This article has been written by Nirmal Chawat pursuing Diploma in Intellectual Property, Media and Entertainment Lawsand has been edited by Oishika Banerji (Team Lawsikho). 

Introduction 

Have you ever wondered why all the products have different shapes may be in packaging or prodcution ? what if someone starts selling the same product or similar product with same or similar name or same shape or similar shape which is in more demand & has value. If this is the case, the original seller who owns the product will incur losses & its brand value will decrease as the others will not think of building brand value but only encashing upon others brand by selling cheap products. To protect the rights of owners & consumers interest, we have various laws, one of them is Trade Marks Act, 1999. In this article we will learn about the meaning of shape mark and how courts protect the rights of shape mark owners. The readers will also know about punitive damage and does the court have power to order punitive damage in favour of the shape mark owner or not. Such explanations have been made taking into consideration the landmark decision of Zippo v. Anil Moolchandani (2006). 

What are shape marks  

Shape marks are three dimensional shapes which can be registered under the Trademarks Act, 1999.  It should be distinctive in nature and should help in identifying a product by its distinctive packaging shape. Trademark Act, 1999 does not provide any particular definition of shape mark but with growing times, the same has been well recognised as a non-conventional trademark. 

As per the EUIPO Trademark Guidelines 9.3..3, “a shape mark is a mark consisting of, or extending to, a three-dimensional shape, including containers, packaging, the product itself or its appearance. The term ‘extending to’ means that shape marks cover not only shapes per se, but also shapes that contain other elements, such as word elements, figurative elements or labels.”

By going through the above definition it can be said that shape marks includes shape of goods, packaging, combination of colours and also it should be remembered that a shape mark cannot be registered if the shape is generic in nature i.e. the shape is because of the nature of the goods or the shape is necessary to obtain a technical result or it gives only substantial value to the goods. For example, the shape of Coca Cola Bottle & shape of Pepsi Bottle is different because it has been protected as shape mark under Trademarks Act, 1999 and no other brand can copy each other’s shape, if they do so it will amount to infringement. 

Why should we study shape marks with respect to the Zippo v. Anil Moolchandani case

The case of Zippo v. Anil Moolchandani (2006), was one of its first kind, where the Delhi High Court protected the rights of shape mark owner thereby providing a positive interpretation of the Trademark Act, 1999. 

Facts of the case 

• The Plaintiff was a company registered in the USA, dealing with manufacture and trade of lighters under its invented trademark ‘Zippo’. Plaintiff also used the same trademark to other various products manufactured by it and therefore claimed that their trademark became a well known trademark due to the promotion of the different products under the name Zippo across 120 countries. 
• The Plaintiff further claimed that the shape of the lighter is unique & different from others having windscreen chimneys attached are unique and have acquired a secondary meaning, which denotes plaintiffs cigarette lighter.
• The product was sold across 120 countries including India under the trademark named Zippo at Duty free shops, embassies, consulates and brought into the country by tourists.
• The Plaintiff had also claimed to be the proprietor of a registration of a 3 dimensional shape of its lighter by registration No. 714368 since 10th May 1996. 
• In February 2006, the Plaintiff got to know that the Defendant was selling counterfeit Zippo Lighters from its various outlets in Delhi. Those lighters not only bore the word mark Zippo, but also constituted infringement of the plaintiff’s shape mark. 
• It was also alleged by the Plaintiff that defendants infringed the trademark and was also responsible for passing off the cheap quality lighters in the name of Zippo which has caused unquantifiable damage to the Plaintiff. 

Observation given by the court 

• The Court observed that even if the Defendant does not use the mark ‘Zippo’ on the lighter and continues to sell, the customers may get confused between the lighter sold by Defendant with that sold by the Plaintiff.
• The Court further observed that the Defendant sold the lighter which appeared to be deceptively similar with the Plaintiff’s lighter, as the lighter sold by the Defendant did not have distinguishing features, therefore the Plaintiff had a strong case from their end. 
• The Court had opined that the Plaintiff has been marketing the products through various means by prominent magazines, including in-flight magazines and that the goods of the Plaintiff-company are available in India in a number of outlets in most major cities. The Defendant on the other hand had been trying to encash upon the Plaintiff’s goodwill by selling the lighter at a cheaper rate thereby degrading its quality.  This ipso facto was responsible for causing damage to the Plaintiff. Thus protecting the rights of the Plaintiff alongside the interest of the consumers was indispensable. 
• The Court observed that even if it presumes that the registration of the three dimensional device (lighter) will not be equivalent to the registration of the shape of lighter depicted on the registration certificate, the case of infringement subsists on account of the word mark, ZIPPO. 
• Court also observed that the Plaintiff failed to prove the actual damage suffered by him, due to the act of the Defendant, thereby failing to decide the amount of damages he requires. Owing to such a scenario, it would be the Court who will decide the amount to be offered as damages. 

Judgment

• The Court awarded the punitive damage of 5 lakhs in favour of the Plaintiff, to be paid by the Defendant.
• The Court further passed a decree of permanent injunction against the Defendant from selling, distributing & marketing lighters under the trademark ‘Zippo’ and/or having a three dimensional shape identical or similar to that of the lighter of the Plaintiff company along with proportionate cost of the suit. 

Conclusion

As has been rightly observed by the court of law in the discussed case above,  shape marks are 3 dimensional, unique and should be of distinguishable shapes which helps in identifying different products thereby also developing brand value. It is important to protect the rights of the shape mark owner in order to protect the consumers interest in the long run. Thus, courts should not restrict themselves from awarding punitive damages in order to curb the future infringement of other trademark & shape marks. 

References 

• https://guidelines.euipo.europa.eu/1803468/1785874/trade-mark-guidelines/2-1-shape-marks.
• https://ssrana.in/articles/importance-and-challenges-of-protecting-a-shape-mark/

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