This article is written by Aditi Aggarwal and further updated by Debapriya Biswas. This article deals with the emerging trend of 3D trademarks, how they came to be, and how to protect them under the Indian trademark law. The protection of 3D trademarks in other countries is also discussed at length with the help of some relevant case laws. Lastly, the article covers some FAQs for a better understanding of the readers.
Table of Contents
Introduction
While visiting grocery stores, we often come across various products with similar prices and functionality. Yet, we, as customers, only flock towards the products of certain brands that we are more familiar with and have used quite a few times. This customer loyalty comes not only from our comfort with the said brands but also from their recognition and the goodwill they have built in the market. A trademark often gets associated with this goodwill and reputation since it helps bridge a link between the brand and the products and services provided under it.
From brand names to the iconic colour of their products, all of them can be protected under the trademark law if they can act as a source identification for the general public. This also extends to the shape of a product, especially if it is quite unique in its field and aesthetic. Ever wondered how only Ferrero Rocher chocolates have a shape that they have or why no other chocolate has packaging like that of Toblerone chocolates? This is because the product’s shape or the product’s 3D packaging is protected by trademark law.
In this article, we will learn more about three-dimensional (3D) trademarks that we often see in the form of the shape of the products.
Meaning of trade mark
In India, Section 2(1)(m) of the Trade Marks Act, 1999 gives the definition of a ‘mark’ that includes a brand, device, label, heading, name, signature, ticket, letter, numeral, word, packaging, the shape of goods, or combination of either colours or any other combination. In addition, Section 2(1)(zb) defines a trademark as a mark that is capable of being graphically represented as well as one that is capable of distinguishing the goods and services of one individual from another. It also mentions that it may include the shape of the products, their packaging and the combination of colours used on the goods.
The best example of this would be the logo and mark of the brand Starbucks, which is quite distinct in its green colour, as well as the graphics. Not only does the logo represent the company, but it also immediately relays to the customers where it originates from.
A similar case can be seen with Cadbury. Since Cadbury is quite an old company with a global influence, people tend to trust it more than any other local brand. Any product, whether confectionery or any other food product, with the mark of Cadbury is often perceived as one of higher quality due to its long-standing goodwill.
This goodwill can also be seen through other trademarks such as Domino’s Pizza, Levi, Haldiram, Tata Enterprises and more. Each trademark has become popular and distinctive in its own accord and has acquired goodwill amongst the public.
Section 2(1)(zb) also mentions’shapes of goods’, along with the other conventionally registered marks, such as words, logos, symbols or colours. In fact, Rule 26(4) of the Trade Marks Rules, 2017, mentions the shape of goods or their packaging as a type of trademark as well, while citing that the reproduction of the same, at the time of filing the registration application, shall consist of ‘at least five different views of the trade mark and a description by word of the trade mark.’ This widens the scope of the definition of a trademark to include non-conventional ones like 3D trademarks.
What is a 3D trademark
A 3D trademark is an unconventional trademark that makes use of the three-dimensional shape of a product or its container or packaging to achieve a distinct place in the growing marketplace. It is non-conventional in the sense that it does not comprise two-dimensional elements of mere words, numerals, or figures, which were more traditionally used as trademarks.
In simpler words, a 3D trademark consists of the shape and configuration of a product, which sets it aside from its competitors in the market. When the shape of the product is unique enough to be recognised and connected to a certain brand or origin, it can also start acting as a trademark.
Let us understand it with a few examples. The iconic London Taxi, which we see so often in British series and movies, can also be considered a shape or 3D trademark. This is because not only is that iconic all-black colour very typical of taxis in London, but the shape is also quite unique in itself. Its evolution and inspiration from the 1900s British carriages to the current style have been used for decades and thus can be geographically recognised, as well as distinguished from all the other taxis around the world.
Another example would be the ‘Kinley’ water and soda bottles that we are so familiar with. Not only is its unique design quite recognisable, but it has also become a trademark on its own. The trade dress of Kinley, which includes the smooth but waved creases on the body of the bottle, along with the white and blue combination, has been widely popularised and identified with the same. This was also acknowledged and established by the Delhi High Court in the case of The Coca-Cola Company & Anr vs. Narsing Rao & Ors (2014).
These 3D trademarks are also referred to as shape marks, which are a part of the trademark dress of a product. As one may know, a trade dress is the overall appearance and feel of a product, which may include its colour, shape, design, etc. Shape marks, on the other hand, mostly focus on the shape of the product and its packaging.
In simpler terms, a shape mark is a part of a trade dress that encompasses both 2D and 3D trademarks of a product. However, while 3D or shape marks have become common now and are even protected as trademarks, such was not always the case.
History of 3D trademark
Initially, trademarks started with logos and wordmarks, with their first traces dating back to the Stone Age, when the livestock were branded with marks (names and drawings) to help identify which animal belonged to whom. It started with the intention to prevent theft of personal property and slowly developed into a source of identification.
This practice continued with Egyptian masonry, using quarry marks and stonecutters’ signs to relay the type of stone used and who worked on it. Once the scale and variety of commercialisation increased, usage of such marks could also be seen on loaves of bread and other baked goods, where the bakers drew and sewed specific patterns onto their bread. The practice of marking one’s goods to help customers identify them and to attach goodwill with the same is what developed into what we know as a trademark and its related legal provisions.
However, traditionally, trademarks were seen more as logos, words and graphics, the concept of colours and the combination of them being used as a mark developed later from the same. Unconventional or non-traditional marks like smell, sound or shape were recognised much later than their conventional or traditional counterparts.
In India, the term ‘mark’ was first defined under Section 2(1)(j) of the Trade and Merchandise Marks Act, 1958, which included a ‘device, brand, heading, label, ticket, name, signature, word, letter or numeral, or any combination thereof.’ There was no mention of shape, smell, sound or any other non-traditional marks. Even the combination of colours was not recognised as a mark under the old legislation.
In fact, it wasn’t until the Trade Marks Act, 1999, that the definition of the term ‘mark’ was expanded under Section 2(1)(m) to include the shape of goods as well as the packaging, which can also be referred to as a shape mark or 3D trademark. As long as the mark fulfils the quintessential function of a trademark, which is to help consumers identify the origin of the goods without any confusion, it shall be considered a trademark.
The Delhi High Court briefly summarised the evolution of trademarks in the case of Levi Strauss and Co. vs. Imperial Online Services Private Limited (2022). As per the court, the law of trademarks did not initially include the shape of goods or packaging. Traditionally, only some aspects, such as words, names, letters, labels, logos, etc., were identified as marks.
One of the more significant developments with respect to shape marks in India was the registration of the exterior design of the Taj Mahal Palace Hotel in Mumbai in 2017. Since the exterior of the hotel was both unique and had gained a secondary meaning due to its distinctiveness, the Indian Hotels Company Limited (IHCL) was granted the trademark registration.
The primary reason behind the registration was to prevent the unauthorised commercialisation of the structure of the hotel without prior permission or licence from the proprietor. However, such trademarks can also help protect the distinctive architecture of the buildings from being forced without permission.
Similarly, the Phiroze Jeejeebhoy Towers building at Dalal Street in Mumbai was granted trademark registration in 2018 to the Bombay Stock Exchange (BSE) for its unique structure and the heritage it represented. The trademark protection granted would help preserve the distinctiveness of its architecture as well as the cultural heritage behind its structure.
Both the aforementioned buildings have the capability to function as an indication source, given their popularity as landmarks and their rich cultural history. In addition, they also act as a geographical representation, thus satisfying the eligibility criteria of a trademark.
Purpose of 3D trademark
The emergence of 3D trademarks came with developing technology, since earlier, it was difficult to manufacture complex packaging or shapes of goods without proper machinery. With advancements in machinery and technology, the ever-present human creativity can now also be expressed through the packaging and the shape of the products. As with any other trademark, shape or 3D trademarks also need to satisfy the same functionality. They should be distinctive in nature so that any common man can identify the source or origin of the goods, just like any other type of trademark.
However, while it may sound simple, such is not the case. The parameter for distinctiveness in 3D trademarks is harsher from other marks, especially since the shape of the goods can often be technical or functional in their application, and giving such shapes trademark protection can hinder others from manufacturing in the same industry.
Let us understand this through an illustration. In India, ceiling fans are quite a common sight to see, isn’t it? That is also the case with its shape, which is commonly found in the form of three- to four-armed machinery that moves in a circular motion above our heads to produce gusts of wind.
Despite the different brands, the shape remains common among all, and that is because the shape is functional in nature. The fan needs three or more arms to circulate the air in the room, and without this, the ceiling fan would have no use. In such a case, if someone tries to register this ceiling fan design as a trademark, then they wouldn’t be able to secure such protection.
Since the design is functional in nature, it cannot be registered. If it was, then there would be a monopoly in the market, and it would create unfair competition amongst the competitors. The same is the case for designs that are created due to a technical result. In simpler terms, any design that comes due to some technical manufacturing of the goods cannot be trademarked.
The best example of this would be the default shape of the handle of a cup or the default shape of the bottle and bottle caps. Any shape that was produced due to the technical manufacturing of the product cannot be registered as a trademark.
In the case of Levi Strauss and Co. vs. Imperial Online Services Private Limited (2021), the Delhi High Court held that even if a shape mark can be a part of the design, it is still required to satisfy the trademark functionality at the time of applying for its registration. The appearance of a mere stitching pattern cannot be recognised as a trademark unless it is distinctive and has an ‘acquired meaning’.
As per the court, the test of acquired meaning in this context would be similar to that of the test of secondary meaning that is applied to descriptive words in a mark. The court also relied on the book Trademarks and Unfair Competition by Thomas McCarthy when discussing geometric shapes as trademarks.
According to McCarthy, “uncommon or unusual shapes and symbols that contain some minimum amount of inventiveness or fancifulness can be regarded as inherently distinctive and protected as such, without the need for proof of secondary meaning. The issue is whether this shape is so unusual for this type of goods or services that its distinctiveness can be assumed.”
In simpler terms, in the absence of any secondary meaning of the shape, the focus would be on whether it is unusual or unique for that category of goods. For example, the unique shape of a perfume bottle.
The shape of the product should be unique for its goods and not functional in nature. It can be only for aesthetic purposes, setting aside the product from all its competitors. In such a case, even without an acquired meaning, the shape can be registered as a trademark. The 3D mark should also act as source identification, just like any other trademark.
Protection of 3D marks in India
In India, once a 3D mark is registered or even applied for registration under Section 18 of the Trade Marks Act, 1999, the proprietor will be entitled to sue anyone who infringes on or copies their mark. If the 3D mark is unregistered or is in the process of being registered, the remedy would be awarded under common law in the form of passing off.
Under Section 20 of the Code of Civil Procedure, 1908 (hereinafter referred to as ‘CPC’), the proprietor of the unregistered mark can file a lawsuit where the defendant resides, where the defendant’s business is carried on, or where the cause of action arose. However, if the mark is registered, then a suit of infringement can be filed under Section 29 of the Trade Marks Act, 1999.
For the claim of trademark protection for a 3D mark, Section 9(3) of the Trade Marks Act, 1999 is to be consulted. This Section specifies three conditions under which a trademark would not be qualified as a registered 3D trademark:
- Where the shape of goods results from the nature of the goods themselves.
- Where the shape of goods is such that it is necessary to obtain a technical result.
- Where the goods are given a substantial value due to their shape.
To elaborate, Section 9(3)(a) focuses on a situation where the shape of the goods has resulted due to the nature of the goods. For example, the shape of a pen or pencil. The cylindrical shape of the pen makes it easier to hold. Thus, given the nature of a writing instrument, the cylindrical shape is a must and cannot be trademarked.
Meanwhile, Section 9(3)(b) states that any shape produced due to the technical manufacturing of the goods cannot be trademarked. As discussed earlier, the default design of a ceiling fan with three or more arms is made as such to circulate the air in the room. Such a design that has a purpose and is functional cannot be trademarked under this sub-clause.
Section 9(3)(c), on the other hand, talks about a shape that can add substantial value to the goods. Here, the ‘value’ can be both functional and monetary in nature. The best example for this would be two-handled mugs in which the second handle can be said to have both functional and monetary value and thus cannot be registered as a trademark.
The purpose of this section is to prevent monopolies of the common shape of goods and ensure that such goods are free for public usage. The contour of a Coca-Cola bottle, the 3D shape of the Super Cub scooter of Honda, and the shape of the Zippo Lighter are some famous examples of 3D trademarks.
Those wondering what types of 3D marks can be registered as trademarks must remember that the mark should not be functional or technical in nature and should act as an identifier of the source. It can be unique among goods whose shape serves no purpose other than its aesthetic appeal. The best examples of this would be the fancy perfume bottles that we often come across in a variety of shapes, sizes and colours. Their shapes have no purpose other than their aesthetic and for easier identification of their brand.
Other than these, 3D marks can also be protected under Section 2(1)(zg) of the Act. This section lays down the definition of a ‘well-known’ trademark, which is a mark (in relation to goods or services) that has become popular due to a considerable segment of the public using the goods or services under the said mark.
The substantiality of this mark is judged by the fact that if another marketer uses such a mark in relation to his goods or services, then the public would be likely to take that mark as indicative of a connection in furtherance of trade or service of the original marketer.
For example, assume Coca-Cola’s bottles are newly launched in India, without any trademark. Coca-Cola’s packaging is such that it is recognised by the shape of its glass bottle. If any other company makes a bottle of a similar shape and consumers start identifying and relating it to Coca-Cola’s bottle, then in that situation Coca-Cola would feel the need to protect the bottle’s shape under trademark law, and such a shape would come under the definition of a well-known trademark, as it qualifies the requirement of becoming a substantial segment of the public.
Along with the fulfilment of requirements under Section 2(1)(zb), the Manual of Trademarks, Practice and Procedure, 2015 aids the applicants in listing down the requirements of graphical representation, which are to be adhered to by the applicant, in cases of unconventional trademarks, including smell marks, sound marks, colour marks, etc. as:
- A trade mark must have the ability to be graphically represented for the purpose of registration.
- A trade mark that has colours, shapes, or packaging should come along with a concise and accurate description of the trade mark.
Such a description would be included as an endorsement, along with the graphical representation, which would help define the scope of the registration. It is also to be noted that the burden of providing a suitable representation of the trade mark is on the applicant.
Let us again take the example of the shape of the Coca-Cola bottle. The graphical representation of the shape should be in the form of a perspective drawing while depicting all its features and should have an accurate description of the shape.
To summarise, the following elements of a product can help in protecting a 3D trademark:
- Consumer recognition
- Acquired distinctiveness
- Goodwill
- Extensive proof of usage
Three dimensional (3D) trademark registration in India
The trademark registration process for 3D marks in India is quite similar to that of 2D marks, just with a few additional steps due to its unconventional nature. Given below are the steps for the registration process of 3D trademarks in India:
Trademark search and classification
Just like any other trademark, 3D marks also need to be classified as per the trademark classes defined under the International Classification of Goods and Services, 2001 (also known as the NICE classification) published by the World Intellectual Property Organization (WIPO). Rule 20 of the Trade Mark Rules, 2017 also mandates such classification as per the current edition of the NICE classification.
Once the classification is done, the proprietor is then advised to do a thorough trademark search and market search for their mark. Since 3D marks are quite uncommon to be registered as trademarks, such a search might be comparatively easier and less time-consuming than 2D marks. A thorough trademark search across all Indian trademark databases would prevent any risks of objections from the registrar during the examination process.
Trademark application
Once the 3D mark is designed, classified and prepared for with thorough trademark searches, it is time to file the registration application. Under Form TM-A, one can file their 3D trademark for registration online along with all the prescribed fees and required documents as per Rule 23 of the Trade Mark Rules, 2017.
In the application, the applicant must mention the category of their trademark as ‘three-dimensional trademark’ while providing a detailed description of the shape mark, including its dimensions, combination of colours and an explicit illustration of its shape.
For instance, if the applicant is trying to register the iconic shape of the bottle of their drink, they need to add the details about the shape of the bottle (for example, dome shape attached to a long neck and flat bottom) as well as the dimensions of the bottle. Any other details, such as the combination of colours used on the bottle or any other design that may appear on the bottle, also need to be mentioned in the description.
Furthermore, if there is any usage of the shape mark, then the first usage also needs to be mentioned and submitted as per Rule 25 of the Trade Mark Rules, 2017. This usage can be shown in the form of invoices of sale or even printouts of advertisements representing the 3D mark for which the registration is sought.
As per Rule 26 of the Trade Mark Rules, 2017, documents containing the representation of the 3D mark also need to be submitted alongside the application. These representations should be in the form of drawings or pictures of the shape mark from different angles to emphasise its dimensions and cover the whole shape mark from all views. Pictures of at least three to five different angles (top, bottom and all the sides) of the shape mark should be added to the representation.
Trademark examination
Once the registration application is filed, the registrar examines the application for the availability of the mark and determines whether the mark can be registered as a trademark or not. As per Rule 33 of the Trade Mark Rules, 2017, the registrar may raise an objection and ask the applicant to submit some additional description of the shape mark, such as more pictures of the 3D trademark from different angles and the reason for the usage of the shape mark.
If the registrar is still not satisfied, a show cause notice for the applicant will be issued. During the hearing, the applicant can present a specimen of the shape mark along with proof of its usage in the market, if any. This is usually done for the benefit of the applicant and to determine whether the 3D mark can even be registered as a trademark in India or not.
Trademark publication and opposition
After the objections of the registrar are cleared, the 3D trademark is then published in the trademark journal for public access and to invite any third-party opposition. Usually, a period of four months after the date of publication in the trademark journal is given to raise opposition as per Rule 42(1) of the Trade Mark Rules, 2017. Any interested party can raise opposition based on the similarity of the 3D mark with their own trademark or even opposition regarding the registrability of the mark in India.
Only after all the third-party oppositions are settled can the trademark application proceed to certification from the registrar.
Trademark certification and renewal
Once all the steps of the registration are achieved, the registrar shall grant the applicant a trademark certificate as per Section 23(2) of the Trade Marks Act, 1999, that would be valid for ten years from the date of filing of the application. Once (or even before) the protection period expires, the applicant can apply for the renewal of the trademark with the appropriate fee under Form TM-R as per Section 25(1) of the Act.
Trademark Act vs. Design Act
As established earlier, a 3D mark consists of the shape of the goods, which can also fall under the category of an industrial design. Given that the design of a product also includes its shape, we should be able to register it under the Design Act, 2000 as well. Thus, the question arises which one is better: registration under the Trademark Act or the Design Act? Before answering this question, let us briefly touch upon the differences and benefits of both legislations.
As one may already know, the trademark law usually protects the practical or functional aspects of the goods. This includes the source identification of a product, along with its geographical representation and the goodwill attached to it. The quality of the goods is connected to the goodwill that the mark may have.
In contrast, design law protects the appearance of the goods. Rather than focusing on functionality, design law protects the creativity and visual aspects of the goods. This includes the patterns drawn on the labels, the unique shape of the product, the distinct packaging, etc.
In a nutshell, trademark law prioritises identification and goodwill, while design law prioritises visual appearance and creativity. Thus, if a shape or 3D mark is also capable of functioning as a trademark, it would be better to register it under the Trademarks Act.
This is mostly so, since in India, it is prohibited to register the same design or shape mark under both the Trademark Act and the Design Act. Section 2(d) of the Design Act states that designs under this Act exclude any trademark. Thus, one can receive protection only under any one of the two acts. Due to this, it becomes crucial for one to accurately determine which law would apply for the protection of their 3D mark.
Both trademark and design laws are territorial in nature and need to be registered in their local nations to increase the reach of protection. However, in India, the protection period prescribed under Section 11 of the Design Act is only for ten years and can be extended up to another five years. On the other hand, Section 25(1) of the Trademark Act also prescribes a ten-year protection period that can be renewed each time for ten additional years.
During registration, the shape mark is required to be submitted in the form of a 2D representation from at least five different angles. These must include the top and bottom views and the different sides encompassing the product. Along with this, a detailed written description of the representations must also be provided. This helps to ensure a comprehensive understanding of the shape, which is up for publication and protection.
Usually, the registration and examination process of the shape marks as a trademark is scrutinised in quite a strict and rigorous manner to prevent granting protection to any shape that might hinder or unfairly affect the competition in the market. The shape’s uniqueness and ability to enable source identification are the most scrutinised factors.
However, several aspects, such as the 2D marks on the shape (like labels, wordmarks, descriptions, instructions, graphics, etc.), can help in giving it a distinctive look. The biggest example of this would be the packaging of Maggi noodles, where the trademark, along with the photograph of the noodles and the drawing of the instructions, is distinctive on its own. It adds to the appearance of the product as well as the functional aspect of identification.
Protection under both legislations
As mentioned earlier, the Design Act, 2002 explicitly prohibits registration of any design that is already considered a trademark under the Trade Marks Act, 1999. Thus, protection for the same design or shape under both laws is not possible. However, one can navigate the same, by registering different aspects of the goods under each law.
For instance, let us take the example of a plastic bottle of soda. If the shape of the plastic bottle is completely novel, then it can be registered under the Design Act. However, if the shape is not novel but is quite unique with respect to the concerned class of goods it is registered under, then a trademark would be a better option. In other words, the shape needs to be distinctive in its field to be recognised as a trademark.
Furthermore, if there are any 2D aspects to the bottle, such as graphics or distinct drawings, then those can be registered under the Design Act. Meanwhile, the 3D marks, like the shape of the product and the packaging, can be registered as trademarks. In this manner, the same product would have the protection of two different intellectual property laws.
Additionally, if the protection of the mark lapses under the design law, then the proprietor can register it under the trademark law. In simpler words, once the protection period prescribed under the Design Act has expired, the proprietor can apply for trademark protection for the same 3D mark.
In fact, even without registration of the 3D mark under the trademark law, the proprietor can still sue for passing off while also claiming damages for infringement of their registered design under the Design Act. This exact scenario was seen in the case of Carlsberg Breweries A/S vs. Som Distilleries and Breweries (2018), wherein the Delhi High Court allowed the plaintiff to combine the claims for infringement of a registered design and damages for passing off of an unregistered trademark. In this case, the plaintiff filed a suit for infringement of their registered design and passing of their unregistered trademark in relation to the ‘Carlsberg’ bottle and its overall packaging. The defendant had argued that the suit was not maintainable since the Delhi High Court had previously established in the case of Mohan Lal Proprietor of Mourya vs. Sona Paint & Hardwares (2013) that the two claims were distinct and protection under both cannot be claimed in the same suit.
When the case was appealed to the Delhi High Court, the court observed that both design infringement and passing off had common questions of fact and law, making it possible to allow for a combined suit. Based on this view, the court overturned the precedent established in Mohan Lal Proprietor of Mourya vs. Sona Paint and Hardwares (2013), with the rationale that Order II Rule 3 of the CPC permits joinder of causes of action, and thus, claims under both trademark law and design law can be permitted within the same suit.
The primary reason for doing this was to avoid a multiplicity of proceedings and unnecessary litigation costs, especially when the premise of the causes of actions was similar. This judgement also broadened the scope of protection for designs that are registered under the Design Act by allowing them protection under the doctrine of passing off if they can prove to function as unregistered trademarks.
Another case that brought significant changes to the overlapping protections of trademark and design law is Super Smelters Limited vs. Srmb Srijan Private Limited (2019). In this matter, the Calcutta High Court held that after the protection period of a registered design has lapsed, the same design can also be registered as a trademark if it has gained goodwill amongst the public and the design of the product is exclusively associated with the proprietor.
As per the court, a lapsed design can still be capable of the functions of a trademark that can be quite independent of its design rights. While trademark protection and design protection cannot overlap, one can exist when the other lapses.
Protection of 3D trademarks around the world
European Union (EU)
When it comes to laws of other countries, the European Union Trademark Directive, 2015 is an extensive directive that covers all 27 member states of the EU, excluding the UK. It helps in obtaining Europe-wide protection through a single application, and it is also a cost-effective way.
Referring to Article 3 of the EU Trademarks Directive, to qualify a shape of a product or packaging for trademark protection, it should be capable of being distinguished from the goods and services of others in the market and being represented in the trademark register in a manner that causes no confusion on what subject matter the trademark protection is awarded to by the authorities.
The representation is judged by the test of whether the competent authorities and the public can determine the same or not. Further, according to Article 120(2) of the Industrial Property Law, 2002, if a trademark is capable of distinguishing its goods or services, then it may be capable of being represented graphically.
Article 131(2)(6) of the same law mentions the same conditions for products that cannot be registered as a trademark as Section 9(3) of the Indian Trademark Act. The EU law does not take into account functional features. For example, pizza’s function is to taste delicious, and its taste cannot be registered as a trademark. Thus, only where there is absolute ground of functionality or substantive value of a shape, trademark protection can be given.
United States of America (USA)
In the case of the USA, Section 43(a) of the Lanham Act, 1946, provides protection to 3D or shape marks, whether registered or unregistered. It also protects trade dress from infringement. However, any mark to be protected under this provision must be distinctive in nature and have gained a secondary meaning in the market.
Japan
Meanwhile, in Japan, trademark law is more focused on the visual appearance and its recognition by the public. Thus, 3D trademarks are protected, as well as explicitly mentioned in the definition of trademark given under Article 2(1) of the Japanese Trademark Act, 1959.
Other countries
In a 2015 paper by the Intellectual Property Owners (IPO) Association International Trademark Law and Anti-Counterfeiting Committee under the International Trademark Association, named ‘Shape Trade Marks – An International Perspective’, several countries were highlighted for their protection of 3D trademarks. In countries like Argentina, Australia, New Zealand, Singapore, Portugal and Taiwan, shape marks can be registered and protected, but the scrutiny for the process can be quite rigorous and strict.
In fact, in Australia, 3D marks face quite a bit of difficulty during registration since the registrar has to determine the novelty of the design as well as how distinguishable it is from the other goods in the class it is registered under. Oftentimes, the design is either not unique and novel or is a result of the functionality and nature of the goods. Only some shape marks are allowed registration, based on the satisfaction of the aforesaid criteria, such as the Tiffany’s box.
The distinctiveness in this case refers to the uniqueness of the 3D mark rather than the distinctiveness it may gain over usage for a long period. Thus, even if a 3D mark has gained goodwill and distinctiveness among the public, its registration may still be rejected due to its shape being in the public domain for years or for not being novel.
On the other hand, the 2015 paper also mentions countries like Nigeria and South Africa, where trademark protection is more relaxed, as compared to developed countries. In these nations, there are no express provisions that protect shape or 3D marks under trademark law. Most proprietors opt to register their 3D marks under industrial designs or patent law for better protection.
Significant case laws
Ferrero Rocher case (2018)
Ferrero Rocher products have been sold for a long time now. The products enjoy a great customer base, as they have a unique taste and a visual appeal. As a globally known brand, it also faces trademark issues all across the globe.
Singapore
The question of when a trader should have a monopoly over a shape that he uses in connection with his trade was answered by the Court of Singapore when a trademark application was filed by FERRERO S.P.A. in 2019.
While analysing whether trademark protection should be given to the packaging of Ferrero Rocher, the repercussions of accepting “mere recognition of a product” for its registration, which was earlier granted by Justice Jacob in the matter of Unilever PLC’s Trade Mark Application (2003), were again highlighted.
It was stated that a product’s appearance becomes well-known after the product has been sold and advertised widely by a manufacturer. It was further said that in such a situation, appearance alone would start serving as a trademark, and then a manufacturer could have the shape of the product registered solely on that basis. The manufacturer would acquire a position wherein he can stop other parties/traders from using their trademarks or from selling their products, even though no one is deceived or misled by the same.
The applicants filed the application two times, with the second one in 2019. The written description was submitted on 10th September, 2019 and according to it, the mark was a brown and gold striped paper cup with a 3D ball-shaped chocolate, wrapped in a golden foil having a white sticker on top, placed in it. This particular description did not make any reference to the white oval sticker’s gold rim, which was referred to the first time.
The question of inconsistency was raised by the court. It also questioned the fact that the mark consisted of a ball-shaped chocolate, since the applicant’s submissions or evidence nowhere mentioned that the mark was limited to a ‘ball-shaped chocolate’.
In the final judgement, it was broadly considered that while the application mark was indeed unique, an average consumer who does not know about or has not heard of the applicant’s chocolates would largely view it as ‘functional packaging’, rather than a trademark, if it were to be used in respect of other goods, such as pastries, stuffed wafers, chocolate-based products, etc., for which the registration was sought by the applicant.
Another essential question, which was not answered or proved by the applicants, was whether the average consumer would view any or all the components of the packaging as distinctive if the wordmark ‘FERRERO ROCHER’ was not on the product. It was because of this unanswered question that Ferrero Rocher was not granted the trademark.
India
In Ferrero Spa vs. M/s Ruchi International (2018), the defendant, Ruchi International, was an importer, as well as a marketer, dealing in chocolates under the brand name ‘Golden Passion’, in India. These chocolates were lookalikes of the plaintiff’s ‘Ferrero Rocher’ chocolates, which were sold under the FERRERO ROCHER mark and trade dress.
Even after an injunction was passed against the defendants, the manufacturing of these chocolates continued in India and was exported from China by the defendants under the brand ‘Golden Passion’.
The court held that the similarity in the packaging between the defendant and the plaintiff’s products infringed the plaintiff’s rights under Section 29(5) of the Trademark Act. It was decided by the court to grant trade dress protection along with recognition as a well-known trademark, within the meaning of Section 2(1)(zg) and Section 11(6) of the Act.
The effect of this judgement was that Ferrero Rocher was granted a 3D trademark over the packaging of its product, as far as India is concerned.
Kit-Kat case (2018)
KitKat’s maker, Nestle, is a food multinational that has been trying to establish a trademark for its product in Europe since 2002. However, Luxembourg’s European Court ruled against it.
The case was between Nestle’s Kit Kat and the maker of Cadbury chocolate, US rival Mondelez, over four-fingered wafer biscuits. The biscuits were first sold in 1935. The long battle concluded in July 2018, wherein KitKat lost the appeal and its shape trade mark became annulled across the EU.
Now, post Nestle’s successful application for a national trademark, it is valid only in the member states. The longevity of a mark could have been considered as a factor in this case, but Kitkat has been using the shape since 1935, and Kvikk Lunsj (formerly Mondelez) started using it just two years later, in 1937.
When this chocolate wrapper is first picked up, its shape is not perceptible. Otherwise, the shape could be used as a mark to identify the product. Further, because an average consumer should be able to recognise the brand with a clear and precise trade mark, this presented a higher hurdle for the shape.
Thus, if the particular four-fingered shape was fulfilling a function, it could not be a trade mark. Cadbury argued on similar lines and said that KitKat’s shape had everything to do with a technical or design issue and not the identity of the brand.
Dabur India Ltd. vs. Amit Jain & Anr (2008)
In this case, Dabur India had filed a lawsuit against the defendant for allegedly copying the shape and name of their product, ‘Dabur Amla Hair Oil’. The product of the defendant was named ‘Plush Amla Hair Oil’ and had a bottle shape as well as a cap design, similar to that of the plaintiff’s registered design.
The Delhi High Court analysed both bottles side-by-side to note the dissimilarities between the two. The court found that both the plastic bottles had different sizes, but the shape and design were deceptively similar.
While observing the shape mark registered under the Design Act by the plaintiff, the court observed that the shape of the bottle was not inherently distinctive or unique in its structure. The elevations of the bottle gave it some design, but it could not be called novel or distinctive in nature. The court further noted that the Apex Court had also found the bottle shape and design to be not novel or distinctive in nature. However, the plaintiff had registered their bottle shape, and the registration application was both approved and valid at the time.
Even if it was contended by the defendants that the bottle shape was in the public domain in the USA, it does not satisfy the requirements of Section 19 of the Trademark Act, which talks about the cancellation of a registration. A trademark is a territorial right and should be considered as such.
The court also stated that just because there was a similar design in the USA, it would not amount to prior publication that would render a design registered in India liable to cancellation. Furthermore, it does not affect the right of the plaintiff seeking an order restraining the defendant from infringing its registered design.
Thus, in view of the above, the court decided in favour of the plaintiff and passed an injunction against the defendant, with costs of Rs 20,000 to be paid by the defendant to the plaintiff. This case highlights how the registration of a design or shape can triumph over most of the facts, even if the registered design has prior publication in another country.
Gorbatschow Wodka vs. John Distilleries Ltd. (2011)
In this landmark case, Justice D.Y. Chandrachud of the Bombay High Court passed a decree concerning the transborder reputation of a shape or 3D mark. The plaintiff owned one of the most popular vodka brands in the world, ‘Gorbatschow Wodka’. It had a very unique design and bottle shape. The vodka bottle was usually made out of glass, with a slender and cylindrical neck attached to a bulbous dome that widens to the bottom of the bottle. This unique bottle design was applied for registration by the plaintiff and was still pending at the time.
Meanwhile, the defendant launched their own vodka brand named ‘Salute’ with a different colour combination, but the shape of the bottle was very similar to that of the plaintiff’s product. When this came to the plaintiff’s knowledge, they filed a lawsuit against the defendants for passing off.
The main contentions of the plaintiff were that the design and shape of the bottle of ‘Gorbatschow Wodka’ were very distinctive in nature and served no purpose other than its appearance. It was made for the sole reason of setting itself aside from other brands in the industry and for easier identification by the general public. If the defendant was allowed to use a design so similar to that of the plaintiff, it would dilute the distinctiveness and goodwill acquired by the plaintiff’s products.
The defendant, on the other hand, argued that their product ‘Salute’ had a completely different colour palette, as well as label and design, as compared to the plaintiff’s product. Furthermore, the consumers of average intelligence could easily distinguish between the two, and it was an unlikely situation that any confusion may occur.
Hearing their arguments, the court observed that while the colour combination and label were distinct, the shapes of both the bottles were deceptively similar to one another. The court also noted that the plaintiff had adopted the bottle shape for no other purpose than its aesthetic, with its design being distinct from all its competitors in the market. As per the plaintiff, the architectural design of the Russian Orthodox Church was the inspiration behind the design of the bottle. This made the shape mark, both novel and creative.
The court emphasised that the defendant adopted a similar bottle shape with a bulbous structure, with no explanation for the same, especially considering the fact that both the plaintiff and the defendant are part of the same industry. The fact that both the brands and bottles were for the same alcoholic beverage, that is, vodka, was also not overlooked.
The court also noted that the plaintiff’s brands were available both in India as well as internationally and thus had a transborder reputation with their trademark and bottle shape. In addition, the plaintiff had prior use of the defendant, which also played in their favour.
In view of the rationale above, the court held the judgement in favour of the plaintiff and passed an injunction against the defendant. This view was backed by the Delhi High Court in the cases of Coca-Cola Company & Anr vs. Narsing Rao (2014) and Zippo Manufacturing Company vs. Anil Moolchandani (2011).
Knitpro International vs. Examiner of Trade Marks (2022)
This is a more recent judgement on shape marks, passed by Justice Prathiba M. Singh of Delhi High Court. In this case, the plaintiff’s shape mark for a knitting needle was refused by the registrar, and being aggrieved by the same, they appealed to the High Court.
The knitting needle in question was a pair of metallic sticks with a thick diameter and a flat structure at the end. They were registered under class 26 of trademarks in respect of ‘knitting needles and crochet hooks’.
The application was objected to by the Trademark Registry for not complying with Section 9(1)(a) and Section 9(1)(b) of the Trademarks Act. Due to its lack of distinctiveness, it was later rejected, and the plaintiff appealed against the same.
During its hearing, the plaintiff submitted that the shape mark of the knitting needles was distinctive in nature and had acquired a secondary meaning amongst the public. However, when the court enquired about distinctive features that would amount to trademark protection, the plaintiff was unable to answer. Instead, they decided to withdraw the appeal.
Observing the same, the court briefly noted the evolution of the definition of ‘mark’ and how it came to include non-traditional marks, such as smell, shape and sound, among others. The fact that remained unchanged was that every mark was supposed to fulfil the quintessential function of a trademark, which is to be distinctive from other competitors and act as a source identification.
As per the court, if a mark is unable to help the consumers identify its origin, it is not eligible to be registered as a trademark. The mark can be of any type, but as long as it fulfils its objectives, it can be registered.
In the present case, the knitting needle in question had a shape that was quite generic in its structure, with no human creativity to make it distinctive. The lack of distinctiveness also made it incapable of acting as a source identification. A distinctive shape often helps the consumers associate the product with certain brands and companies. If it is too generic, it would confuse the public with respect to its origin.
However, if the shape of a product has acquired a secondary meaning in the market, then its inherent lack of distinctiveness can be overlooked, just like in the case of descriptive marks under the Trademark Act.
Conclusion
At its core, trademark law functions as a consumer protection measure, which prevents consumer confusion and makes it easier for them to purchase the goods and services they want. In granting registration to 3D marks or packaging, courts and the registries of trademarks should try to balance the interests of the applicant traders who want trademark protection with the interests of other traders who may use or are using elements of such trademarks in good faith.
Further, it must be noted that though there are sufficient provisions under trademark law to secure 3D packaging, alternatively, one can also protect the shape of products under the Design Act, which applies to both 2D and 3D marks.
Frequently Asked Questions (FAQs)
What is a trade dress?
Trade dress, as the term suggests, is the overall ‘dress’ of a product. In simpler terms, it is the overall appearance of a product, which includes its colour, shape and design. For instance, the iconic look of Colgate toothpaste, with its red, blue and white combination, along with its specific design. In some products, this also extends to its shape, such as the appearance, colour and shape of the Harpic bottles. This overall appearance and presentation of a product can often help customers identify their origin at the very first glance, making trade dress a very important part of the trademark and marketing of a product.
Can trade dress be registered in India?
Yes, trade dress can be registered in India. Under Section 2(1)(m) of the Trade Marks Act, 1999, ‘mark’ includes the shape of goods as well as their packaging, which is exactly what a trade dress is. Thus, if a product’s trade dress is unique in its appearance, it can be registered as a trademark in India.
Can a shape be registered as a trademark?
Yes, the shape of a product can be registered in India. Under Section 2(1)(m) of the Trade Marks Act, 1999, a ‘mark’ includes the shape of goods, and thus, it can be registered under the Act if it satisfies Section 9(3) of the Act.
Is trade dress a 3D trademark?
No, a trade dress is not merely a 3D trademark. Trade dress is the overall appearance and feel of a product. It includes both the 2D trademarks (logo, word, graphics, etc.) of the product as well as the 3D trademarks (shape of product and packaging). It does not only consist of 3D trademarks. On the other hand, the 3D trademark is usually considered a part of the trade dress.
References
- https://www.wipo.int/wipo_magazine/en/2005/02/article_0003.html
- https://www.scconline.com/blog/post/2023/03/18/the-case-of-unconventional-trade-marks-does-the-trade-marks-act-1999-need-reform/
- https://www.mondaq.com/india/trademark/888178/the-multidimensional-question-of-3-dimensional-trademarks
- https://www.lexology.com/library/detail.aspx?g=0488bfdf-8e14-494c-85ce-ce6654106292
- Eashan Ghosh, 2020, Imperfect Recollections: The Indian Supreme Court on Trade Mark Law, Thomson Reuters.
- P. Narayanan, 2017, Law of Trade Marks and Passing Off, Eastern Law House.
- Iyengar, 2011, Trade Marks Act: Including Schedules, Rules, Notifications, Treaties, Conventions and Much More, Universal Law Publishing.
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