In China, trade dress protection provides exclusive rights over a certain product get-up that acts as an indicator of origin. In order to qualify for protection, a trade dress must have a unique quality, rather than being common or generic, so that it can be distinguished from the get-up of other products in the market. The trade dress and associated products must also have acquired a substantial level of reputation, so that the relevant public would recognize the product get-up as originating from a certain source.

Rights in a given trade dress originate from the commercial use made of such trade dress. Therefore, normally, to acquire a sufficient level of awareness, the products must have been used consistently over a significant period of time.  What happens if the overall get-up evolves over time or the products are not always identical?  In practice, this happens a lot in the fashion or fast moving consumer products industries, where rights holders constantly strive to  give a fresh flavor to a given product line to attract the consumers’ attention.  In fact, it is possible to acquire trade dress rights in such series of products, but there’s an additional requirement – to show a consistent overall look.

In both China and the U.S., it is possible to acquire trade dress rights in common elements within a series of products, and interestingly, legal tests, very similar to those mentioned above, have been applied by courts in both jurisdictions.

In China, a court in Shanghai ruled that the common elements in six different shoe styles constitutes a protectable trade dress (Crocs, Inc. and Crocs Footwear & Accessories (Shanghai) Co., Ltd. v. Xiamen Kaluochi Trading Co., Ltd., Kaluochi (Jinjiang) Trading Co., Ltd, et al., (2013) Hu Er Zhong Min Wu (Zhi) Chu Zi No. 172):

The protectable “common elements” found by the court comprise:

• The wide and curve-shaped toe cap;
• The evenly-spread holes over the vamp; and
• The movable strap near the heel.

The court held that those common elements were sufficiently distinctive and reputable to qualify for trade dress protection under Article 5 of China’s Anti Unfair Competition Law.

In the U.S., the common elements on seven sachets for a series of pre-mixed freezable cocktails were also recognized as a protectable trade dress (American Beverage Corporation & Pouch Pac Innovations, LLC v. Diageo North America, Inc. & Diageo Americas Supply, Inc., 936 F.Supp.2d 555 (W.D. Pa. 2013)).

The court held that the common elements constituting a protectable trade dress were:

• The distinctive “DAILY’S” trademark in foil text on a black background with the outline of a martini glass forming the “Y” in the name;
• The solid-color bands at the very top and very bottom of the pouch, the top one with the words “FREEZE AND ENJOY” and the bottom one with alcohol content and package volume information;
• The placement of the words “ALCOHOL IS IN IT!” approximately one-third down the package on the right-hand side, written in a distinctive black-on-silver text; and
• The use of a “swirl” pattern as the background for the central image on the sachets.

In both China and the USA, in enforcement cases, the plaintiff is the party that must summarize which “common elements” constitute its asserted trade dress. To decide what to include, a plaintiff may ask itself the following questions:

• Is there an overall look that is consistent? This can be a difficult hurdle to overcome. For example, there is no consistent overall look if there are too few elements in common, or if the basic elements have not been used consistently with respect to the relevant series of products (Walt Disney Co. v. Goodtimes Home Video Corp., 830 F. Supp. 762, 29 U.S.P.Q.2d 1047, 1050 (S.D.N.Y. 1993));
• Is the combination of common elements sufficiently unique or distinctive to be recognizable? Combinations of elements that are too simple or abstract may not be sufficiently unique (Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 42 U.S.P.Q.2d 1641 (2d Cir. 1997));
• Is the use and reputation of the product series significantly stronger than those of the product in a single style? With respect to certain fashion or fast-moving consumer products, a single product style may have a short life cycle or low volumes of sales, whereas the aggregated series of products incorporating the common elements can possess a much stronger reputation or recognition in the market to allow trade dress protection. Similarly because of the relatively short life cycles of a single product, recognition of overall common elements as a protectable trade dress could have greater value to the trade dress owner than the protection of a single product style.

In conclusion, trade dress can be asserted not only in a single style of product get-up, but also in a plurality of different styles as long as they possess a consistent overall look that is sufficiently unique and reputable. It is not easy to establish the consistent overall look, but nevertheless, trade dress protection for a series of products can be secured for a large range of products and businesses models.