Shape of the goods as Trade Mark

Sanjeev Kuchhal (Publishers) 30 October 2009

I don't think so. However you can try to get registration under Designs Act, 2000.

Swati G. Rode (consultant) 30 October 2009

for trade mark how much time it takes for registration

Vedaa Mirazkar (98457 02459) (Lawyer) 31 October 2009

it usually takes a year for trade mark registration. However, if any opposition notice is received, proceedings will begun and may take 2 to 3 years.

Vedaa Mirazkar (98457 02459) (Lawyer) 02 November 2009

Yes - shape of the goods is also registerable under Trade Marks Act.

Naresh Kumar (Student) 02 November 2009

Thank you Ms. Vedaa Mirazkar.

But I have a doubt here. When shape of the goods is protectable under Trade Marks Act, what is the necessicity of registering under Design registration?

Can you please distinguish between the two??

Vedaa Mirazkar (98457 02459) (Lawyer) 02 November 2009

Protection of shapes in India

This article is an abridged version of the article “Protection of Shapes Under Indian Law” by Mr. Abhishek Malhotra, DSK Legal, India, first published in the INTA Bulletin Vol. 63 No. 13, July 15, 2008.

The Indian Trade Marks Act includes the shape of goods in the definition of trademarks, but the scope of protection is unclear, as statutory protection for the shapes of goods was only introduced in 2003. A more interesting question is whether the shape of goods may be protected under the principles of design law or trademark law, especially in India where the definition of “design” under the Designs Act, 2000, excludes trademarks.

A decision by the Delhi High Court – though pronounced before the Act came into force – provides some assistance on the seemingly overlapping protection. In Corning Inc. & Ors. v. Raj Kumar Garg & Ors., 2004 (28) PTC 257, the judge of the Delhi High Court clarified the fundamental distinction between a trademark and a design:

[A] “trademark” signals to the mind, the source or identity of the producer/manufacturer of the article, whereas a “design” appeals to the eye and attracts the consumer/purchaser. A “trademark” may also be attractive and appealing to the eye but it should be directly relatable to the producer/manufacturer of the goods whereas the “design” may be merely appealing or attractive to the eye and need not give any indication to the consumer/purchaser about the identity of the manufacturer or producer of the article.”

The court also held that a design protects only the features of shape and configuration. This distinction is significant in view of the inclusion of shapes in the definition of trademarks under the Act, because it may be concluded that whereas trademark law protects the shape of goods, design law merely protects the features of such shapes.

With regard to the issue of distinctiveness, there is no case law in India relating specifically to shape marks. However, pronouncements on product packaging or trade dress may provide guidance on the path that the courts are likely to take when faced with such an issue. It has been consistently held that trade dress cannot be inherently distinctive, and while a claim of passing off is available, even in respect of an unregistered design, the plaintiff claiming passing off has to prove that the trade dress has acquired secondary meaning or reputation in the market in relation to the trade dress. Such reputation need not be based on use in India alone but may also be in the form of trans-border reputation of a trademark that has traveled into India. Such cases have also indicated that the amount of evidence required to establish reputation in relation to a shape mark is likely to be more than that required for a word mark.

Trust the above answers your query Mr.Naresh Kumar.