A competitive market obligates businesses to compete beyond the mere functionality of the

product/service they seek to make available. Beyond functionality, consumer purchase

decisions are also motivated by the outward appearance and aesthetic appeal of the product as
a result of which producers invest considerable intellectual labour into the overall commercial
image (look and feel) of a product or service, which indicates or identifies the source of the
product or service and distinguishes it from those of others. It may include the design or
configuration of a product; the packaging of goods; and/or the décor or environment in which
services are provided.Trade dress can consist of such elements as size, shape, color, texture,
etc., to the extent such elements are not functional1. These features, that do not contribute to
the products’s functionality, form the trade dress, elucidated under Section 2(zb) of the
Trademarks Act,1999 that includes within its ambit, “shape of goods, their packaging and
combination of colors". Unlike the US, where, under Section 43(a) of the Lanham Act, the
word “trade dress” does not find explicit mention in the Trade Marks Act, however its
inclusion under Section 2(zb) gives it the same protection of law as an unregistered
Trademark.

Businesses, first users of the trade dress can to choose to secure their rights against trade dress
infringement through numerous avenues in intellectual property law. Courts have shown a
strong inclination to uphold both, statuatory rights (i.e. claims against design infringement)
and common law injuries while placing a rather onerous burden on the second user to not
only adequately distance themselves from the first user’s product but also of showing
bonafides in event that a claim of infringement is brought against them.

In Castrol India Limited & Ors vs. Iqbal Singh Chawla & Ors2, (CS (OS) 4 of 2011) the
defendants had adopted a trade dress that was identical to that of the plaintiffs. Castrol
Limited sued the Defendants who were involved in selling 4T oil under the trade mark
"Lumax Active" who were said to have infringing the trade mark "Castrol Active" which was
separately registered in the name of Castrol Limited. The plaintiff claimed to be a registered
owner of the trade dress in which they market their product including the design, colour,
shape and overall appearance of the container and claimed that the design was an ‘original
artistic work’ and was thus protected under section 2(c) of Copyrights Act, 1957, the court
1
International Trademark Association, Available at:
https://www.inta.org/Advocacy/Pages/TradeDress.aspx
held that is held that the defendant by adoption of the identical trade dress, colour scheme,
packaging, design, layout, shape and configuration has infringed the copyright of the plaintiff
in the label and are passing off their goods as those of the plaintiff, This is similar to the
single bench judgement of the Bombay High Court in Pidilite Industries Limited vs
Poma-Ex Products3 where the short facts are that in 2014, Pidilite Industries, the renowned
manufacturers of “Fevikwik” adhesives sued Poma-Ex Products, the manufacturers of
“Kwikheal” adhesives over infringement of trademark, copyright and passing off. In Pidilite,
the defendants were held to be infringing upon the Plaintiff’s copyright even in the absence of
registered copyright in the distinct trade dress.

A business may also chose to register a copyright in design under the Designs Act, 2000 as
was done by Carlsberg Breweries for their unique and distinctive bottle in respect of its
product, viz. beer, under the brand "TUBORG", There are, however, two distinct perils in
registering one’s trade dress under the Designs Act, 2000.

Firstly, according to Section 15(1) of the Copyright Act, copyright protection shall not
subsist in a registered design. This effectively means that one cannot by statue bring a claim
of copyright infringement where one has a registered design under the Designs Act, 2000

Secondly, in Crocs Inc. USA v. Aqualite India Limited4, the Delhi High Court rejected the
maintainability of a suit of passing off for a registered design. The Court ruled that a
registered design couldn’t enjoy protection as a trademark owing to the legislative intent
behind Section 2(d) of the Designs Act Section 2(d) defines a design as “…the features of
shape, configuration, pattern, ornament or composition of lines or colors applied to any
article… but does not include any trade mark as defined in clause (v) of sub-section (1) of
section 2 of the Trade and Merchandise Marks Act, 1958…”

According to Section 2(d), any shape that is capable of being a mark (on account of inherent
or acquired distinctiveness) cannot enjoy protection as a design. Thus, if a mark is registered
as a design, it ceases to be a mark.The Court’s rationale was that allowing a design to register
as a mark would defeat the purpose of Section 2(d). The legislature has limited the protection
for designs. Thus, the Court reasoned that the intent would be defeated, if after the expiry of
20 years, the same features would become a trademark. This would ever green designs and

3
2017(72)PTC1(Bom)

4
2019(79)PTC75(Del)
over protect them. Further, an anomalous situation would arise if one category of marks
would not enjoy protection as a design whereas the other category of design would be able to
enjoy protection as a mark. This would be discriminatory.5

Effectively, this limits the claim in passing off under common law to only additional
features, beyond the design that will now form the trade dress, that is a limited remedy in
comparison to claiming passing off against the entire matter of the design.

This is in some contrast to the Carlsberg judgement6 by a five-judge bench7 of the Delhi
High Court where Carlsberg Breweries had instituted a composite suit for design
infringement and passing off of their “TURBO” beer bottles against Som Distilleries for
manufacturing “HUNTER” beer bottles with numerous similar features and the Delhi High
Court held that a composite suit filed for design infringement and passing off is maintainable
and that remedy for passing off for a registered design can be brought if the said design is
not functioning as a trademark and if the remedy of passing off is claimed for trade dress
infringement or any other similar infringement.
For all accounts, it seems that business entitites would be greater access to both common law
injuries for passing off and remedies against infringement (of both, copy right and trademark
infringement) if trade dresses were subjected to trademark registration as opposed to design
registration.

5
Agarwal, Pankhuri, SpicyIP Fellowship 2019-20: “See You Later, Alligator!” The Delhi High Court
Rejects Crocs’ Suit For Passing Off of Registered Design, April 4, 2019, Available
at:https://spicyip.com/2019/04/see-you-later-alligator-the-delhi-high-court-rejects-crocs-suit-for-passin
g-off-of-registered-design.html
6
Carlsberg Breweries A/S vs. Som Distilleries & Breweries Ltd., C.S.(COMM) 690/2018. Order dated
14.12.2018
7
Justice S. Ravindra Bhat, Justice Hima Kohli, Justice Vipin Sanghi, Justice Valmiki Mehta and
Justice Vibhu Bakhru.