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- Introduction
- Trademarking a Shape of Goods in India
- Distinctiveness: To be eligible for trademark registration, a 3-D shape must possess distinctive characteristics. Distinctiveness means that the shape is capable of distinguishing the goods or services of one entity from those of others. The shape should not be a commonly used or generic form, and it should not be easily confused with shapes typically associated with a specific category of goods or services.
- Non-Functionality: Another vital criterion for trademarking a 3-D shape is non-functionality. A 3-D shape should not serve a purely functional purpose in the context of the product or service. In other words, the shape should not be necessary for the product to work or achieve its intended function. It is important to distinguish between the functional and non-functional aspects of a shape. Functional elements, such as a particular shape of a container that makes it easier to pour liquid, are not typically eligible for trademark protection. However, the decorative or ornamental aspects of a shape can be distinctive and non-functional, making them more suitable for trademark registration.
- Secondary Meaning : In some cases, a shape may not possess inherent distinctiveness but can acquire it through use. This principle is known as secondary distinctiveness or acquired distinctiveness. To establish secondary distinctiveness, the shape must have been used extensively in commerce and associated with the source of the goods or services over time. Businesses can provide evidence of this acquired distinctiveness, such as marketing materials, consumer recognition, and the duration of use. A shape that initially lacked distinctiveness can become eligible for trademark protection if it has acquired a strong association with the brand in the eyes of consumers.
- Proof of Use: For a 3-D shape to be eligible for trademark registration, applicants need to provide evidence of the shape's use as a trademark in commerce. This involves demonstrating that the shape is being used to identify and distinguish the applicant's goods or services from those of others. Proof of use may include product packaging, advertising materials, and any other relevant documentation that establishes the shape's role as a source indicator.
- Case Study
- Kit Kat Bar Shape
- Toblerone Bar Shape
- Conclusion
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Introduction
In the dynamic world of commerce, businesses are ceaselessly striving to establish a unique and memorable brand identity. Traditionally, trademarks have been associated with words, logos, and slogans. However, a more modern trend has emerged – the trademarking of three-dimensional (3-D) shapes. This article delves into the intricacies of trademarking a 3-D shape in India, supported by case law examples and famous instances.
Trademarking a Shape of Goods in India
Trademark law in India is governed by the Trademarks Act, 1999, and the Trademarks Rules, 2017. As per Section 2(zb) of the Act, a “trademark” means 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 shape of goods, their packaging and combination of colours. Additionally, Section 2(m) of the Act defines a “mark” to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colours or any combination thereof.
These definitions make it clear that the Indian trademark law does not strictly prohibit the registration of 3-D shapes as trademarks. Instead, it recognizes that a “mark” can encompass a variety of elements, including the shape of goods and packaging. The key criteria for trademarking a 3-D shape in India, informed by these definitions, are as follows:
Distinctiveness: To be eligible for trademark registration, a 3-D shape must possess distinctive characteristics. Distinctiveness means that the shape is capable of distinguishing the goods or services of one entity from those of others. The shape should not be a commonly used or generic form, and it should not be easily confused with shapes typically associated with a specific category of goods or services.
For example, if a company manufactures furniture and uses a 3-D shape of a chair as its trademark, the shape must be unique and distinctive compared to the common form of a chair to qualify for trademark protection. Distinctiveness is a crucial criterion because the primary function of a trademark is to identify the source of goods or services, and a distinctive shape is more likely to fulfil this purpose effectively.
Non-Functionality: Another vital criterion for trademarking a 3-D shape is non-functionality. A 3-D shape should not serve a purely functional purpose in the context of the product or service. In other words, the shape should not be necessary for the product to work or achieve its intended function. It is important to distinguish between the functional and non-functional aspects of a shape. Functional elements, such as a particular shape of a container that makes it easier to pour liquid, are not typically eligible for trademark protection. However, the decorative or ornamental aspects of a shape can be distinctive and non-functional, making them more suitable for trademark registration.
An example of a non-functional 3-D shape could be the unique and decorative design of a perfume bottle, as its design is not critical to the function of holding or dispensing the fragrance.
Secondary Meaning : In some cases, a shape may not possess inherent distinctiveness but can acquire it through use. This principle is known as secondary distinctiveness or acquired distinctiveness. To establish secondary distinctiveness, the shape must have been used extensively in commerce and associated with the source of the goods or services over time. Businesses can provide evidence of this acquired distinctiveness, such as marketing materials, consumer recognition, and the duration of use. A shape that initially lacked distinctiveness can become eligible for trademark protection if it has acquired a strong association with the brand in the eyes of consumers.
Proof of Use: For a 3-D shape to be eligible for trademark registration, applicants need to provide evidence of the shape’s use as a trademark in commerce. This involves demonstrating that the shape is being used to identify and distinguish the applicant’s goods or services from those of others. Proof of use may include product packaging, advertising materials, and any other relevant documentation that establishes the shape’s role as a source indicator.
Case Study
Kit Kat Bar Shape
One of the most notable cases in the realm of 3-D shape trademarks, this dispute revolved around Nestle’s attempt to trademark the four-fingered shape of the Kit Kat bar. Nestle argued that the shape had acquired distinctiveness through years of use. Cadbury opposed the registration, asserting that the shape was not distinctive enough to be considered a trademark. The UK court ruled against Nestle, concluding that the shape of the Kit Kat bar had not achieved the necessary level of distinctiveness to be granted trademark protection. This case highlights the strict approach of some jurisdictions in evaluating 3-D shape trademarks.
Toblerone Bar Shape
Another famous example that can be considered as the 3-D shape trademark is Toblerone chocolate, the unique 3-D shape of the Toblerone chocolate bar, characterized by its triangular prism with a serrated profile, has been registered as a trademark in the European Union. This distinctive shape immediately associates the product with the Toblerone brand. The Toblerone case underscores the value of iconic and recognizable shapes in the confectionery industry, showcasing the possibilities of obtaining trademark protection for 3-D shapes.
Conclusion
Trademarking 3-D shapes can provide a unique way for businesses to protect their brand identity and stand out in the marketplace. In India, the process involves demonstrating distinctiveness and non-functionality, while other countries have their own criteria and considerations. As seen through case laws and famous examples, the journey to trademark a 3-D shape is often challenging but can yield significant benefits for brand recognition and protection. Businesses should carefully consider the legal landscape in their jurisdiction and work with experienced trademark attorneys to navigate the complexities of 3-D shape trademark registration.