INTRODUCTION
The recent ruling by the Bombay High Court in favor of Reliance Industries, protecting the IP rights in CAMPA, has reignited discussions on the legal protection of trade dress, particularly in the context of product packaging.
Product packaging encompasses the design, material, and overall presentation used to enclose, protect, and market a product. Beyond its functional role of safeguarding goods from damage, packaging serves as a powerful communication tool between brands and consumers. The visual and aesthetic aspects of packaging often act as unique identifiers for a brand, fostering consumer recognition and trust.
However, unauthorized use of deceptively similar packaging not only leads to consumer confusion but can also pose risks to public safety and health. Given the commercial and consumer significance of product packaging, it becomes crucial to protect its distinctive elements from misuse.
Both trademark and copyright law offer avenues for such protection, which inevitably results in an overlap between the two legal frameworks. This discussion will explore the interplay between trademark and copyright laws in safeguarding product packaging.
COPYRIGHT PROTECTION OF PACKAGING
Every product packaging consists of various elements such as drawings, logos, product information, and other visual components. Copyright law primarily protects the artistic elements of packaging, including drawings, photographs, logos, or other creative works that meet the threshold of originality and creativity. For instance, the photograph of a heart-shaped bowl on the Cheerios cereal box was granted copyright protection as it demonstrated sufficient creative expression.
Even in cases where individual creative elements are absent, copyright can subsist in the overall creative arrangement of the packaging. In Parle v. Future Group, the Bombay High Court upheld copyright protection for the product packaging of MONACO, KRACKJACK, and HIDE & SEEK against the defendant’s infringing products. The Court, upon a prima facie comparison, noted clear instances of copying and consequently granted interim relief to the plaintiff.
However, copyright law comes with certain limitations. Firstly, it provides protection only for a limited duration typically the lifetime of the author plus sixty years. Secondly, it does not extend protection to titles or names. Thirdly, generic or common drawings such as common geometric shapes, simple color variations, and words and short phrases, cannot be copyrighted unless presented in a sufficiently creative manner. For instance, if a person is using an image of the rising sun in a creative manner, he is eligible for copyright protection. The same is not true for trademark law which offers protection to generic names if it has acquired distinctiveness.
TRADEMARK PROTECTION OF PRODUCT PACKAGING
Indian trademark law extends its protection to product packaging, recognizing its critical role in distinguishing the goods of one entity from another while leaving a lasting visual impression on consumers. Elements such as the overall design, colors, logos, and the shape of packaging can be trademarked. For instance, the iconic contour shape of the Coca-Cola bottle and its distinctive red-and-black color combination are protected under the Trademark Act as shape and color marks respectively.
The overall appearance of a product, known as trade dress, includes various components like shape, size, color combinations, textures, graphics, and packaging design all of which contribute to the product’s visual appeal. Trade dress protection extends to unconventional marks, such as 3D marks, shapes, and other non-traditional identifiers, provided they are either inherently distinctive or have acquired distinctiveness through extensive use.
The recognition of trade dress in India was prominently established in Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd., where the court protected Colgate’s red-and-white color combination of the product and held that the overall similarity should be considered over the minute dissimilarities for the action of passing off.
Similarly, in Parle Products (P) Limited v. J.P. & Company, the court examined the defendant’s biscuit packaging and compared it with the plaintiff’s Parle-G packaging. The court held that the defendant’s packaging was not only non-distinctive but also caused consumer confusion, rendering it deceptive and misleading.
Herein the court has applied the anti-dissection rule to protect the packaging as a whole. Though the figurative elements and the word marks of the packaging can be protected through separate applications, they are viewed as a whole.
THE OVERLAP BETWEEN THE COPYRIGHT AND TRADEMARK
When we examine product packaging, such as a wrapper, we encounter several elements, including product information, artistic logos, color combinations, and more. With the exception of product information, the other elements typically fall under either copyright or trademark protection. There are no restrictions preventing the combination of copyright and trademark protection for a business or its specific product. However, the key restriction is that the same subject matter cannot be protected under both copyright and trademark law. According to the proviso in Section 45(1), if an applicant wishes to register any artistic work that could be used in connection with goods or services, the applicant must submit an affidavit confirming that the work has not been registered under the Trademark Act. The applicant should also submit a No objection certificate issued by the registry confirming that no trademark identical to or deceptively similar to the artistic work has been registered or is being sought to be registered by anyone other than the applicant. This certificate is valid for one year, and the application for registration of the artistic work must be filed within that year. Additionally, Section 11(3)(b) of the Trademark Act, 1999, specifies that any artistic work that is similar to, the same as, or infringes upon the copyright of another will not be eligible for registration for Trademark.
Therefore, rather than seeking protection under either copyright or trademark alone for their packaging, brands can maximize their protection by combining both intellectual property rights. For example, a brand can seek trademark protection for its word mark while obtaining copyright protection for its logo. Companies like Coca-Cola and KFC effectively use a combination of trade secrets, copyright, trademark, and trade dress to maximize their legal benefits.
CONCLUSION
In conclusion, before seeking protection for any artistic work under trademark or copyright law, it is essential to evaluate which option offers the greatest benefit based on factors such as the process, time frame, and future use of the work. Both trademark and copyright laws have their own advantages and limitations. For example, trademark law requires proof of the likelihood of confusion between conflicting packaging, a condition not applicable under copyright law. Therefore, it is crucial for attorneys to thoroughly assess all relevant aspects before deciding the most suitable form of protection for packaging, whether under trademark law, copyright law, or a combination of both.
Written by Khushee Runthala, Assessment interns @Intepat IP.
