The Shape of a product has been included as Design under the Design Act 2000 and also under the Provisions of Trademarks Act 1999. It means shape of a product can serve the function of design as well as Trademark both.

However in the Design Act 2000, there has been exclusion of those shapes, which are Trademark. However there is no any exclusion in the Trademarks Act 1999. Meaning thereby , if some one has asserted Trademarks rights in a Shape of product, it would be highly inconvenient for him to assert Design right in the very shape of product.

Question is this, when shape of a product can be said to serve the function of Trademark and not a trademark? The Hon'ble High Court of Delhi in the Appeal bearing CA Comm IPD TM 110 of 2022 titled as Knit Pro International Vs Examiner of Trademark dealt with this issue.

The Intellectual property Division of the Hon'ble High Court of Delhi , vide its judgement dated 13.07.2022 passed in the afore mentioned Appeal, was pleased to lay down few of the basic requirement for shape of product to qualify as a Trademark.

The Subject matter Appeal was filed by the Petitioner against Order dated 26.09.2019 passed by Ld. Examiner of Trademark, where by Shape Trademark application of the Petitioner under no. 2735618 in class 26 for registration of shape of a knitting needle was refused.

The basis ground of refusal of the afore mentioned Trademark application was Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999, where by the Ld. Senior Examiner of Trademark held the subject matter Trademark to be devoid of any distinctiveness.

The Hon'ble High Court of Delhi observed that a shape of product to qualify as a Trademark , it must be unique. The Shape which are common in use and lacking distinctiveness, can not be appropriated by any body. Normally a shape which is aesthetic in nature, can be protected under the Design Act 2000. The shape of the product has to be source identifier.

However for a shape to serve the function of trade mark, it must be used in course of trade , in order to associate with particular entity. The Hon'ble High Court of Delhi also discussed one recent Judgement where Stitching Pattern was held to be protectable under the Trademark Act.

In a recently delivered Judgement dated 24.03.2022 passed in CS (Comm) 657 of 2021, titled as in Levi Strauss and Co. v. Imperial Online Services Private Limited, the Hon'ble High Court of Delhi was having an occasion to address this issue and while doing do, the same observed as under:

"list of trademarks has expanded over the years to include colour, combination of colours, shape of goods, patterns of products, smell, and
sound marks etc. These broad two categories of marks are loosely referred to as:

Traditional Trademarks and Non-Traditional Trademarks.
The Hon'ble Court recognized the possibility of conventional and not conventional trademark. In the facts of case the Hon'ble Court was posed with a question as whether a stitching pattern could qualify as Trademark. The Court observed further :

15. The present case relates to a stitching pattern which is not a product design i.e., the design of a product, but a pattern which is incorporated on Plaintiff's jeans products.

The question in such a case would be as to whether mere appearance of the said stitching pattern would perform a trademark function i.e., associate the jeans with the Plaintiff. If the answer to this question is in the affirmative then the pattern would be construed as a trademark deserving protection."

Thus in the given case , the Hon'ble Court has laid down this test that for a pattern to function as a trademark, what the court is required to see is whether the stitching pattern was able to associate itself with the product of the Plaintiff or not? This test was also applied to the present case.

The Hon'ble High Court of Delhi referred another Judgement in which three dimensional shape of chocholate was at issue , which was reported as Soci�t� des Produits Nestl� SA (Nestl�) v. Cadbury UK Ltd. [2017] EWCCA Civ 358. In this case The Court of Appeal (Civil Division) given the outline as to how the distinctiveness can be assessed. The test laid down are as under:

"In assessing whether a mark has acquired distinctive character through use, the tribunal must make an overall assessment having regard to all of the relevant evidence and all of the circumstances in which the relevant public may have seen the mark, including, for example, in advertising before a purchasing decision is made, on the product and associated materials at the point a purchasing decision is made, and afterwards, when the product is
consumed.

Nevertheless, it must also be recognized that the degree of attention of the average consumer may vary from time to time, and that, at least in some cases, it is when making a choice between different products in the category concerned that the average consumer pays the highest degree of attention."

The afore mentioned judgements in the 3 dimensional shape Trademark of Chocholate case, the court indicated that in order to evaluate the distinctiveness of a shape trade mark, it has to be seen that what kind of advertisement efforts have been made by the right holder in order to create consumer association of the subject matter shape trademark with the particular product of legal entity.

The Hon'ble High Court of Delhi observed that shape of a product , if it is aesthetic in nature, can function as a Trademark. However in order to qualify as a Trademark , the shape by itself should immediately be identifiable with the source of the product. Secondary meaning was required for shape of a product to qualify as a Trademark.

The generic shape of the product or any other shape which is not unique or distinctive , can not qualify as trademark. As a essence it can be said that only those shape of product could qualify as trademark, with whom consumer can associate with particular product with a particular legal entity. The actual test is source identifier.

If one shape of a product is serving as source identifier, it can serve as trade mark as well. As in the present case, the Petitioner failed to point out any unique feature or acquired distinctiveness, the subject matter Shape Trademark was not regarded as capable enough to serve the function of Trademark.

It is apparent that shape of a product gets the brand protection value only by virtue of acquired distinctiveness and consumer association, which off course can be created by advertising the same amongst the consumers at large.

Case Law Discussed:
Date Of Judgement: 13.07.2022
Case: Ca Comm Ipd Tm 110 Of 2022
Name Of Hon'ble Court: High Court Of Delhi
Name Of Hon'ble Judge: The Honourable Justice Prathiba M Singh
Case Title: Knit Pro International Vs Examiner Of Trademark

Written By: Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi
Email: [email protected], Ph no: 9990389539