Registration of Shape Marks in India
In India, the definition of trade marks under the Trade Marks Act, 1999, includes shapes and packaging as long as it is capable of being represented graphically and is able to distinguish goods and services of one person from those of another. The registrability of the shape mark, therefore, has to satisfy the basic test of being a trade mark as laid downin Section 2 of the Act.
The Indian Trade Marks Act includes shape of goods in the definition of trade marks but the scope of protection is unclear as statutory protection for the shape of goods was only introduced in the year 2003. A more interesting question is whether the shape of goods may be protected under the principles of design law or trade mark law, especially in India where the definition design under the Indian Designs Act, 2000 excludes trademarks.
Three dimensional marks or shapes which are capable of distinguishing the goods and services of one trader from those of another have been registrable as trademarks since 1996 and continue to be so. Apart from the basic test of being a trademark in terms of Section 2 of the Act, a shape mark has also to satisfy the following additional tests as laid down in Section 9:
1. The shape should not result from the nature of goods themselves. The shape inquestion has to be distinctive in relation to the goods and services for which it is
used. For example, the shape of water bottle which emanates from its very nature will be barred from registration.
2. The shape in question has to be unique for registering on an intent to use basis. However, this can be proved by showing distinctiveness acquired through use as evidenced by trade magazines, catalogues and industry specific publications which illustrates that the shape mark is solely associated with that industry.
3. The shape should not be such as is necessary to obtain a technical result. No trademark protection can be accorded if essential components of any goods are influenced by functional considerations required for achieving a technical result.
4. The shape in question should not be a shape which is the result of a functionality.
5. The shape should not be such as to give substantial value to the goods. This is to exclude aesthetic shapes or shapes which add some values either in the design or appearance of the goods. This is determined by a comparison between the shapes sought to be registered and the shapes of equivalent articles.
The Indian Trade Marks Rules, 2002 lays down the procedural requirements for filing a shape mark application in India which include:
1. The reproduction of the mark should consist of a two dimensional graphic or photographic reproduction and at least three different views of the shape in question along with a written description.
2. Where the Registrar is not satisfied, he may call upon the Applicant to produce up to five further views of the mark and a description by words of the mark.
3. If the Registrar is still not satisfied, he may call upon the Applicant to produce a specimen of the trademark.
In the case of three dimensional mark, the reproduction of the mark shall consist of a two dimensional or photographic reproduction as required under Rule 29(3). Where appropriate, the Applicant must state in the application form that the application is for a shape trade mark. Where the trade mark application contains a statement to the effect that it is a three dimensional trade mark, the requirement of Rule 29(3) will have to be complied with.
Rule 29(3) of Indian Trade Marks Rules reads as follows:
"Where the application contains a statement to the effect that the trade mark is a three dimensional mark, the reproduction of the mark shall consist of a two dimensional graphic or photographic reproduction as follows, namely:
(i) The reproduction shall consist of three different views of the trade mark.
(ii)Where, however, the Registrar considers that the reproduction of the mark furnished by the applicants, does not sufficiently show the particulars of the three dimensional mark, he may call upon the applicant to furnish within two months up to five further different views of the mark and a description by words of the mark.
(iii)Where the Registrar considers the different views and/or description of the mark referred to in clause (ii) still do not sufficiently show the particulars of the three
dimensional mark, he may call upon the applicant to furnish a specimen of the trade mark.
Regarding the overall distinctiveness test for shape marks in Indian practice, it is seen that the most important criteria to be taken into account is whether the mark in question is sufficiently distinctive to distinguish the goods/services it is used on before the eyes of the consumers.
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