Registration of the Shape Trademark in India
This article is written by Saransh Pandey, a 2nd year student from Chandigarh University and an intern at Legal Upanishad.
It is a general saying that “A picture is worth a thousand words”. A picture creates a better impression on a human brain, If a picture or shape is striking, hence it last longer on a human mind. In the present corporate world, Intellectual Property Rights have grown a significant value among corporate entities in evaluating the instinctual value of the product in the market. It is supposed to be the most valuable forte of the company and to protect their product from the vast business environment. The owner uses the help of trademarks, patent, and design laws.
The shape of goods trademarks is a new concept in trademark and design law. It was introduced to distinguish the graphical nature of goods. Any distinctive shape is given to the product that distinguishes the product can be trademarked. In recent times to distinguish a product its appearance plays an important role. So the owners add vivid colors, packaging and more often adds certain shapes to make the product more appealing.
For example, Liquor Giant Johnny Walker uses their particular trademarked rectangle shape bottle with a narrow shoulder which makes it easier for the consumer to recognize the product. What trademark does here it helps the owners to protect their product from getting imitated and help the owners to their business peacefully.
Significance of Registration of Shape of Goods as Trademark:
A shape trademark is a very unique trademark adopted by our country, the shape must be worthy to be portrayed graphically. New trademark legislation has been set up by the Indian Trademark Department to address the situation according to which an owner can register shapes. For example, Toblerone registered its shape of the Chocolate Bar under Shape Trademark because the certain shape of the chocolate bar provides certain uniqueness to the brand and also made an impact in the mind of the consumers and gives certain “Functional Value” to the company.
The unique feature of the shape trademark is the built-in parts of the goods themselves. Usually, the normal trade-marks are superimposed on the goods. While in Shape Trademark of goods is an inseparable part of the whole uniqueness of the goods. The shape of the goods is also inclusive of pattern and configuration. A logo attached to any product can be the shape of any article and it brings more aesthetic value or market appeal influences the consumer.
Laws Regarding Trademarks in Protection of Shape of Goods:
In India, the shape of goods is protected under the Trade Marks Act 1999 and Designs Act 2000. The idea of the shape of goods is covered under Section 2 of Trade Marks Act 1999. In which trademark is defined as a mark that is capable to distinguish the goods and services of one person from those of others. It includes the shape of goods, packaging methods, and colors. It is further defined in Section 9 clause 3 that shape mark must comply with requirements:
- The Shape of Good must be capable of distinguishing of being represented graphically.
- It must comply with the nature of the goods themselves.
- It must be capable of distinguishing the goods or services of one person from those of others.
- And it shouldn’t be functional and it shouldn’t give substantive value to the product.
- By the combined read of Section 2 and Section 9 clause of Trademark act 1999, an image is formed in front of us regarding the shape of a product to function as a trademark.
Further, there is relevant mention of shape, configuration, and pattern in Design Act 2000 under Section 2(d). Designs mean features of shape, configuration, and pattern applied to any product. Whether in two-dimensional or three-dimensional or in both. By any industrial method, manual, mechanical, or chemical which when finished product would appeal and judged only by eyes.
Role of Trademarks and Designs in Protecting Shape of Goods:
In India, shapes are protected under Trademarks Act 1999. As long as they were able to delineate it graphically and able to delineate it from others. Previously the government did not recognize any shape of the product as a trademark.
But due to the introduction of Two-Dimensional and Three-Dimensional logos, has changed the old theory that perhaps making the must be affixed to the company or the container or packaging, according to which trademarks were assigned. Emerging innovations made the fashion shapes unique to build an identity of their own.
The government laid down simple tests and requirements under Section 2 of the Trademarks Act 1999. This gives the privileges to proprietors to protect their unique identity.
The definition of design under the Designs Act 2000 has been broadened. The appearance of the article includes shape and pattern.
Related Case Law :
Grbatschow Wodka KG vs John Distilleries Limited:
Facts: The plaintiff Grbatschow Wodka filed a suit based on the shape of the bottles of Vodka. The shape was distinctive and formed an instructive part of its goodwill and reputation.
The defendant John Distilleries Limited used a bottle trademarked under SALUTE similar to that of the plaintiff.
Issue: Whether or not the shape of the bottle is part of intellectual property rights.
Judgment: After appearing in the matter, the Hon’ble Mumbai High Court stated under the Trade Marks Acts 1999, Shapes of goods are now statutorily recognized and considered under section 2(ZB) of the Trade Marks Acts 1999.
Analysis: In the given case criterion flows from the concept of action of passing off developed over the years that it is the similarities and not the dissimilarities that go to determine whether the action for passing off is required or not. That is why in trademark cases even the deceptive similarities are considered sufficient for infringement of the trademark. If similarities of trade dress are substantial from the look of the two goods, it comes within the mischief of passing off.
Conclusion and: Suggestions
Shapes of goods can play an important role in the uniqueness of a product. Anything that distinguish your product should be trademarked. For example, Coca-Cola glass bottles have a certain shape and pattern which makes it easier for the consumer to identify. Even a blind person can recognize the product easily with the simple help of shapes. Shapes of a product also help the consumer identify the product easily and build trust and goodwill. For example The particular shape of Hershey’s Kiss Chocolates helps the customer to identify the product easily. The shapes of products need certain protection for the owners with help of Trademarks. Trademarks help the owners to protect their brand or product.
It is suggested that the most relevant thing to do is before registering the shape of the goods would be to not just include their digital image, but also relevant sketches or at least a video of all the respective steps involved while designing. A shape trademark should surround the object on which it is licensed. It should include the definite shape of the container is essentially important to differentiate between various prototypes.
- Design Act 2000 (https://www.indiacode.nic.in/handle/123456789/1917?locale=hi)
- Gorbatschow Wodka Kg v. John Distilleries Ltd. (https://indiankanoon.org/doc/792062/)
- Registration of Shape of Goods Trademarks and Design. (https://exgratialawjournal.com/journal/volume-2/volume-2-issue-3/registration-of-shape-of-goods-trademark-and-design-by-aditi-reddy-m)
- Trademarks Act 1999 (https://legislative.gov.in/sites/default/files/A1999-47_0.pdf)