Introduction
In today’s modern and competitive world, establishing a brand identity is crucial for businesses to thrive. While logos, names, and slogans are commonly trademarked to protect brand identity, there are some unconventional trademarks that give a particular brand an advantage in the market. Smell marks, sound marks, touch marks, and shape marks are examples of such unconventional trademarks. In this article, we will focus on the ‘shape’ trademark and how it can be protected under Indian Trademark Law.
What is a shape trademark?
A shape trademark refers to the three-dimensional shape of a product or its packaging. This can include unique shapes of goods, packaging, or even containers. Interestingly, the definition of a trademark under the Trademarks Act, 1999, includes the eligibility of a shape trademark for registration in India. It states: “A mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others, and may include the shape of goods, their packaging, and a combination of colors.” Therefore, the trademark registration of shape trademarks is allowed under Indian trademark law but on some conditions.
Famous Shape Trademark Examples:
- Coca- cola bottle – One of the most famous shapes in the world is the iconic contour fluted glass Coke bottle.
- Toblerone Chocolate – The unique triangular shape of its bar is registered as a shape mark.
- Ferrero Rocher: The gold box form and associated chocolates have a trademark registered.
Legal Framework in India
As mentioned before, Section 2(1)(zb) of the Act defines a trademark as any mark capable of graphical representation that distinguishes the goods or services of one person from others. This includes the shape of goods or their packaging.
Eligibility Criteria for Shape Trademarks in India
To be eligible for shape trademark registration, the shape must meet the following conditions:
- Distinctiveness: The shape should be distinctive, meaning it must be capable of identifying the product’s origin. It must not be a common or generic shape widely used in the industry. For example, a rectangular soap bar is not eligible, as it is a common shape in the soap industry.
- Non-functionality: The shape should not be functional in nature only. Shapes that are functional, such as those resulting from the nature of product itself or meant to achieve a technical result, cannot be protected by a trademark. So, a bottle shape whose function is simply to enable stacking cannot be considered original.
- Not Necessary for the Product’s Functionality: The shape cannot substantially be dictated by function. A standard cylinder shape for a pen, for example, might not count as that shape is considered to fit right even though it is required by its function.
- Acquired Distinctiveness: If the shape is not inherently distinctive, it can still be registered if it has acquired distinctiveness over time That is, the shape has begun to represent the brand because Of how long it has been on the market.
Challenges in Registering Shape Trademarks
- Functionality Doctrine: One of the main challenges in registering a shape trademark is ensuring that the shape is not functional. The Doctrine of Functionality prevents the registration of shapes that are essential for the product’s use or affect its quality. This doctrine aims to prevent monopolization of useful product features.
- Distinctiveness Requirement: Establishing that a shape is distinctive can be difficult, particularly if it is common in the industry. This is usually the case that a shape must acquire distinctiveness through extensive use before it can be registered.
- Opposition from Competitors: Some competitors might fight the registration if they feel the shape is generic or believe it curtails their freedom to utilise similar designs. This will lead to expensive legal battles.
- Maintenance of the Trademark: Like any other trademark, a shape trademark must be maintained. If the shape is not used consistently in commerce, your registration can be cancelled.
Process of Registration
Process for Registering a Shape Trademark in India
- Public Search: A thorough search of the Indian Trademark Registry is essential to ensure that the shape is not already registered or does not conflict with existing trademarks.
- Filing the Application: The application for registering a shape trademark can be filed online or offline with the Indian Trademark Office. The applicant has to provide a graphical representation of the shape, along with a detailed description. The application can be filed in multiple classes if the shape is used across different product categories.
- Examination by the Trademark Office: The Registrar of Trademarks will examine the application for any discrepancies or grounds for refusal, such as lack of distinctiveness or functionality. If objections are raised, the applicant can file a response or attend a hearing to contest the objections.
- Publication in Trademark Journal: If the application passes the examination stage, it is published in the Trademark Journal for opposition. Third parties have the opportunity to oppose the registration if they believe it infringes on their rights or conflicts with an existing trademark.
- Opposition Period: The opposition period lasts for four months from the date of publication. If no opposition is filed, or if the opposition is resolved in favor of the applicant, the registration proceeds.
- Registration: After the opposition period, the trademark is registered, and the owner receives a certificate of registration, granting exclusive rights to the shape trademark.
Conclusion
To conclude, a shape can be trademarked in India, provided it meets the distinctiveness and non-functionality requirements under the Trademarks Act, 1999. However, because of the stringent conditions and arguments registering a shape trademark could be difficult it provides a substantial degree of protection for use in product design and packaging and so is another deterrent to those who might try to take advantage or trade under your brand or branding without authorization.
For expert guidance in trademark services and assistance with trademark filing, consult professionals like Intellect Vidhya to streamline the process and secure your intellectual property rights effectively.
Meta Description: Did you know that the famous Coca-Cola bottle has its shape protected as a trademark? Similarly, Toblerone chocolate has its triangular shape protected as a trademark. Curious to learn how these shapes can be trademarked in India? Keep reading this article.
