Shaping the law

Courts must exercise due caution in cases pertaining to trade dress protection, as once granted it confers perpetual protection and monopolistic rights to a manufacturer, warns advocate and barrister Mikhail Behl

In India, features such as the shape of goods, their packaging, colours (or a combination of colours), or any combination of these features in association with the device, brand, heading, ticket, name, signature, letters or numerals, etc., under (section 2(m) of the Trade Marks Act, 1999) are eligible for trademark protection (section 2(zb)), unless these features lack distinctive character, being inherently incapable of distinguishing one person’s goods from that of another’s.

This inherent lack of distinctiveness arises when the features of a mark are merely value indicators (section 9(1)(a) to (c)). With specific reference to trade dress that includes the shape of goods, an inherent lack of distinctiveness exists when the shape is merely the result of the nature of the goods themselves, or for instance where their shape is necessary to obtain a technical result, or provide substantial value to the goods (section 9(3)).

A reading of these provisions indicates that the ability of these features to identify “the source” of a product is key to claiming trademark protection. Any functional elements, be they those that offer aesthetic or utilitarian value, are ineligible, even if they may also be indicators of source. Unlike other intellectual property rights, trademark protection is available in perpetuity.

Decisions by courts offering or refusing trade dress protection, particularly for features like the shape of goods, are always, therefore, contentious. Granting such protection extends the “eternal vigil” of trademark protection to a good/product, perhaps even in circumstances where the product is ineligible for a patent’s limited-term protection, or where the shape or other features would be ineligible for design protection.

On the other hand, refusing protection increases consumer “search costs” and dissuades businesses from investing in the development of a quality product. Little wonder why judges struggle with this issue, for these are innately ideological verdicts.

In Gorbatschow Wodka KG v John Distilleries Ltd (2011), a plaintiff sought quia timet (precautionary injunction) protection from the Bombay High Court for its “uniquely” shaped bottle. The inspiration for the design of the plaintiff’s vodka bottle was the architecture of the Russian Orthodox Church, more particularly the “onion-shaped dome” or “bulbous structure”, which, by design, has a wider diameter than the rest of the church tower. By its own admission, this was not a claim of inherent distinctiveness, but rather an acknowledgment of the appropriation of something at the core of Russian culture and heritage – vodka and orthodox Christianity, in that order.