Introduction:
Other than logo or label, the product can also be distinguished based on the shape of the that product. In India, it is possible to obtain trademark protection for the shape of a product, known as a "shape mark." The Indian Trademarks Act, 1999, provides protection for the shape marks as trademarks, subject to certain conditions and requirements. A three-dimensional shape, distinctive form of good, packaging, the product itself or its appearance can bprotected under shape mark. The shapes can also contain word or figurative elements, labels, etc.
Criteria:
To register a shape mark as a trademark in India, it must fulfill the following criteria:
1. Distinctiveness:
The shape must be capable of distinguishing the goods or services of
one business from those of others. It should not be a common or generic shape that is
commonly used in the industry.
Example of Generic shape:
- Basic shape of Spectacles
- Basic shape of Cars
2. Non-functional:
The shape should not be primarily functional or necessary to obtain
a technical result. If the shape primarily serves a functional purpose or provides a
technical advantage, it may be difficult to obtain trademark protection.
In simple words, if the shape of a product is mainly used for its function or to achieve
a specific technical outcome, it might be challenging to get trademark protection for
that shape.
A specific technical outcome refers to a result or purpose that is directly related to the
functionality or performance of a product. It means that the shape of the product is
primarily designed to achieve a particular technical function or advantage. For
example, if the shape of a tool is specifically designed to improve its efficiency,
durability, or performance in a technical manner, it may be considered as having a
specific technical outcome. In such cases, obtaining trademark protection for that
shape could be more challenging.
Example:
- Screwdriver: The shape of a screwdriver, with its long shaft and flat or Phillips
head, is primarily designed to fit into screws and tighten or loosen them. Since
the shape is necessary for its function, it may be challenging to obtain
trademark protection for that particular shape.
- Mobile Phone: The shape of a mobile phone, such as a rectangular slab with a
touchscreen display, is primarily designed to accommodate the components
and provide an ergonomic user interface. As the shape serves a functional
purpose, it may not be eligible for trademark protection.
- Car Key: The shape of a car key, which is often designed to fit into a specific
ignition system, is primarily functional and necessary for starting the vehicle.
Due to its functional nature, it may not qualify for trademark protection.
3. Acquired distinctiveness:
If the shape is devoid of any distinctive character, it may still be registrable if it has acquired distinctiveness through extensive use and promotion. Evidence demonstrating acquired distinctiveness, such as sales figures, advertising campaigns, and consumer recognition, may be required.
It is important to note that the Indian Trademarks Registry may examine shape marks more rigorously compared to traditional word or logo marks. The shape mark must be capable of being graphically represented, typically through drawings or images.
Furthermore, it is advisable to consult with a trademark attorney or registered trademark agent familiar with Indian trademark law to guide you through the registration process and ensure compliance with the requirements.