Can I really own the shape of my product?

A trademark traditionally (in India as well as in other countries) is viewed as a two-dimensional (“2D”) visual mark, either in the form of a word or a logo. However, recently it has been observed that consumers not only distinguish a particular product/service of a business (from those of other businesses) through visual marks (such as a word or a logo) but also by various other elements such as the shape of the product.

Over time, it has been witnessed that an increasing number of businesses are looking to capitalise on the visual appeal of the products through a particular or prominent shape of a product. The visual appeal of a product tends to last longer in the memory of an ordinary consumer as compared to a word or a logo. However, the challenges associated with the representation and registration of a shape mark makes it quite common in comparison to conventional trademarks.

Under the Indian Trademarks Act, 1999 (“TMA, 1999”), a trademark or a mark includes the shape of goods and their packaging provided it is possible to “graphically represent” the same and provided their shape clearly distinguishes such goods from those of any other competing business.

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Shape Mark

A shape mark may be understood as a multi-dimensional or three dimensional (“3D”) mark associated with the shape of a product or its packaging. The shape should be capable of being represented graphically and able to distinguish the goods and services of one business from another. The fulfilment of these two conditions makes the shape mark eligible for protection under the extant law in India [subject to Section 2(1)(zb) of the TMA, 1999].

Illustrative Shape Marks

The average consumer in the market instinctively associates the distinctive shape of certain products with such popular products such as the Toblerone chocolate, bottles such as the distinctive Coca Cola bottle or biscuits such as Oreo and identify the product to the relevant brand or business. All the afore-mentioned products are examples of shape marks that are protected under the relevant statute in India.

In India, the judiciary has consistently recognized and protected shape marks in India. An early example is the case of  MRF Ltd. v. Metro Tyres Ltd [1] in the year 1990. In this case, MRF sought relief against the sale of auto-rickshaw tyres by Metro Tyres as their tread pattern was similar to the auto-rickshaw tyres of MRF. The Hon’ble High Court of Delhi recognized the distinctive pattern of a tyre as being eligible for trademark protection and MRF was granted the relief sought by it.[2]

The cognizance taken by the Hon’ble Delhi High Court is mirrored by other courts throughout the country. Notable cases in which the rights of classic shape marks have been protected and shape mark rules clarified include the case of Gorbatschow Wodka KG v. John Distilleries Ltd[3]. In this case, prominent German brand Gorbatschow Wodka alleged that John Distilleries infringed upon the goodwill of its brand by retailing vodka in a bottle that was deceptively similar and identical to the distinctive bottle used for Gorbatschow Wodka and the sale thereof harmed the trans-border reputation and extensive goodwill of Gorbatschow Wodka. The Hon’ble Bombay High Court categorically observed that an irreparable injury would be caused to the established reputation and goodwill of Gorbatschow if John Distilleries actions were allowed to continue and restrained the use of the infringing shape mark.

Furthermore, in the case of Zippo Manufacturing Company v. Anil Moolchandani and Ors[4], the Hon’ble Delhi High Court similarly recognized and granted relief to Zippo in respect of its rights in the shape trademark for Zippo Lighters. Multiple parties involved in selling counterfeit Zippo lighters in Delhi were restrained from the sale thereof. The Hon’ble Delhi High Court observed that “the sale of an inferior product under the brand name ZIPPO and/or having a 3-dimensional shape identical to that of the lighter of the plaintiff-company may harm the interest of the consumer who may be paying a higher price for the premium product of the plaintiff-company and who despite paying that premium price, may be saddled with an inferior product”[5].

Likewise, in Lilly ICOS LLC and Anr. v. Maiden Pharmaceuticals Ltd[6], the Hon’ble Delhi High Court restrained Maiden Pharmaceuticals from the retail of a tablet-shaped similar to the tablet manufactured and retailed by Lilly ICOS.

Documents required for a Shape Mark

An applicant may file a trademark application in respect of the shape of goods with the appropriate office of the Trade Mark Registry of India (“TM Registry”) in the prescribed form and with prescribed fees as per the First Schedule of the TMA, 1999 read with Rule 11 of Trade Marks Rule, 2017 (“TM Rules”). Pursuant to the introduction of Rule 26(3) of TM Rules, certain further requisites of filing applications for registration of a shape mark have been clarified. The relevant provision provides that where an application for the registration of a trademark consists of the shape of goods, certain documents are required to be filed along with such application, as enumerated below:

1. Written description of the shape mark in words; and
2. A representation of the shape mark in 2D form or a through a photograph, provided the same must be taken from minimum 3 (three) different angles.

Procedure for Shape Mark Registration in India

An application for a shape mark registration in India shall be granted protection subject  to the satisfaction of the TM Registry that the shape mark is distinctive. To pass the test of distinction, the shape mark must satisfy the requirements under Section 9 of the TM Act, 1999. Pursuant to Section 9(3) of the TMA, 1999 Act, a shape mark will be registered provided the TM Registry concludes that the shape of the applied-for goods is such that it does not exclusively:

1. Relate to or result from the nature of those goods:

For instance, a product may bear a shape relevant to its nature, such as a football. Owing to the fact that the shape is necessarily owing to the very nature of the product, it will not be seen as eligible for protection.

2. Required to obtain a technical result:

A product’s shape may not be registered if found that the shape is functional or a means to obtain a technical result. A relevant reference may be made to the case of Koninklijke Philips Electronics v Remington Consumer Products[7] wherein Philip’s shape mark in respect of its three-headed rotary razor for men was revoked, owing to this very principle.

3. Provides substantial value to those goods:

If the shape of the product is such that it adds to the visual or functional features of a product, it would provide substantial value to such product and not be eligible for registration. Such criterion is however subjective, and determinable only on a case-to-case basis by analysing the applied for shape and the shape of other equivalent goods.

Rule 26(4) read with Rule 26(3) of the TM Rules sets out the procedure in relation to an application for the registration of a trademark consisting of the shape of goods. In case a shape mark is found to not qualify for registration pursuant to the evaluation of documents, the TM Registry may call for the applicant for such a mark to reproduce and furnish graphical representations of a minimum of 5 (five) different visual angles of the shape mark for which registration is sought along with a longer and more detailed description of the shape mark in words. If even such further description or views of the shape mark are not sufficient, then the applicant may need to further furnish the sample of the relevant product in respect of which the shape mark is sought.

Benefits of a Shape Mark

1. Exclusive ownership and rights of use

Registration of shape marks, like registration of any other trademark, leads to host of advantages for its proprietor. These include but are not limited to clear recognition, advertisement and distinguishment of a business’ products and goods, building of goodwill and brand value and exclusive rights over the use of the mark, as well as a legal remedy against violation of such rights.

2. Competitive advantages

Registration of a shape mark in India may be perceived to be relatively more difficult owing to the stringent interpretation taken in respect of Section 9 of the TM Act, 1999, pursuant to which the legal provisions governing shape marks are much more comprehensive than traditional marks. Having said that, the benefits of a shape mark and its registration ultimately are much more lucrative than traditional trademarks.

In India and in general, non-traditional marks gain more attention from the consumer. Further, 3D shape marks, in particular, have a lot of scope in India due to the competitive nature of the market where new and upcoming business(es) seek to keep reinventing and distinguishing their products in order to increase sales and profit and obtaining registrations for 3D marks are one way to do so.

Frequently Asked Questions (FAQs)

1. How can the shape of goods be protected?

The shape of goods may be protected as a trademark pursuant to the provisions of either the TM Act, 1999 or the Designs Act, 2000 (“DA, 2000”) in India, subject to the nature and type of the shape mark. However, parallel protection cannot be sought under both statutes.

2. What distinguishes a design from a shape mark?

In simple terms, a design by definition under 2(d) of the DA, 2000 refers to the “features of shape” whereas a trademark includes the “shape of goods”. In terms of differential protection, trademark registration is meant to protect the brand and goodwill of a product whereas a design of the product protects the visual and functional features of the product.

3. Whether a shape mark may be registered in India?

A shape mark can be registered in India subject to the provisions of the TM Act, 1999 as detailed hereinabove. The Indian legislature has clearly identified the procedural requirements in relation thereof under the TM Act, 1999 read with the TM Rules.

4. What disqualifies a shape mark from registration?

A shape mark, like other marks which are not distinctive (viz. not able to distinguish goods and services of one business from the other) or not able to be represented graphically, do not qualify for trademark protection. In addition, if the shape of goods is derived from their nature, or is functional or provides substantial values, such as in terms of design, such shape will not qualify for registration and protection as a trademark.

5. What are the benefits of a shape mark registration?

A shape mark, besides offering advantages akin to the registration of other traditional trademarks also offers certain competitive advantages over and above traditional trademarks as detailed herein.

Conclusion

To conclude, it has been observed that the Indian judiciary and legislature acknowledge that with changing times and fierce competition in the commercial market, the trademark laws need to evolve so as to include shape marks within the ambit of protection under the extant intellectual property rights regime in India. Changes and clarity brought about by the introduction of the TM Rules are also a welcome development in respect of shape marks.

However, the existing statutory provisions must be periodically reviewed to ensure that one is abreast with the evolving changes keeping in mind the rapid pace of the technological advancements. Potential roadblocks which lead to difficulty in the registration of shape marks must be dealt with swiftly and through the appropriate interpretation of the law. For instance, the difficulty in proving the distinctiveness of the shape, whether inherent or acquired, which usually discourages applications for shape marks.

It may be observed that India retains the perception (though untrue) of being relatively less receptive of registration of shape trademarks vis a vis other countries such the EU where non-conventional marks remain more prevalent. While on one hand, it would be beneficial for India to incorporate some legal provisions from other nations in its legal regime, at the same time, it is also important to increase the awareness about the benefits of protection of shape marks in India

How we can assist:

The registration of a shape mark offers more comprehensive protection in comparison to an average 2D trademark, however, the procedure is not difficult or unachievable so long as the procedural requirements are met. With our in-depth knowledge of such requirements and extensive expertise in serving various clients globally, we at Ahlawat & Associates (“A&A”) can provide seamless end to end services for swift registration of a shape mark for your business.

[1] 1990(10) PTC 101

[2] Ibid

[3] 2011(4) ALLMR 374

[4] 2011 IXAD (Delhi) 661

[5] Ibid

[6] 2009 (39) PTC 666 (Del)

[7] Case C-299/99) [2003] Ch 159