Unveiling Trade Dress: The Art of Branding Beyond Trademarks in the Fashion Industry

Paper Details 

Paper Code: RP-VBCL-38-2025

Category: Research Paper

Date of Publication: April 20, 2025

Citation: Prof. Shusmita Kumari & Prof. Bhavya Gunashekhar, “Unveiling Trade Dress: The Art of Branding Beyond Trademarks in the Fashion Industry", 2, AIJVBCL, 554, 554-566 (2025).

Author Details: Prof. Shusmita Kumari, Assistant Professor at Kritu Jayanti College of law

Prof. Bhavya Gunashekhar, Assistant Professor at Kristu Jayanti College of law

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ABSTRACT

There are two types of property rights one is tangible and the other one is considered to be intangible. Intellectual property rights have been considered to be an intangible asset whose concepts are still booming. Thus, in this paper, the authors delve into the aspect of trade dress which enumerates the product's overall appearance and is considered the subset of trademark. Hence, the concept of trademark is used to differentiate between one product from another product but when it comes to trade dress it just does not speak about the brand name, logo, signature, etc but it also delves into the overall look of the product. So, the Indian legislation on trademark does not expressly mention the term “trade dress” rather the elements of trademark, packaging, and label mention all the elements of trade dress. Therefore, sometimes there is confusion pertaining to trade dress as the protection of the same is not explicitly mentioned.  The overall look of a product sometimes seems appealing and fancy to a lot of layman consumers thus the legislator needs to understand this aspect and accordingly make laws to secure the goodwill of the company if any other company infringes by directly copying the trade dress. Thus, in today’s world trade dress does not simply speak about products' overall appearance but it also includes the look and feel of the website, application, and video games for protection of trade dress. The paper also highlights about the Trade dress being increasingly prominent means of protection for fashion houses in safeguarding their designs which is unique.

Keyword- Trade dress, trademark, get up, visual appearance, fashion

INTRODUCTION

Creations of the mind, including inventions, literary and creative works, designs, names, symbols, and pictures utilized in trade, are referred to as intellectual property. Trade secrets, trademarks, copyrights, and patents legally protect it. Intellectual property rights are crucial for businesses. Companies that invest significant resources in making their products or services unique and distinctive rely heavily on IPR for protection. One effective method of safeguarding their business is through trade dress, which refers to the overall appearance given to a product, store, or service that makes it stand out in the marketplace. Trade dress is often mixed up with trade mark, yet they play a crucial role in preventing consumer confusion and protecting brand identity. The significance of trade dress in the area of intellectual property rights, which falls under the purview of trademarks, will be discussed in this paper with the help of a comparative analysis of different countries on the aspect of trade dress.

THE CONCEPT OF TRADE DRESS: THE ART OF BRAND DIFFERENTIATION

One only needs to see both the products side by side to see the striking similarities between the two products. “It is the overall impression that a customer gets as to the source and origin of the goods from visual impression of colour combination , packaging and the get up , which is of relevance if unwary and gullible customer gets confused and thus it amounts to passing off” Said in Colgate Palmolive Co. Ltd’s Case 2003. [1]

Trade dress in wider term means “get- up” of the product or the overall appearance of a product, which includes the product packaging, its shape, color, design and even the design of a store. It covers every aspect of the business, particularly the size of the product, its container, its label, its design, its visuals, and its writing style.[2]

As the public is likely to view the product's external appearance before making a purchase, trade dress refers to the entire visible external aspect of the goods. When making purchases, customers, particularly those who lack literacy or information, frequently base their decisions on a product's appearance. As a result, it's critical to distinguish one product from another; otherwise, one firm may deceive another by producing a product that is only marginally similar to an existing one.

Hoffman la Roche & Co Vs. DDSA Pharmaceuticals[3] Lord Justice made a noteworthy comment regarding trade dress protection, highlighting the significance of trade dress:

“…goods of a particular get-up just as much proclaim their origin as if they had a particular name attached to them, and it is well known that when goods are sold with a particular get-up for long enough to be recognized by the public as goods of a particular manufacturer, it does not matter whether you know who the manufacturer is...” [4]

 For instance, the shape of the Coca-Cola bottle is distinctive from the other products and is considered to be unique.

Pernod Ricard India, the owner of Blenders Pride whiskey, approached the Supreme Court[5], claiming that J.K. Enterprises, which has been producing whiskey bottles under the London Pride label, had violated their trademark. The owner of London Pride was urged by the Supreme Court of India to alter their trade dress, which was identical to that of the Blender Pride bottle.

Trade attire plays a big part in product promotion. Let's first examine the history and evolution of the trade dress as well as what falls under the purview of trademark infringement before delving into its significance and definition in relation to intellectual property rights.

THE BEGINNING

The vague idea of a trade dress was actually in use in ancient Rome, when businesses would use a distinctive visual representation to identify themselves or their goods.[6] However, the United States officially recognized trade dress under the domain of trademark for the first time in 1946 with the Lanham Act, which included specific provisions for trade dress protection. There were no laws in India that specifically recognized or protected trade dress. It wasn't until the term "trade dress" was included in the definition of trade mark under the 1999 amendment act.[7]

Section 43(a) of the Lanham Act defines trade dress as the overall look and feel of a product or service. This encompasses non-functional elements such as color, shape, packaging, and symbols. The "look and feel" of a product is protected from imitation that could mislead consumers by its overall visual appearance, which includes its packaging, shape, color combination, and design elements. This helps to identify the product's source and set it apart from competitors.

Although the phrase "trade dress" has not yet been defined specifically under the Indian Trademark Act, its meaning can be inferred from the definition of "mark" found in clause 2(m). In addition to 2(zb), a "mark" can be any of the following: a device, brand, heading, label, ticket, name, signature, word, letter, numerical, shape of goods, packaging, or combination of colors. According to the Trademark Act of 1999[8], a "trade mark" is any symbol that may be visually represented and that can be used to differentiate one business's goods or services from another. This can include the shape of the goods, their packaging, and the mix of colors that is unique and effective in setting one person's goods or services apart from another. In India, a person or business must register their trade dress in order to obtain protection. The trade dress is protected for ten years after registration, after which it may be renewed.

THE MEANING AND THE SIGNIFICANCE

According to Merriam Webster, trade dress is “the overall image of a product used in its marketing or sales that is composed of the non-functional elements of its design, packaging, or labelling (as colours, package shape, or symbols).”

Trade dress refers to the visual appearance of a product, often termed as "get-up," which is utilized to distinguish its origin or source from that of similar products or businesses. Product packaging, advertising campaigns, website design, restaurant, retail store interiors, or even the layout of a product itself can all be considered trade dress.

Trade dress is more than just appearance; it is essential in a market where consumers have many options. It directs consumers to a specific manufacturer or brand by acting as a marketer. Through its distinctive and one-of-a-kind qualities, it aids consumers in recognizing the maker or brand. Trade dress is used to avoid confusion when a buyer buys a similar product. This guarantees that companies are not unjustly profiting from the goodwill of well-known brands. For instance in the case of Colgate Palmolive company versus Anchor health and beauty[9], the Colgate company's utilization of the red and white color combination is unique and has been for a very long time. Anchor was therefore not permitted for the same product to use a similar color scheme that Colgate has been using for decades. The court also noted that the general appearance of the two product trade dresses was strikingly similar. Because the consumer is viewed as a layperson, they will be profoundly puzzled by the Colgate product compared to the Anchor one.

With the wave of globalization, privatization, and liberalization, companies are launching innovative products with diverse packaging strategies to attract a large customer base. In today's market, customers are often drawn to visually pleasing aesthetic products, making store visibility strategies essential for retaining existing customers and acquiring new ones. In order to preserve brand identification and consumer trust, trade dress protection goes beyond names and logos to include a product's overall presentation and look, including its shape. Whilst it may not appear necessary at first, trade dress is essential for safeguarding product shapes, which are vital in avoiding consumer confusion.

For example, the design of vodka bottles was at issue in the Gorbatschon Wodka Kg vs. John Distiller Limited[10] dispute before the Bombay High Court. The defendant, who also produced vodka, was the target of an infringement lawsuit brought by the plaintiff. The Honorable CJI D.Y. Chandrachud came to the conclusion that the bottles' shapes were broadly similar, proving that a product's shape may be considered a trademark infringement if it causes confusion for non-experts.

Because of this, trade dress is seen as an important component of any product, and if a company produces a product that looks similar, they have the right to file a trademark infringement lawsuit in the appropriate court.

Trade Dress Infringement includes certain elements which are typically examined for trade dress infringement:

·         Definition

·         Functionality

·         Distinctiveness

·         Likelihood of confusion.

These are the claims which need to be proved besides that any other additional claim might be proved to demonstrate that there is an infringement.  

The common law doctrine of passing off in India plays a crucial role in preventing one company from misrepresenting another by using a similar  trade dress. This doctrine of passing off is particularly relevant in cases involving unregistered trademarks which as well known and that have built a reputation and legacy. It is important for companies to be meticulous about the trade dress they choose for each product. This trade dress should be unique and original, ensuring it does not fall into the realm of infringement.

THE FUNCTIONALITY DOCTRINE

Although trade dress is not specifically regulated in many nations, it is generally accepted that it is challenging to register a trade dress that is an essential component of the product. However, the US Trademark Act has created the laws required to acknowledge and safeguard trade dress, emphasizing how crucial it is that other nations take comparable legislative changes into consideration.

A product's trademark—the visual components that distinguish it from rivals—cannot be violated, even when its functionality can be copied. It is essential to show that the trade dress has a decorative rather than functional function in a claim alleging trade dress infringement.

It's critical to distinguish between patent and trademark protection while discussing the functionality theory. Only after passing specific requirements that demonstrate it is ornamental and not practical is trade dress protection granted:

1. Comparable Alternatives Test: This test determines whether rivals have access to any additional unique design elements. The trade dress is probably not useful and can be protected if such alternatives are available.[11]

2. Essential to Usage Test: A product cannot be deemed a trade dress if a key component of it is necessary for its usage.[12]

3. Test of Relation to Use: This test determines if the trade dress is directly related to the purpose of the goods. If so, it is considered functional and is not protected.

4. Ease of Manufacture Test: A feature is deemed functional and unprotected if rivals can make it for a comparable or cheaper price.

Functional features are covered by patent protection, whereas trade dress protection concentrates on a product's aesthetic qualities. By ensuring that only aesthetically pleasing, non-functional components qualify for trade dress protection, these standards aid in fostering fair competition in the marketplace.

UNRAVELING THE THREADS: TRADEMARK VS. TRADE DRESS

A trademark is a distinguishing mark that identifies the source or origin of a product. It can be a word, symbol, design, or even a sound. Conversely, trade dress describes a product's total appearance which includes its design and packaging, that sets it apart from other like products.

When considering trademarks and trade dresses as forms of intellectual property, it is possible to use both to increase brand recognition. However, the question that arises is whether trademarks and trade dresses are interchangeable, or if they are complementary in some way. When it comes to trademarks, their primary purpose is to differentiate one product from another. However, when it comes to trade dress, trade dress can be used to differentiate a product, even though they are somewhat similar. However, if we take a broader view of trade dress, it encompasses more than just setting one product out from another. It lists the product's "secondary meaning," which normally indicates that it has gained a unique status and that consumers are likely to become confused between two competing products if they have the same appearance.

In the instance of Itc Ltd versus Britannia Industries Ltd, the aforementioned principle was supported by the assertion that it is not necessary for the product to be promoted for a considerable number of years in order to acquire secondary meaning. In the case of Ishi Khosla v. Anil Aggarwal, it was noted that "a creative concept turned into a product can be a hit in the market overnight."

Additionally, it is recognized that the product's trade dress must have a source-identifying purpose in order to be filed as a trade dress passing off suit, rather than only being aesthetically pleasing or attractive. The case of La Opala R.G. Ltd. v. Cello Plast & Ors. also brought this principle to light.

EVOLUTION OF THE TRADE DRESS CONCEPT THROUGH JUDICIAL RULINGS IN INDIA

According to the Delhi High Court's ruling in Colgate Palmolive & Co. vs Anchors Health & Beauty,[13] a trader's goods can be recognized by their overall appearance, or "get-up," which is important in passing-off proceedings. The protection afforded to the outward look and configuration of goods, collectively referred to as the "trade dress," was greatly increased by this verdict. By increasing the level of protection, the court determined that trade dress similarity is a significant component of passing off and may be actionable on its own. This ruling expands the range of legal protection for a product's unique appearance and texture.

The High Court considered a trademark dispute involving the name JAMES BOND in the 2007 case of Cadbury India Limited vs. Neeraj Food Products.[14] The court determined that the name bore a striking resemblance to Cadbury's registered brand GEMS. The court noted that trade dress similarity could manifest in phonetic, visual, or conceptual forms.

In the ITC Limited v. Britannia Industries Limited case, Justice S. Murlidhar stressed the importance of the sales and turnover numbers provided by the Plaintiff in assessing the reputation of the product in a trade dress conflict case.

It was noted in the Pidilite Industries Limited v. Poma-Ex Products case that the Plaintiff's mark "FEVIKWIK" and the Defendant's mark "KWIKHEAL" shared a significant degree of phonetic resemblance. The court determined that consumers were likely to become confused by the two items' general structural and phonetic similarities. It was observed that when a word is employed as a prefix in one mark and as a suffix in another, phonetic resemblance may arise.

A dispute about the well-known luxury shoe brand Christian Louboutin, which is well-known for its red soles, was heard by the Delhi High Court in the 2017 case of Christian Louboutin Sas v. Mr. Pawan Kumar and Ors[15]. The 'RED SOLE' was granted comparable protection to a trademark by the court, which acknowledged it as a well-known trade dress. But in the later case of Christian Louboutin Sas v. Abudekar and Ors[16], the court rejected the red soles' trademark registration, stating that a mark with just one color is ineligible for registration under the Trademark Act, 1999, since section 2(m) of the Act requires a combination of colors.

The Bombay High Court stated in the 2019 case of Merwans Confectioners Pvt Ltd v. M/s Sugar Street & Ors[17] that the applied test for identifying any trade dress infringement focuses on the possibility of misunderstanding, deception, or any confusion that might affect consumers' purchasing decisions. This ruling raised the standard for trade dress violation and changed the requirements, requiring proof of customer confusion.

In the case of M/s M.L. Brothers LLP v. Uma Impact Private Limited &Anr[18]., the court addressed allegations of trade dress infringement and restated the three essential components for proving a passing-off action:

1. Goodwill/Reputation

2. Defendants’ misrepresentation

3. The Plaintiff's Irreparable Loss

These significant decisions demonstrate how India's trade dress laws are adapting and becoming more stringent. The importance of a product's entire appearance in recognizing and safeguarding a brand has been underlined by courts. The decisions have demonstrated that actionable passing-off claims can result from visual, phonetic or conceptual similarities in trade dress. Additionally, when evaluating trade dress violation, sales data, consumer uncertainty, and the possibility of misunderstanding are important considerations.

TRADE DRESS PROTECTION AROUND THE GLOBE: KEY INSIGHTS

United States

In the US, trade dress is regulated under the Lanham Act and to be registered as a trade mark it must be distinctive and non-functional. Regardless of whether the trade dress has been registered or not, a case for infringement may be brought. In the infringement suit the petitioner must show that the infringement is likely to cause consumer confusion and that the trade dress is intrinsically unique or has acquired secondary meaning. Trade dress protection only applies if the owner can demonstrate that if another product were to appear in the same or similar packaging, the typical customer would be perplexed as to where the goods came from. Section 43(a) of the Lanham Act specifically deals with the statutory remedies in this matter.

United Kingdom

Trade dress is protected under the common law of “passing-off”. this is available to trade dresses which are unregistered as well. Those that fraudulently exploit identical designs to capitalize on the goodwill and reputation of the original brand may face legal action. This guarantees the preservation of a brand's visual presentation's integrity and uniqueness.

European Union

The frameworks of unfair competition law and trademark law in the European Union both provide protection for trade dresses. The EU Trademark Regulation and the Directive on the Enforcement of Intellectual Property Rights contain the specific requirements for trade dress protection. The idea of "distinctive character" serves as the main guiding principle for trade dress protection under EU IP law. Protection will not be granted for generic, descriptive, or non-distinctive trade dresses.

DEFINING VISUAL IDENTITY IN THE FASHION INDUSTRY

The fashion sector has a complex battle from generating an idea to turning it into a well-known product and delivering it to the consumer, all the way from designing the product to coming up with the newest design for the client. Since the industry must contend with a protracted struggle of ethical and legal considerations, designing a garment cannot be regarded as a simple task. Therefore, the industry does not just work on design in today's fast-paced world; they also ensure that the design does not violate any intellectual property rights. As a result, the product's quality is sustainable and has no negative environmental effects. Consequently, the fashion business must go a long way to obtain a single product that is unencumbered by ethical and legal disputes.

Trade dress has increasingly become a prominent means of protection for fashion houses in safeguarding their designs. Designers have successfully used trade dress in the fashion business to protect specific non-functional aspects of their products. Examples include the distinctive checkered design found on Burberry's high-end purses, Tiffany & Co.'s emblematic blue box, and Christian Louboutin's famous red-soled heels. Although not essential to the product's operation, these distinguishing characteristics have grown to be essential brand identities, solidifying the companies’ position in the market and enhancing their allure.

Trade dress is an effective way to safeguard a fashion brand from counterfeit products. Well-known fashion brands are particularly vulnerable to counterfeiting, which poses a significant threat. These counterfeit products are often available online, making them more accessible to consumers. For instance, in 2014, Converse filed 31 separate infringement lawsuits[19], claiming that the trade dress of its iconic Chuck Taylor All Star shoes had been infringed upon. The appellate court ruled in favor of Converse, stating that the trade dress had acquired secondary meaning or distinctiveness among consumers.

However, proving trade dress can be challenging. For instance, Louboutin was unable to demonstrate that Yves Saint Laurent had infringed upon their trade dress[20]. The court acknowledged that Louboutin held a trademark on red soles, but did not grant them a monopoly over all shoes with red soles, particularly since Yves Saint Laurent's shoes were entirely red.

In a case of trade dress infringement, it is crucial to demonstrate that the trade dress has acquired a secondary meaning. This means that customers recognize the product by its trade dress, rather than its logo. The court has established several factors that determine secondary meaning:

1. Plaintiff’s advertising expenditures

2. Consumer surveys linking the trade dress to a particular source

3. Sales success

4. Unsolicited media coverage

5. Attempts to plagiarize the trade dress

6. The length and exclusivity of the use[21]

Mr. T.J. Singh of the House of Valaya made history by becoming the first Indian company to protect their design, the "Valaya Diasun" pattern, as both a trademark and a work of art[22]. Trade dress serves as a powerful communication tool, helping customers identify the origin or designer of a product. This not only aids in making informed choices but also ensures the goodwill of the company not being misused.

CONCLUSION

Although the concept of trade dress was first introduced in the United States, it has long been accepted and utilized in India through court decisions and interpretations. In today's global economy, where numerous businesses are entering the market, trademark infringement cases, particularly those involving trade dress, are frequent. As India emerges as a major economic force, disputes over various intellectual property rights, including trademarks, will inevitably grow. This emphasizes the critical need to understand and protect trade dress to maintain brand integrity and fair competition.

In the fashion industry, trade dress is crucial to brand identity. It goes beyond simple trademarks to capture a brand's entire visual and artistic character, making it an effective tool for standing out in a crowded market. By safeguarding the distinctive design features and presentation of their products, fashion brands can secure their place in consumers' minds, ensuring their creativity and innovation are recognized and valued. As the global economy evolves, it is essential for countries to enact comprehensive trade dress protection legislation to help brands leverage this critical aspect of their identity and maintain a competitive edge.

Given India's lack of specific laws and the increasing globalization of business, it is imperative that trade dress be carefully understood and recognized to preserve fair competition and brand integrity, especially in the fashion industry. Trade dress is a valuable tool for brand protection and is expected to become increasingly important across many sectors. Therefore, it is essential for legislation to be prepared to address this evolving need.

* Shusmita Kumari, Assistant Professor at Kritu Jayanti College of law

** Bhavya Gunashekar , Assistant Professor at Kristu Jayanti College of law

[1] Ashwani kumarrbansal , Book on Law of Trademark,

[2] Passing off and the Law on ‘Trade Dress’ Protection: Reflections on Colgate v Anchor Anu Tiwari† The West Bengal National University of Juridical Sciences, N U J S Bhawan, 12 L B Block, Sector-III, Salt Lake, Kolkata 700 098 Received 20 April 2005, revised 16 August 2005

[3]Judgment of the Court of 13 February 1979. - Hoffmann-La Roche & Co. AG v Commission of the European Communities. - Dominant position. - Case 85/76.

[4]Hoffmann-La Roche & Company A.G. V. D.D.S.A. Pharmaceuticals Limited, Reports of Patent, Design and Trade Mark Cases, Volume 82, Issue 15, 9 December 1965, Pages 503–514, https://doi.org/10.1093/rpc/82.15.503

[5][2024] 4 S.C.R. 664

[6] Thomas S. O'Connor, Trade dress: The increasing importance of an ancient yet new form of intellectual property protection, Journal of Business Research, Volume 67, Issue 3, 2014, Pages 303-306, ISSN 0148-2963, https://doi.org/10.1016/j.jbusres.2013.05.017.

[7] Sec 2 of trade mark act 1999

[8] The Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999, § 9 (3).

[9]108(2003)DLT51

[10]2011 (47) PTC 100 (Bom)

[11] B.I. Johnson, “Trade Dress Functionality: A Doctrine in Need of Clarification”, 34(1) Campbell Law Review 125 (2011).

[12]  Arpana Tyagi , “Viewing trade dress protection from the lens of Indian legal framework” NLUA journal of Intellectual Property Rights (2022)

[13]108(2003)DLT51

[14]142(2007)DLT724

[15]CS COMM–714/2016

[16] RFA (OS)(COMM) 13/2018 & CM 29064/2018

[17] CS(L) NO.1100 OF 2019

[18] CS(COMM) 132/2019

[19]Converse, Inc. v. International Trade Commission, No. 16-2497 (Fed. Cir. 2018)

[20] Christian Louboutin, S.A. v. Yves Saint Laurent Am. Holding, Inc., 2012 WL 3832285 (2d Cir. Sept. 5, 2012)

[21] https://www.whipgroup.com/blog/court-says-i-dont-to-wedding-gown-trade-dress-claim/

[22]wipo (2006) in A Stitch in Time - Smart Use of Intellectual Property by Textile Companies. Geneva, Switzerland: :World Intellectual Property Organization, https://www.wipo.int/export/sites/www/sme/en/documents/guides/customization/stitch_in_time_pa.pdf.