood that the new
comer will be able to bridge the gap between the two products. 8. The
sophistication or lack thereof of the consumers. 9. The quality or special
features of the defendant’s product. 10. The defendant’s intent. 11. And actual
confusion.
[14] Lesportsac,
Inc., 754 F.2d at 73
[15] Christina
Platt Hill son, “Trade Dress Protection: When a Dress is a just a Dress
According to the Supreme Court in Wal-Mart
Stores, Inc. Vs. Samara Bros”, 53
Baylor L. Rev. 461.
[16]
Ibid
[17] 163
F. 3d 27 (1st Cir. 1998)
[18] 568
F.2d 1342 (CCPA 1977)
[19] 71
F. 3d at 996 (2nd Cir. 95).
[20] Paddington Vs. Attiki Importers & Distributors, Inc. 996 F.2d 577, 27 USPQ
(BNA) 1189 (2nd Cir. 1993)
[21] Ferrari
SPA…. Vs. Roberts, 944 f.2d 1235 (6th Cir. 1991)
[22] (1990)
1 All ER 873.
[23] (1996)
1 Arb. L.R.430 Delhi.
[24] AIR
2001 SC 1952.
[25]
MANU/DE/1000/2003.
[26]
Ibid
[27]
Ibid
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