This article is written by Aditi Aggarwal, a student of Symbiosis Law School, NOIDA. This article throws light on the emerging 3D trademarks, how to secure them under trademark law along with some important case laws and laws of other countries.

Introduction 

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 India, Section 2(1)(m) of the Trademarks Act, 1999 defines a ‘mark’ as one which 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. The scope of this definition has been widened to include non-conventional trademarks like 3-Dimensional trademarks.

What is a 3D trademark 

A three-dimensional trademark is an unconventional trademark that makes use of a 3D (three-dimensional) shape of a product or its container or package to achieve a distinct place in the growing marketplace. It is non-conventional in the sense that it does not comprise 2D (two-dimensional) elements of mere words, numerals, or figures.

What cannot be registered as a trademark in India has been given under Section 9(3) of the Trademark Act. Thus, there are three conditions under which a trademark would not be qualified as a registered 3D trademark:

1. Where the shape of goods is resulting from the nature of the goods themselves.
2. Where the shape of goods is such that it is necessary to obtain a technical result.
3. Where the goods are given a substantial value due to their shape.

The purpose of this section is to prevent monopoly 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.

How can it be protected in India

Section 2(1)(zg) gives the definition of a “well-known trademark”. According to this section, a well-known trademark is a mark (in relation to goods or services) that has become a considerable segment of the public which uses such goods or receives such services.

The substantiality is judged by the fact that if another marketer uses such 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, along with a person using the mark in relation to the first-mentioned goods or services.

For example, just assume Coco-Cola’s bottles are newly launched without any trademark in India. Coca-Cola packaging is in such a way that it is recognised by the shape of its glass bottle. If any other company makes a bottle of 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 fulfillment of requirements under Section 2(1)(zb), the Manual of Trademarks, Practice and Procedure in 2015 is there to aid the applicants which list down the requirements of graphical representation which have to be adhered to by the applicant in cases of unconventional trademarks including smell marks, sound marks, colour marks, etc as:

1. A trade mark must have the ability to be graphically represented for the purpose of registration.
2. A trade mark that has colours, shape, or packaging should be along with a concise and accurate description of the trade mark. 

Such a description would be entered as an endorsement which would be taken along with the graphical representation and that will help to define the scope of the registration. It is also to be noted that the onus to provide a suitable representation of the trade mark is on the applicant. 

Taking the Coca-Cola bottle’s shape example again, the graphical representation of shape should be in a form of perspective drawing and showing all features and should have an accurate description and the shape. 

To summarise, the following elements in a product can protect 3D packaging:

1. Consumer recognition;
2. Acquired distinctiveness;
3. Goodwill;
4. Extensive proof of usage;
5. Higher burden of proof by applicant.

Laws of other countries 

When it comes to laws of other countries, the European Union trademark 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 other undertakings, and being represented in a way that enables to determine a clear as well as a precise subject matter of the protection which is afforded to its proprietor. 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, 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.

Case laws

Position of Ferrero Rocher in terms of trademark protection

Ferrero Rocher products have been sold for a considerable time now. The products enjoy a great customer base as they have a unique taste and a visual appeal.

1. Singapore

The question of ‘when a trader should get a monopoly over a shape that he used 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 analyzing whether trademark protection should be given to the packaging of Ferrero Rocher, the repercussions of accepting “mere recognition of a product” for its registration were again highlighted which was given first by Jacob J in Unilever plc’s Trade Mark Application [2003].

It was stated that a product’s appearance becomes well-known after a product has been sold and advertised widely by a manufacturer. It was further said that in such a situation, appearance alone will start serving as a trademark and then a manufacturer gets the shape of the product registered solely on that basis. It was further said that now the manufacturer acquires a position where he can stop other parties/traders from using their trademarks or from selling their products, even though no one is either deceived or misled.

The applicants filed the application 2 times with the second one in 2019. The written description was submitted on 10th September 2019 and according to it, the mark is in a  brown and gold striped paper cup in which a 3D ball-shaped chocolate is kept, a wrapper around the shape in a golden foil and a white sticker on its top. This particular description was not making 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. The Court also questioned the fact that the mark comprises ball-shaped chocolate as the Applicant’s submissions or evidence nowhere mentioned that the Application Mark is limited to a “ball-shaped chocolate.”

Final decision

It was looked at a wider level that the application mark was indeed unique but despite its unusual nature, it was held that an average consumer who does not know or has not heard about the applicant’s chocolates would view largely view it as ‘functional packaging’ if it were to be used in respect of the goods like pastry, stuffed water, chocolate-based products, etc. for which the registration was sought by the applicant.

It was further held that an essential question was not answered or proved by the applicants i.e., would the average consumer view any or all components of packaging as distinctive packaging if the distinctive word mark ‘FERRERO ROCHER’ was not on the product. It was because of this unanswered question that Ferrero Rocher didn’t get the trademark.

2. India

In Ferrero Spa v M/s Ruchi International (2018), defendant no. 1, i.e. Ruchi International was an importer along with 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 being passed against the defendants, the manufacturing of these chocolates continues in India and exported from China by defendant no.2 under the brand ‘Golden Passion”. 

Final decision

The Court held that the similarity in the packaging between Defendant and plaintiff’s product infringed the plaintiff’s rights u/s 29(5) of the Trademark Act. It was decided by the Court to give trade dress protection along with a well-known trademark within the meaning of Section 2(1)(zg) and Section 11(6) of the Act. 

The effect of this judgment was that Ferrero Rocher got a 3D trademark over the packaging of its product as far as India is concerned. 

Position of Kit-Kat in EU terms of trademark protection in EU

KitKat maker Nestle is a food multinational which has been trying to establish a trademark in Europe since 2002 for its product. But Luxembourg’s European Court ruled against it.

The case was between Nestle’s kit kat and 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 in the EU, KitKat’s shape trade mark became annulled across the EU. It is valid in only the member states now a successful application has been made by Nestle as a national trade mark. Longevity in 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 picked up, its shape is not visible. Otherwise, a shape could be used to identify a product. Further, because an average consumer by a clear and precise trade mark should be able to recognize the brand, 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 was everything to do with a technical or design issue and not identifying the brand feature.

Conclusion

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, 2000 which applies to both 2D and 3D shapes.

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 a trademark to 3D shapes or packaging, courts and the registries of trade marks 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.

References

1. https://www.mondaq.com/india/trademark/888178/the-multidimensional-question-of-3-dimensional-trademarks
2. https://www.lexology.com/library/detail.aspx?g=0488bfdf-8e14-494c-85ce-ce6654106292
3. https://www.lexology.com/commentary/intellectual-property/poland/sotysiski-kawecki-szlzak/trademark-protection-for-shape-of-products-and-packaging
4. https://www.trademarksindia.net/three-dimensional-trademark-registration-3-d.php
5. https://www.ipos.gov.sg/docs/default-source/resources-library/hearings-and-mediation/legal-decisions/2019/in-the-matter-of-a-trade-mark-application-by-ferrero-2019-sgipos-19.pdf
6. http://www.nishithdesai.com/fileadmin/user_upload/pdfs/NDA%20In%20The%20Media/News%20Articles/180609_A_Ferrero_awarded_Rs1_million.pdf
7. https://theconversation.com/kitkat-lost-its-trade-mark-case-what-you-need-to-know-100794
8. https://www.hindustantimes.com/world-news/eu-court-offers-no-break-as-kit-kat-loses-case-to-trademark-four-finger-shape/story-hTHKIkfnxsW2lH8a63SSbP.htm

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