How Can Businesses Protect Their Trade Dress Under Trademark Law? A Brief Overview in International Law

Trade dress refers to the distinctive visual elements of a product, including its packaging, that help consumers identify the product's origin. It can also include elements such as the color, design, shape, texture, size, and configuration of a product.[1]

Trade dress is a component of trademark law, which provides legal protection for intellectual property. This protection ensures that businesses can safeguard the unique look of their products and prevent competitors from using similar visual elements that could confuse consumers.

Trade dress can be protected under trademark law if it meets the following criteria:

1. Distinctiveness: There are two types of distinctiveness under trademark law: inherent distinctiveness and acquired distinctiveness. So, the trade dress must either be inherently unique or have gained distinctiveness through widespread use in the marketplace. It should be able to serve as an indicator of the origin of the product or service.

2. Non-functionality: The trade dress must not be mainly functional, meaning it should not serve a practical purpose beyond its aesthetic value so that it can not be essential to the product’s use or purpose. Elements of a product or packaging that are primarily functional are typically not eligible for trade dress protection. For example, the shape or packaging of a product cannot be protected if it serves a practical function, such as a bottle design that facilitates pouring or storing the product. The rationale for this rule is that functional features are seen as part of the product's utility and should be accessible for competitors to use.

3. Likelihood of confusion: Trade dress must avoid confusing consumers about the origin of the product. In other terms, the trade dress must be unique enough to stop consumers from incorrectly assuming that a product from one company originates from another.

While trade dress can be protected without formal registration, registering the trade dress before the relevant intellectual property office is also possible. The registration process typically involves a search and analysis process, submitting an application, along with supporting evidence -if the relevant intellectual property office requires it- and a description and visual representations of the trade dress.

Registering the trade dress offers several advantages, including the presumption of the validity of the trade dress and its exclusive rights. A registered trade dress also allows the businesses to more easily enforce its rights in court and take legal action against infringing competitors. Remedies for trade dress violations may involve court orders to stop the infringement, financial compensation, and the removal or destruction of the infringing materials. Additionally, companies can take legal action under unfair competition laws if the trade dress is used in a manner that deceives consumers.

Examples of Trade Dress:

Some of the most famous trade dress protections are as follows:

The distinctive packaging of Tiffany & Co.’s Blue Box[2]:

The store layout and product display of Apple[3]:

The visual design of Starbucks' store[4]:

Each of these companies has leveraged trademark law to safeguard their brand identity and stop rivals from replicating their unique trade dress.

Case Examples:

Two Pesos, Inc. v. Taco Cabana, Inc. (1992)[6]

This was the first contemporary trade dress case to reach the Supreme Court, where the Court ruled that a restaurant's interior and exterior design, including the atmosphere, could be protected as trade dress without the need to prove secondary meaning, as long as it was inherently distinctive.

Ciba-Geigy Corp. v. Bolar Pharmaceutical Co., (1982)[7]

In this case, the court affirmed that the color and shape of pill capsules could also be claimed as trade dress.

In conclusion, trade dress is vital in assisting businesses in preserving their brand identity and setting their products in the market. By ensuring that their trade dress is distinctive, non-functional, and unlikely to confuse customers, businesses can rely on trademark law to protect their distinct visual elements and prevent unauthorized copies.