INTA Bulletin

November 15, 2011 Vol. 66 No. 20 Back to Bulletin Main Page

INTA’s Trade Dress Image Library Helps Users Learn About Trade Dress Law and Practice Worldwide

The red sole shoe saga, or the Louboutin cases, which will soon be accessible in INTA’s Trade Dress Image Library (TDIL), is an illustration of how trade dress law raises similar issues around the world. When it comes to trade dress, however, IP practitioners often are reluctant to have a first opinion or first thoughts on trade dress, as it involves many IP rights (explained in INTA’s online resource Trade Dress: International Practice and Procedures) and has enormous cultural implications, particularly in assessments of distinctiveness, likelihood of confusion and functionality.

First thoughts on clearing or giving advice about trade dress can come from the TDIL. This resource is accessible by INTA members only, either from the Topic Portal page on Trade Dress or from the Global Trademark Research page. The TDIL comprises a database of summaries of trade dress cases, with images of the goods of the plaintiff and defendant in each case. (See, for example, QB Net Co Ltd v. Earnson Management (S) Pte Ltd & Others, a Singapore case concerning a hair salon, pictured). Research can be performed based on product description, jurisdiction, key concept, case name, plaintiff’s name or defendant’s name. The results will show a list of cases with links to case summaries, corresponding images and the name of the firm that provided the summary and images.

From a practical point of view, research on the TDIL may lead to first thoughts on the assessment of trade dress in particular jurisdictions. Thus, from research on key concepts, one may discover that utilitarian functionality can be a bar to trade dress protection in the United States (e.g., Straumann Co. v. Lifecore Biomedical Inc. (Aug. 29, 2003)) and in the European Union (Lego Juris A/S v. OHIM, Case C-48/09 P (CJEU Sept. 14, 2010)).

The images allow the TDIL user to understand more precisely how the matter was judged and how the particular key concept was applied.

A search will also show examples from around the world of the key concept of likelihood of confusion—for instance, from Brazil (Colgate Palmolive Company and Kolynos do Brasil Ltda. v. EAC Indústria e Comércio Ltda., Case No. 1448/2001 (Aug. 10, 2006)), with the corresponding images from both the plaintiff and the defendant (see images). This offers practitioners a firsthand example of how a jurisdiction might assess likelihood of confusion with regard to the position of the color combination and wording. The TDIL user may even learn, from reading the corresponding case summary, that everything might not be lost, even in a common law country (e.g., India) with a design registration subsequent to the plaintiff’s prior use (Gorbatschow Wodka KG v. John Distilleries Limited, Case No. 3463 of 2010 (May 2, 2011)). A user could also learn that copying a label may lead to imprisonment penalties in Egypt (Unilever Plc v. Nile Laboratories, Case No. 10844\2007 (May 13, 2007)).

In addition, a search may show the different rights that can be invoked, again with the corresponding images of both plaintiff’s and defendant’s products—for example, unfair competition for the packaging of an immune booster (in South Africa, Pharmachoice Healthcare (Pty) Ltd v. Nutrilida Healthcare (Pty) Ltd, Case No. 22377/05 (May 11, 2006)), designs for detergent boxes (Russia, OAO “Nefis Cosmetics” v. OAO “Concern Kalina” Case No. F09-223/04-GK (Federal Arbitration Court of Ural District, 2003), design patents for beer bottles and cans (China, Budweiser (Wuhan) International Brewery Co., Ltd. v. Luoyang Subsidiary of He’nan Blue Label Brewery Co., Ltd. (Jan. 16, 2008)), design and copyright for toys (France, Hasbro Inc. (USA) coming to the rights of Tiger Electronics Ltd, Hasbro SA (Switzerland) and Hasbro France SA v. Import Export SARL (IES) and Teleshopping SA (Nov. 24, 2004)), or trademark rights in the shape of a pill (Spain, Pfizer Inc. v. Richard Adler (May 11, 2005)).

The summaries in the TDIL contain substantive local information on the use of trade dress as well as on its impact on the acquisition or loss of rights. For instance, in a case about generic drugs, the summary refers to how courts take into account references in medical publications in assessing distinctiveness (Leo Pharmaceutical Products Ltd A/S v. Kotra Pharma (M) Sdn Bhd (Jan. 19, 2009)), or how coexistence over 20 years may lead to the conclusion that there is no likelihood of confusion (Taiwan, Hawley & Hazel Chemical (Taiwan) Co., Ltd. v. Galien Industrial Co., Ltd. (Jan. 21, 2010) (the Whiteman Toothpaste case). Therefore, consulting the TDIL may also be helpful in monitoring trade dress on a day-to-day basis and in client education.

In summary, the TDIL is an accessible database that shows the state of the case law on trade dress across the globe. The TDIL Subcommittee would be happy to publish case summaries and images that provide insight into the law in your jurisdiction. Follow the instructions on the Case Summary Template on the TDIL homepage.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers
are urged to check independently on matters of specific concern or interest.

© 2011 International Trademark Association