A product has established itself in the marketplace if an average consumer starts associating its shape as a brand denoting the proprietary source of that product. Few such examples are Toblerone chocolate, the Coca-Cola bottle, Kit-Kat chocolate, the Gorbatschow Vodka bottle, Bvlgari Serpenti jewellery, etc.
The shape or look of a product, if distinctive enough, may last even longer in the memory of an average consumer compared to a word mark or a logo and the Indian Trade Marks Act, 1999 expressly allows registration of the shape of goods as trademarks. However, the challenges to establishing sufficient evidence of exclusive rights to the shape of a product are many in trademark law, as the burden of proof is on the proprietor to establish that the shape of its product can be a source identifier. The difficulties were recently explained by the Delhi High Court in Knitpro International v Examiner of Trade Marks Through the Registrar of Trade Marks.
An appeal was brought against an order of the Senior Examiner of Trade Marks rejecting a trademark application for the registration of the shape of a knitting needle. The Senior Examiner stated that the mark was devoid of any distinctive character. On being questioned by the court as to what the distinctive elements in the needle entitling it to a shape mark protection were, counsel for the appellant withdrew the appeal. The appeal was eventually withdrawn and dismissed, however, the high court, decided to enunciate the legal position on shape trademarks in India.
The court, before shedding light on the laws vis-à-vis shape trademark registration in India, referred to several international judgments such as Wal-Mart Stores, Inc. v Samara Brothers, Inc. (US), where the court held that, for exclusivity to be granted in the design of a product, the plaintiff must always prove that the design has acquired secondary meaning in the marketplace and that it could never be classified as inherently distinctive. The court also relied on the Kit Kat case of Société des Produits Nestlé SA v Cadbury UK Ltd., in which it was stated that “average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it may therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark”. The court also observed that, in assessing whether a mark has acquired distinctive character through use and secondary meaning, an overall assessment must be made by taking into account all of the relevant evidence and circumstances in which the relevant public may have seen the mark. This may mean proprietors having to carry out surveys among the buying public.
In the present case, the Delhi High Court stated that for a shape mark to be registered, it has to be shown that the shape in question is not the generic shape of the product. It must be a unique shape that associates the mark with the source by itself without anything further such as a name or logo attached to it. Therefore, a shape must fulfil the typical function of a trademark, that is source identification. Even though the order of the Trade Marks Registry, rejecting the trade mark application for the shape of the mark of the appellant was upheld by the Delhi High Court, that court was of the opinion that the rejection would not prejudice the appellant from seeking protection in law for its shape mark at a later stage, upon establishing that the mark has acquired a secondary meaning and distinctiveness.
The interpretation of trademark laws in India is evolving with changing times and the increasing use of non-conventional marks in the marketplace. The courts are now not only paving the way for proprietors to file trademark applications for names and logos but also encouraging applications for unconventional marks, such as shape marks. However, due to higher standards, strict registration practices and the difficulty in proving the distinctiveness of a shape, it is not easy to gain trademark protection for a shape mark. Proprietors may thus hit roadblocks obstructing their paths to registration. In order for a shape mark to enjoy trademark protection, proprietors must expend time and resources to show successfully that they have infused acquired distinctiveness specifically into the product’s shape through ingenious advertising, promotion and consequent sales.
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