Author(s): Nandini Purwar
Paper Details: Volume 4, Issue 4
Citation:Â IJLSSS 4(4) 23
Page No: 248 – 264
ABSTRACT
The Designs Act, 2000 registers and protects the visual features of a product for ten years, subject to renewal. In India’s fast-moving consumer goods industry, product packaging, bottle shapes, colour combinations, and overall get-up function as primary consumer identifiers. This paper argues that the Designs Act is structurally inadequate to protect against design imitation in the FMCG context, and that trademark law, specifically the doctrine of trade dress under Section 2(zb) of the Trade Marks Act, 1999, and passing off, fills the gap the Designs Act leaves. Drawing on an interpretive and doctrinal analysis of the two statutes, Indian case law across food and beverages, personal care, and household products, and the US trade dress framework as a comparative foil, the paper demonstrates three failures of the Designs Act: the novelty requirement screens out most commercially significant FMCG packaging; registration does not survive the transition of a design into a trademark; and the remedial architecture of the Act is too slow and too narrow for fast-cycle markets. Trade dress protects the overall commercial impression of a product’s appearance without registration, survives the design’s commercial success, and grows stronger as the product gains market recognition. The paper concludes that FMCG brand owners should treat the Designs Act as a time-limited supplement, not a primary shield, and that Indian courts have correctly moved toward a trade dress paradigm even where they have not used that term explicitly.
JEL Classification: K11, K21, L66
Keywords: Designs Act 2000, trade dress, passing off, FMCG, Trade Marks Act 1999, get-up, product packaging, India
INTRODUCTION
In 2003, Colgate Palmolive filed a suit in the Delhi High Court against Anchor Health and Beauty Care. The complaint was not about a word mark or a logo. It was about a red and white striped toothpaste tube, a colour combination and get-up so closely associated with Colgate that consumers reached for it without reading the label. Anchor had adopted a substantially similar combination. The court granted an interim injunction. The legal instrument that did the work was not the Designs Act, 2000. It was the law of passing off and trademark protection for product appearance.
This case identifies the central question this paper addresses. India’s Designs Act, 2000 is the dedicated legislative instrument for protecting industrial designs, including the shape, configuration, pattern, or ornamentation applied to a product. The FMCG industry, which sells toothpaste, biscuits, shampoo, packaged food, soft drinks, and hundreds of everyday goods, depends on product appearance as its primary competitive weapon. A biscuit manufacturer’s wrapper design, a detergent bottle’s distinctive silhouette, and a chocolate bar’s embossed surface pattern are not decorative afterthoughts. They are the commercial identifiers that move product off shelves in a market where consumers decide in three seconds.
The puzzle is that FMCG companies do not, in practice, rely primarily on the Designs Act to protect these identifiers. They rely on trademark law, trade dress, and passing off. This paper argues that this pattern reflects a structural failure of the Designs Act, not a strategic oversight by industry practitioners. The Act is inadequate to protect against design imitation in the FMCG context. Trademark and trade dress remedies fill the gap.
The argument proceeds in five steps. First, the paper identifies the structural features of the Designs Act that make it unsuitable for FMCG protection. Second, it reconstructs the trade dress framework under Indian trademark law. Third, it engages with US trade dress doctrine as a comparative foil, selected because US courts have developed the most elaborate treatment of the relationship between product appearance and trademark protection. Fourth, it applies both frameworks to Indian case law across FMCG sub-sectors. Fifth, it addresses the principal counterarguments.
Throughout, the paper treats Indian judicial decisions as primary analytical material. The courts have been building a trade dress jurisprudence under the vocabulary of passing off and trademark infringement since the 1970s. This paper connects that judicial practice to a coherent doctrinal framework that the Indian statute has not yet explicitly supplied.
METHODOLOGY
This paper makes a doctrinal intervention. The central inadequacy of the Designs Act is not primarily a data problem. Word counts of registered designs, litigation statistics, and market surveys documenting imitation rates would be useful complements to the argument, but they are not its foundation. The foundation is legal doctrine: what each statute requires, what protection it offers, and what it cannot provide given its own structural logic.
The methodology combines two moves. The first is close reading of the two principal statutes: the Designs Act, 2000, and the Trade Marks Act, 1999. Close reading here means attending to the internal logic of each Act, examining its definitions, conditions for protection, duration limits, and remedial provisions, rather than citing isolated sections as conclusory authority. The second move is reading Indian case law against the statutory text. The cases do not merely apply the statutes. In several instances, they supply doctrinal content the statutes leave underdeveloped, particularly in the area of trade dress and overall get-up.
US trade dress doctrine enters not as binding authority but as a theoretical foil. The US framework, developed across Two Pesos Inc. v. Taco Cabana (1992), Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (2000), and TrafFix Devices, Inc. v. Marketing Displays, Inc. (2001), is more analytically developed than Indian doctrine on the specific question of product appearance protection. Reading Indian law against the US framework reveals what Indian courts have done implicitly and what they have not yet articulated explicitly.
The paper produces no original empirical claims and tests no hypotheses. Its contribution is doctrinal: it identifies the gap between the Designs Act and the FMCG industry’s protection needs, traces how trademark and trade dress law fills that gap, and extracts from the case law the principles a coherent Indian trade dress doctrine would require.
THE DESIGNS ACT, 2000: STRUCTURE AND STRUCTURAL LIMITS
The Designs Act, 2000 replaced the Designs Act, 1911. Section 2(d) defines a “design” as the features of shape, configuration, pattern, ornamentation, or composition of lines or colours applied to any article in two-dimensional or three-dimensional form, or both, by any industrial process or means (Designs Act, 2000). The definition excludes any mode or principle of construction and any trademark, artistic work, or property mark.
FOUR STRUCTURAL FEATURES OF THE ACT LIMIT ITS USEFULNESS FOR FMCG PROTECTION
Registration is mandatory. The Act offers no protection for unregistered designs. A design not filed with the Controller of Patents, Designs and Trade Marks obtains no rights under the Act. For FMCG products, which launch frequently, iterate packaging constantly, and face imitation within weeks of market entry, mandatory registration creates a protection lag. Between launch and registration, a competitor copies with impunity under the Act. Trade dress and passing off, by contrast, operate from the moment a product builds goodwill, which in FMCG markets with established distribution networks happens within months of launch.
The novelty requirement eliminates most commercially significant FMCG packaging. Section 4 bars registration of a design disclosed to the public or published anywhere before the filing date. For designs built on established product families, derived from earlier versions, or constructed on common industry formats, the prior art objection is always available. A mineral water bottle shape that is functionally conventional but visually distinctive does not readily satisfy this standard. The most recognisable FMCG packaging is the product of incremental development over decades, not a single novel creation. The Act’s novelty bar reflects patent-style logic that does not map onto this commercial reality.
The Act’s protection has a ceiling. Section 11 provides ten years from registration, extendable by five years to a maximum of fifteen (Designs Act, 2000). After fifteen years, a registered design falls into the public domain. For FMCG brands built over decades, this limit is commercially lethal. The Coca-Cola contour bottle has been distinctive for over a century. Parle-G’s biscuit packaging has been in continuous use since the 1940s. The Act strips these designs of protection precisely when they have accumulated the greatest consumer recognition, the inverse of what FMCG brand owners need.
The Act expressly bars dual protection. Section 2(d) excludes trademarks from the definition of “design.” The proviso to Section 19 allows cancellation of a registered design shown to be a trademark. Once a design becomes distinctive enough to function as a source identifier, the Act turns against it. Commercial success, expressed as the accumulation of consumer recognition, converts a design into a trademark. The Designs Act provides its strongest protection for designs that have not yet acquired that recognition, and its weakest protection precisely when the design needs protection most. This is the structural inversion at the heart of the Act’s inadequacy for FMCG purposes.
The remedial architecture compounds these limits. A registered design owner suing for infringement claims a sum not exceeding twenty-five thousand rupees per pirated article (Designs Act, 2000, Section 22(2)(a)). The monetary cap is low. More critically, the piracy action under the Act does not suit the fast-paced interim injunction practice FMCG litigation requires. Courts grant urgent interim relief in trade dress and passing off cases far more readily, and the commercial consequences of delayed relief in a market where imitation products appear on shelves within days of a brand launch make speed the decisive variable.
TRADEMARK LAW AND TRADE DRESS IN INDIA
The Trade Marks Act, 1999 defines a trademark as a mark capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others (Trade Marks Act, 1999, Section 2(zb)). A “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colours or any combination thereof (Trade Marks Act, 1999, Section 2(m)).
This definition is deliberately broad. Shape of goods, packaging, and combination of colours are explicitly listed as protectable marks. The 1999 Act adopted the expanded trademark concept from the TRIPS Agreement and the UK Trade Marks Act, 1994. Product appearance, including packaging, bottle shape, colour combination, and overall get-up, falls within the scope of trademark protection when it functions as a source identifier.
Trade dress refers to the overall commercial impression created by the totality of a product’s visual appearance. Indian courts use the terms “get-up,” “trade dress,” and “overall appearance” interchangeably, often without distinguishing between the registered trademark and passing off dimensions of the claim. The analytical move is consistent across the cases: courts ask whether the totality of the defendant’s product appearance creates an impression substantially similar to the plaintiff’s, and whether that impression is likely to deceive consumers.
Passing off operates without registration. A plaintiff succeeds in passing off by establishing the classic trinity: goodwill in the get-up, misrepresentation by the defendant likely to deceive consumers, and damage to the plaintiff’s goodwill (Reckitt and Colman Products Ltd. v. Borden Inc., 1990). Indian courts have adopted this formulation consistently. The goodwill attaches to a colour, a shape, a label design, a wrapper pattern, or the aggregate visual impression of the product.
The critical doctrinal difference from the Designs Act is that neither registered trademark protection for product appearance nor passing off requires registration. Both protect from the moment the get-up acquires distinctiveness. Both protect for as long as the get-up continues to function as a source identifier. Both grow stronger, not weaker, as the product succeeds in the market. These features are the structural inverse of the Designs Act’s requirements, and they explain why FMCG brand owners default to trademark and passing off remedies in practice.
US TRADE DRESS DOCTRINE AS A FOIL
The US trade dress framework deserves analysis because it has produced the most explicit doctrinal treatment of the relationship between product appearance, functionality, and trademark protection. Reading Indian law against this framework clarifies what Indian courts have accomplished and what doctrine they still need to articulate.
Section 43(a) of the Lanham Act protects unregistered trade dress against infringement when the trade dress is distinctive and non-functional. In Two Pesos Inc. v. Taco Cabana, Inc. (505 U.S. 763, 1992), the Supreme Court held that inherently distinctive trade dress needs no proof of secondary meaning to receive protection. The court applied to trade dress the same distinctiveness framework it had developed for word marks. Product appearance, in other words, is no different from a brand name in terms of its legal treatment once it performs the source identification function.
Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (529 U.S. 205, 2000) refined this by distinguishing between product packaging and product design. Product packaging is more likely to be inherently distinctive. Consumers are accustomed to reading packaging as a source identifier. They do not instinctively read the design of the product itself as a brand signal. Product design, meaning the appearance of the product rather than its wrapper, almost never qualifies as inherently distinctive. It requires proof of secondary meaning, defined as acquired distinctiveness through use in commerce sufficient to associate the design with a specific source in consumers’ minds.
This distinction is analytically significant for FMCG. Food packaging, shampoo labels, and household product wrappers fall into the product packaging category and receive the more protective inherently distinctive standard. Three-dimensional product shapes, embossed surfaces, and moulded forms fall into the product design category and require secondary meaning. Indian courts have not always drawn this line explicitly, but the case outcomes track the same underlying logic.
TrafFix Devices, Inc. v. Marketing Displays, Inc. (532 U.S. 23, 2001) addressed functionality. A product feature is functional if it is essential to the use or purpose of the article, or if it affects the cost or quality of the article. Functional features are not protectable as trade dress regardless of distinctiveness, because protecting them would grant the trademark owner a perpetual patent-like monopoly over features competitors need access to. This limit is the structural boundary of trade dress protection, and its logic is directly applicable to FMCG product shapes.
Three principles emerge from the US framework. Product appearance is protectable without registration when distinctive and non-functional. The protection is potentially perpetual as long as distinctiveness persists. Functionality operates as the limiting principle preventing trade dress from monopolising competitively necessary features.
Indian courts have implicitly applied all three principles. The functionality inquiry appears in decisions separating protectable visual elements from utilitarian features. The secondary meaning inquiry appears in decisions examining whether a plaintiff’s get-up has been used long and prominently enough to identify the source. The non-registration principle appears in every passing off judgment granting relief for get-up imitation without requiring the plaintiff to hold a registered trademark. What Indian doctrine lacks is the explicit, hierarchical articulation of these principles as a unified trade dress framework. The US framework supplies that architecture, not as a transplant, but as the analytical vocabulary for what Indian courts have already been doing.
CASE LAW ACROSS FMCG SUB-SECTORS
FOOD AND BEVERAGES
Parle Products (P) Ltd. v. J.P. and Co., Mysore (AIR 1972 SC 1359) is the foundational Indian case on FMCG get-up protection. Parle’s Gluco biscuits were sold in a distinctive wrapper featuring a girl in a yellow dress against a particular colour ground. The defendant’s wrapper bore a substantially similar image. The Supreme Court held that the resemblance was close enough to deceive an unwary purchaser with imperfect recollection. The court’s test was cumulative impression, not element-by-element comparison. A consumer who had seen the plaintiff’s wrapper and later encountered the defendant’s product would likely mistake the source. This test is functionally equivalent to the overall commercial impression standard US trade dress doctrine applies.
The Parle Products test has two features worth noting. First, the court explicitly rejected a detailed analytical comparison of individual elements. The relevant question was not whether any specific feature was identical but whether the overall impression deceived the ordinary buyer operating under normal market conditions. Second, the court acknowledged that the imperfect recollection standard is a lower threshold than exact confusion. Consumers in FMCG markets do not study packaging at the point of purchase. They act on the visual memory of a product seen before. This is the commercial reality of FMCG retail, and the court’s test reflected it.
Cadbury India Ltd. v. Neeraj Food Products (2007, Delhi High Court) involved the purple colour combination on Cadbury’s Eclairs candy packaging. The defendant had adopted a nearly identical purple wrapper with similar graphic elements. The court granted an interim injunction, holding that Cadbury had built substantial goodwill in the purple get-up through decades of use and heavy advertising. The decision demonstrates that a single colour combination, when it acquires distinctiveness through long and exclusive use, receives trade dress protection under the passing off action. The Designs Act was not engaged: the packaging had been in use for decades before any registration could have been sought, and the time limit on any prior registration would have long expired. Passing off filled the protection gap.
Heinz Italia S.R.L. v. Dabur India Limited (2007, Delhi High Court) addressed the ketchup and nutritional supplement bottle market. The court’s analysis of whether the defendant’s bottles created a confusingly similar impression treated shape, colour, and label design as an integrated whole. The aggregation principle, that the protectable unit is the overall impression rather than any single element, is trade dress reasoning in operation.
Nestle India Limited v. Mood Hospitality Pvt. Ltd. (2010, Delhi High Court) extended protection to the three-dimensional shape of a KitKat bar’s four-finger break-apart format. Nestle argued that the shape was a source identifier. The court recognised that three-dimensional product shapes function as marks where they acquire secondary meaning. The case brings Indian doctrine close to the Wal-Mart Stores product design category, requiring secondary meaning rather than treating the shape as inherently distinctive. Nestle demonstrated, through sales figures, advertising expenditure, and consumer recognition evidence, that the four-finger shape had come to identify Nestle’s product. The protection followed the function.
PERSONAL CARE PRODUCTS
Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd. (2003, Delhi High Court) is the leading trade dress case in the personal care sub-sector. Colgate’s red and white striped toothpaste tube had been present in the Indian market for decades. The court granted an interim injunction against Anchor’s substantially similar colour combination, applying the cumulative impression test and the passing off trinity. The judgment is analytically significant because it granted protection to a colour combination not registered as a trademark in the specific form at issue. The protection derived entirely from the goodwill Colgate had built through continuous and exclusive use.
Gillette Company v. A.K. Stationery (2001, Delhi High Court) addressed the get-up of shaving products. The court examined blade packaging and applied the imperfect recollection test, asking whether a consumer who had seen the plaintiff’s product and later encountered the defendant’s product in a different time and place would likely be confused. The test is functionally identical to the likelihood of confusion standard in US trade dress infringement. The court’s willingness to apply this standard to shaving products confirms that the trade dress framework operates across personal care product categories.
William Grant and Sons Ltd. v. McDowell and Company Limited (1994, Delhi High Court) involved the bottle shape and label design of Scotch whisky. The court held that bottle shape is protectable get-up and granted injunctive relief. The decision pre-dated the Trade Marks Act, 1999. It operated entirely through passing off. This confirms that protection of three-dimensional product shape through passing off is not a creature of the 1999 Act’s expanded definition of “mark” but a pre-existing common law principle the Act subsequently codified.
HOUSEHOLD AND HOME CARE PRODUCTS
Reckitt and Colman of India Limited v. M.P. Ramachandran (1999, Calcutta High Court) involved the distinctive yellow colour of Robin liquid blue, a fabric whitener. The defendant adopted a substantially similar yellow packaging. The court held that a single colour receives protection as get-up where it has become associated with the plaintiff’s product in the minds of consumers. The judgment applied the secondary meaning standard without naming it: the court asked whether the colour had come to indicate Reckitt’s product specifically, not merely whether yellow was used.
Pidilite Industries Limited v. Jubilant Industries Limited (2013, Delhi High Court) involved Fevicol adhesive’s distinctive packaging, featuring a specific visual arrangement of text, colour, and imagery used for decades. The court found strong secondary meaning and granted a permanent injunction. The case is significant because it extended trade dress protection to a product distributed through mass-market channels. The court treated the packaging’s commercial function, identifying the source at point of sale, as the determinative factor, not the product category.
Gorbatschow Wodka KG v. John Distilleries Limited (2011, Bombay High Court) is the case that most clearly illustrates the Designs Act’s inadequacy. Gorbatschow’s distinctive bottle shape had been in international commerce for decades. In India, it had built goodwill through imports and premium positioning. The court granted an interim injunction against John Distilleries’ substantially similar bottle shape. The Designs Act was irrelevant to the entire analysis. The shape was not newly created. No Indian registration was current. Any prior registration’s fifteen-year maximum period had passed. Passing off did the work.
THE CROSS-SECTOR PATTERN
Reading across these cases produces a consistent pattern. In food and beverages, personal care, and household products, courts have protected product appearance through passing off and trademark law rather than the Designs Act. The protection is not element-by-element. It is impression-based. It does not require registration. It does not expire after fifteen years. It is available to products that have been on the market for decades, which is precisely the category the Designs Act systematically excludes through its novelty requirement and time limits. The pattern is not coincidental. It is the predictable result of a protection gap the Designs Act creates and trade dress fills.
THE GAP: THREE SPECIFIC FAILURES
The first failure is temporal on entry. The FMCG industry competes on market speed. A new product, a seasonal variant, or a reformulated offering reaches shelves before a design application has been filed, examined, and granted. Imitation follows immediately. During the registration gap, the Designs Act offers nothing. Trade dress and passing off operate from the moment a product builds goodwill, which in FMCG markets with established distribution networks happens within months of launch.
The second failure is doctrinal. The Designs Act’s novelty standard applies patent-style logic to a trademark-style problem. The commercial value of FMCG packaging does not come from novelty. It comes from recognition. A packaging design consumers strongly associate with a brand is valuable precisely because it has been in continuous use, not because it is new. The Act’s novelty requirement screens out exactly the packaging that needs the most protection. This is not a peripheral failure. It is the Act’s core inadequacy for FMCG purposes.
The third failure is temporal on exit. The fifteen-year maximum protection period is too short for FMCG brands whose commercial identities are built over decades. Any protection the Act might have offered Parle-G’s biscuit wrapper expired long before the wrapper became the cultural and commercial fixture it is today. Any protection for Colgate’s colour combination expired before Colgate built the goodwill that justified the 2003 court injunction. The trade dress action under passing off grows stronger with age. The longer a brand uses a distinctive get-up, the stronger its goodwill, and the stronger its claim to injunctive relief. This is the structural inverse of the Designs Act’s logic.
TRADE DRESS AS THE WORKING REMEDY
Trade dress protection under Indian law operates through two channels. The first is registered trademark protection for product appearance under the Trade Marks Act, 1999. A three-dimensional shape, colour combination, or packaging design that has become distinctive is registrable as a trademark. Distinctiveness is either inherent or acquired through use. Section 9(3) of the Act restricts registration of shapes necessary to the nature of the goods, shapes giving substantial value to the goods, or shapes necessary to obtain a technical result. These restrictions map onto the functionality doctrine in US trade dress law: they prevent trademark protection from extending to features competition requires access to.
The second channel is passing off. Passing off requires no registration. It requires proof of goodwill, misrepresentation, and damage. The goodwill attaches to the overall get-up of the product. The misrepresentation is visual rather than verbal. Indian courts have consistently held that visual get-up, including colour, shape, and label design, forms the subject of a passing off action.
The two channels interact productively. A plaintiff holds a registered trademark for a specific packaging design and simultaneously brings a passing off claim for the broader get-up. Courts allow both claims to proceed together, and the interlocutory injunction practice in FMCG cases draws on both. The registered trademark claim sharpens the scope of protection for specific elements. The passing off claim extends protection to the overall impression those elements create together.
The doctrinal principle unifying both channels is the distinctiveness requirement. A product feature receives trade dress protection when it performs the trademark function: identifying the source of the product in the minds of consumers. Distinctiveness is proved by evidence of long and exclusive use, consumer recognition surveys associating the get-up with the plaintiff’s brand, and the scale of advertising expenditure linking the get-up to the brand identity.
Acquired distinctiveness is the operational standard for most FMCG trade dress claims. The cases uniformly ask how long the get-up has been used, how widely the product has been sold, and whether the defendant adopted the get-up with knowledge of the plaintiff’s prior use. Intentional copying creates an inference of distinctiveness: a defendant who copies assumes the get-up has commercial value, which ordinarily means it has consumer recognition. Indian courts have drawn this inference explicitly in several interim injunction decisions, treating the defendant’s choice of a similar get-up as evidence of the plaintiff’s goodwill.
The functionality limit operates in FMCG cases primarily to exclude shapes dictated by the manufacturing process or the product’s use. A tetrapack’s rectangular shape is functional. The specific colour scheme on its surface is not. A bottle’s screw-top threading is functional. The bottle’s distinctive waisted silhouette is not. Courts have applied this distinction consistently, protecting visually expressive elements while leaving functionally necessary elements in the public domain.
COUNTERARGUMENTS AND LIMITATIONS
The most direct counterargument is that the Designs Act was never intended to be the primary protection mechanism for FMCG packaging. It was designed for industrial designs broadly, and the limitation of its scope in the FMCG context reflects appropriate legislative channelling rather than failure. Trademark law was always the right tool for get-up protection.
This argument has merit as a matter of legislative history. It does not rescue the Designs Act from the criticism this paper makes. The criticism is not that the Act failed to achieve a purpose it never had. The criticism is that FMCG brand owners who turn to the Act for protection encounter structural obstacles that make it materially less useful than the legislation’s general description suggests. Registration lag, novelty requirements, and time limits combine to exclude precisely the protection FMCG industry needs. Whether this is a design failure or a scope failure, the practical consequence is the same.
A second counterargument holds that the Designs Act serves a useful supplementary function during the period between product launch and the accumulation of secondary meaning. A newly launched product with a novel design registers under the Act and enforces against copying before it has built the goodwill passing off requires. This argument is correct but limited. It identifies a short window where the Act adds value. FMCG products with genuinely novel designs represent a small fraction of the market. Most FMCG packaging draws on established formats and accumulated brand equity. The short-window argument describes the Act’s best case, not its typical application.
A third counterargument concerns the dual protection bar. Section 2(d) of the Act excludes trademarks from the definition of “design,” creating an apparent separation between design protection and trademark protection. In practice, courts have struggled with this boundary. A shape simultaneously a protectable design and a registered trademark creates doctrinal complexity. The correct resolution, consistent with the Act’s logic, is that once a design becomes a trademark, trademark law governs. The Act’s time limit and novelty requirement do not affect the trademark claim. This interpretation preserves both instruments without allowing either to undermine the other.
The internal heterogeneity of FMCG packaging raises a fourth limitation. This paper has treated food and beverages, personal care, and household products as a single analytical category. The protection challenges differ across sub-sectors. Food packaging is constrained by regulatory labelling requirements that reduce the space available for distinctive visual design. Personal care products compete on visual distinctiveness at point of sale in a way household cleaning products do not. The general framework this paper advances applies across sub-sectors, but the weight of each factor varies by product category and market context. Jati-level granularity, in the vocabulary of comparative structural analysis, is the next analytical task.
THE COMPETITIVE DIMENSION
The analysis has implications for competition in India’s consumer markets beyond the intellectual property question itself. India’s FMCG market includes multinational companies with decades of brand equity alongside regional manufacturers and local producers competing on price. The protection regime governing product appearance shapes the competitive dynamics of this market.
A robust trade dress regime that protects acquired distinctiveness without registration and without time limits systematically favours incumbents. An established brand with decades of consumer recognition in its packaging excludes a new entrant whose packaging is visually similar, even where the similarity is coincidental and no copying has occurred. This is not an argument against trade dress protection. Source identification and consumer protection are legitimate goals. It is an argument for calibrating the distinctiveness threshold carefully and applying the functionality doctrine actively to ensure competition is not foreclosed in product categories where consumer choice depends on visual presentation.
Indian courts have shown awareness of this balance. In several FMCG passing off cases, courts declined to protect elements of packaging standard in the trade or reflecting generic industry conventions. The red-and-white colour combination in the toothpaste category required evidence of the specific combination’s association with Colgate, not merely the presence of red and white on a toothpaste tube. The protection is for the specific commercial impression, not the category visual vocabulary. This is the correct calibration, and it should be applied consistently as FMCG trade dress litigation expands.
POLICY IMPLICATIONS
The analysis produces three policy conclusions.
FMCG brand owners should prioritise trade dress strategy over Designs Act registration as their primary protection mechanism. Design registration remains useful for genuinely novel, newly created designs during early market entry. It is a weak tool for established get-up. Legal and commercial resources allocated to design prosecution produce better returns when redirected toward building the trademark and goodwill evidence supporting trade dress and passing off claims: sales records, advertising expenditure documentation, consumer recognition evidence, and records of the get-up’s continuous and exclusive use.
Indian courts should articulate a more explicit trade dress framework. The cases have produced consistent doctrine, but they have done so through the vocabulary of passing off and trademark infringement without systematically identifying the underlying principles. An explicit trade dress framework, drawing on the statutory text of the Trade Marks Act, 1999, and calibrated against the functionality doctrine, would make the law more predictable and reduce uncertainty in interim relief decisions. The US framework’s three-part structure, distinctiveness, non-functionality, and likelihood of confusion, provides a workable template that does not require importing US law wholesale.
The Designs Act, 2000 should be amended to address its most commercially significant limitation. An acquired novelty standard, analogous to acquired distinctiveness in trademark law, would allow designs that have become associated with a specific manufacturer through continuous use to be registered and protected even where they do not satisfy the prior art novelty test. This reform would align design protection with the commercial reality of FMCG packaging development, where distinctive packaging emerges from iterative refinement over time rather than a single act of novel creation.
CONCLUSION
The Designs Act, 2000 offers registration, a novelty requirement, and a fifteen-year maximum protection period. India’s FMCG industry needs protection that begins before registration, does not require novelty in the patent sense, and lasts as long as the packaging continues to identify the product’s source. These two sets of requirements do not match.
The case law documents the practical result. From Parle Products (1972) to Gorbatschow Wodka (2011), Indian courts have protected FMCG get-up through passing off and trademark law rather than the Designs Act. The protection is impression-based, acquired through use, and potentially perpetual. The US trade dress framework supplies the explicit doctrinal vocabulary for what Indian courts have been doing: protecting the overall commercial impression of a product’s appearance when that impression has come to identify the product’s source.
The Designs Act is not without value. It provides time-limited protection for genuinely novel product designs during early market entry. That is a real benefit, if a narrow one. It is not the primary shield against design imitation in the FMCG context. Trade dress and passing off are. The sooner Indian intellectual property practice and Indian courts make this explicit, the clearer the law will be for manufacturers, consumers, and courts alike. Consumers’ ability to identify what they are buying is the purpose the entire framework exists to serve. The instrument best designed to serve that purpose, in the FMCG context specifically, is not the Designs Act. It is the trade dress doctrine the courts have been building case by case for over fifty years.
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