i.
Trade Dress or Get up is a term that generally refers to the commercial image or characteristics of a product or its overall packaging. A trade dress would serve as the source or badge of origin of a product to the consumers. The distinguishing features might include but not limited to the shape and design of the product, the colour scheme/combination used, shape, texture, size, etc. Trade dress could also be described as the look and feel of the product. Trade dress may be utilized by an inexperienced and or reasonable consumer to distinguish between products.
Traditional trade mark law deals with phrases, logos, emblems, words, etc. which are used to identify the origins of the product or service to distinguish different products from each other. On the other hand, trade dress deals with all the elements that have to do with the look and feel or appearance of the product which are used to promote a specific product or service.
The concept of trade dress was first recognised in the United States of America and the principles of trade dress protection and enforcement were developed there too.
ii.
Trade dress is a form of intellectual property that could be registered just like a trademark. Section 2 of the Trade Marks Act №194 of 1993 (“the Act”) defines a mark as
“any sign capable of being represented graphically including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned”.
Section 9 provides that a trade mark shall be capable of distinguishing if it is inherently capable of so distinguishing or if it is capable of distinguishing because of prior use. In principle, the definition of a mark is wide enough to include trade dress protection of a product.
A trademark can be defined as a word or phrase associated with a brand whilst trade dress can be seen as the visual impression of the brand, think about the Coca-cola bottle or DKNY fragrance packaging. An ordinary buyer would be able to identify the origin of the product from the way it looks or packaged. The purpose of a trade dress is to protect consumers from being deceived into buying a product that is imitating the look of another product.
iii.
Trade dress affords brands a mechanism to protect the visual representation of their product from infringement e.g. dilution. However certain requirements need to be met for the look and feel of a product or service to warrant trade dress protection.
For trade dress to be afforded protection it must:
- not be functional; and
- be inherently distinctive or have acquired secondary meaning.
Functionality
- the trade dress should only have an aesthetic function and not utilitarian. For example, the Grosch swing top is very distinctive however it cannot be protected as a trade dress as the swing top serves to open and close the bottle. Essentially the trade dress should not a direct correlation to the use and purpose of the product/service
Inherently distinctive/Secondary Meaning
- Inherently distinctive just means that the trade dress is unique from the onset to separate itself from the competition, for example, the Coca Cola bottle.
- Secondary meaning results when consumers have started to identify the product or service through its trade dress. Meaning that society would have developed an automatic association of the trade dress with the producer of the goods or services. For example, Apple, the word apple has a primary meaning, however many people recognize it for its secondary meaning. The secondary meaning here is referring to a particular brand of computer and not just computers in general.[1]
A trade dress can achieve secondary meaning through:
a) High volumes of advertising the product/service;
b) High volumes of sale;
c) The length of time in which the trademark was used; and
d) The extent that the public identifies the name with the mark’s product /service.
iv.
For a brand, trade dress is important as it may lead consumers to recognize it’s product/service. Trade dress allows a business to capitalize on the goodwill that consumers have come to associate with a company’s products or services, and prevent imposters from passing off their products as those associated with the original trade dress owner.
A great example of this is when in 2009 Tiger Brands which produces Koo Baked Beans sought to stop Emirates industries from imitating Koo baked beans products packaging.
The then Advertising Standards Authority (ASA) ordered Emirates Industries to withdraw the packaging of its Mister Bean Baked beans product. The ASA concluded that the similarities between the two packages were striking. The ASA found that Emirates was imitating Tiger Brands Koo baked beans packaging.
