This Article is written by Archi Bhatia. She is a lawyer, content specialist, and technologist who for over the past year has spent her time helping small businesses and entrepreneurs with data-related content, trademark registration, and patent registration, as well as creating an online presence for them through friendly and sharable writing. She talks about Protecting the shape of a product.
Proprietors or any company while protecting their products face serious challenges as they are unaware about the route they should take while adapting to the current market economy. The shape of a product in recent times have been seen for consumer products only. Such as Kit- Kat, Toblerone.
Products shapes can be protected in terms of law through Trademark registration or through Design registration. The protection of the product can be both functional as well as aesthetic
- Aesthetic Value of the product can be protected through design registration that is valid for 10 Years in India which can further be renewed for 5 more years. Aesthetic value includes anything that appeals to the eye of the consumer.
- The functional value of the design can be registered through trademark protection that is valid for 10 years that can be renewed consecutively for 10 years. Functional Value is something that the product would need to perform certain functional features.
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For protecting your product it’s important to understand the difference between Shape Trademark and Design registration:
Design protection in India is territorial in India and hence if the person wants to register anywhere outside India the application should be made to all the countries separately. At the time of registration, the article or design submitted will be judged solely based on the eyes of the reviewer.
The design protection in other countries is known as design patent and the protection is provided under patent law itself there is no separate legislation like India although if you are seeking protection in a country other than India you need to make an application separately although you can take priority by providing date of the application filed in the party.
Design registration confers protection to products features, shapes, ornamental value or pattern of the article. Functional aspects of the design will not be protected under the design law you will have to register the functional shape as a trademark.
The design for registration should include the following to be considered registrable:
- The design should be original or novel. The originality of the product will be applicable only if it has not been published or disclosed anywhere around the globe. The design registered should be distinguishable from any existing or known design in India.
- Originality in the article means that the design must be originating from the author’s mind; which can include old design but the application for it must be new.
Since design registration protects the aesthetic value of the product on the condition that the design is registered with the intellectual property office as in India unregistered design do not receive protection. Hence if you have a design that you might think have unique aesthetic value register it immediately before the design is copied and registered by any other proprietor.
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Designs That Cannot Attain Protection
Designs that are not registrable in India are:
- Anything that comprises of obscene and scandalous matter.
- If the design is registered is against public order or morality
- If the design is registered contains a trademark that is registered with some other individual or company
- Designs being registered is not new or original
Registration Process for Design
The design registration in India can be filed both electronically as well as physically with the intellectual property office. The government in order to provide
The registration application filed shall include the following details:
- Representation of design that is depicted through various views of an article
- The applicant shall include the name, address and nationality as well.
- If priority is claimed then the application should contain the details of the priority document.
- The class of the design must be depicted in the application itself.
- Power of attorney if the applicant is filing through an attorney or agent
- Remember if the applicant registering design is a foreign national he needs to provide an Indian address so that all the correspondence can be done on that address.
The application for design registration is sent to the patent office and the main characteristic that they examine before granting protection is the novelty and originality of the product.
As per section 4 of the Designs act what is considered novel is something that has not been published anywhere in any of the publication, the application will be rejected even if the design has been published in the country you are not seeking protection.
Remember to keep your design distinguishable from any designs that have been registered before or if your design is a combination of two designs it will be rejected protection.
Shape trademark is a kind of unconventional trademark that was introduced in India through an amendment in the trademark law. The shape should be capable of being represented graphically, for it to be registered as a trademark.
Trademark law irrespective of the jurisdiction was in need of a little tweaking as the application that was sent was either of shapes, scents cartoon characters, colours and movements as well. To overcome this issue Indian trademark office rolled out a new trademark law; as per which, proprietors or companies can register trademark- shapes, holograms, slogans and sounds that are musical and non-musical.
Toblerone is a registered 3-Dimensional trademark is registered for Kraft Foods Schweiz Holding Gmbh in trademark class 30.
- ‘Gorbatschow’ branded vodka bottle
(The shape of the Gorbatschow Wodka bottle has been registered with the Indian trademark office that was filed on 31st January 2008)
- Zippo Lighter
The iconized lighter was awarded trademark in class 34 by Indian trademark office in year 2002. The application for the trademark image has been registered with Indian trademark office under name Misc.Geo.
Shape that cannot be registered as a trademark in India
- The shape of a product that generates from the nature of the product itself is not registrable as a trademark in India
- The shape of a product that generates due to the fact that it is to be technically produced.
- If the shape gives functional value to the goods.
Requirements prior to Registration
The following procedural requirements are necessary to be fulfilled prior to filing shape trademark in India
- The copy of the mark should consist of a 2D photographic or graphic reproduction and at least 3 different views of the shape being registered along with a written description should be filed.
- If the Registrar is not satisfied with the description submitted, he can call upon the trademark applicant(Show cause hearing) to produce up to five further views of the mark and a description of the mark as well.
In the case of a 3D Mark
3D marks in India are registered to overcome fierce competition in the marketplace. The 3D mark differentiates your product from your competitor’s product offering for you to establish a mark in the economy. Consumers, in general, are guided by the external beauty of the product and hence a 3D mark is generally going to garner more audience than a normal trademark.
Do not confuse 3D shape of a product with design registration; a 3D trademark registration is suggested only when the shape of the mark is not only characterising the company but is also acting as the logo of the company as the mark is abstract enough.
All trademark in India possess distinctiveness character however in practical application and the requirements are more restrictive as compared to other marks as can be seen through protection that is provided to 3D mark is limited as compared to other marks.
When will be the 3D mark be considered Distinctive?
The reasoning behind the strict interpretation of the absolute grounds of the refusal in relation to 3D shape marks is clear and comprehensive; as the marks are unconventional and garner much more attention than a normal wordmark or device mark that is registered with the trademark office.
Moreover, the public is less likely to associate the 3D shape with the origin of the product if the word element is missing on the product or the packaging itself. If the shape of the product is seasonal and the product with that shape is going to be available for consumers on a certain occasion only it will likely garner much less attention and distinctiveness and hence the trademark registration for such a shape will not be possible.
If the shape is adding substantial value to the product then in that case?
If the shape of the product is adding to the substantial value of the product then the courts and the trademark office will consider registering the trademark even if the distinctiveness of the product is not as strong. As was seen in the case of Louboutin where the red colour under the sole provided the shoes of the designer such distinctive character that they are known for their colour placement itself. Hence, if the product shape is adding a substantial value it is going to receive protection comparatively easier than a normal mark.