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  • Ms. Niharika Salar

Regulating Shape Marks in India: The Threshold of Secondary Meaning Continues to Hold Good

Setting the Scene: Trademark Laws in India

The statutory Indian trademarks law dates back to 1860. Previously, numerous issues with infringement, passing off, and other issues were resolved by applying Section 54 of the Specific Relief Act of 1877, and the registration was unquestionably resolved by getting a declaration of trademark ownership under the Indian Registration Act of 1908. 1940 saw the passage of the Indian Trademarks Act, which mirrored the English Trademarks Act. The Trademark and Merchandise Act of 1958 replaced this statute. The purpose of this Act was to better protect trademarks, allow for their registration, and stop counterfeit marks from being used on goods. The Government decided to rebrand the 1958 Act as the Trademark Act 1999 in order to bring the Indian Trademark Law into compliance with the TRIPS obligation. In addition to appreciating special provisions for well-known trademarks and allowing registration of collective marks, it has also safeguarded service marks. Among other improvements, the Act has provided extensive definitions, tightened penalties for violators, prolonged the registration term, and permitted the registration of unconventional trademarks. The Trademark Act of 1999 and the Trademark Rules of 2017 now govern Indian Trademark Laws.

Shape Marks and Trademark Laws

The Trade Marks Act of 1999 acknowledges the shape of goods as an essential trademark element. As per the provisions, a ‘trademark’ is a mark capable of being conveyed graphically and capable of distinguishing one person’s goods/services from those of another, and this includes the appearance of products, their packaging, and color schemes. Because of this, Parliament has statutorily recognized that trade dress includes an item’s packaging, color scheme, and shape in addition to how it is advertised. The Trademark Rules further state that the shape of the goods, which comprises of the shape of the goods or its packaging, may be registered by submitting at least five separate views of the trademark and a written description of the brand. In addition, the Designs Act of 2000 normally protects these aesthetic traits and lays out the standards for registering a design. On the other hand, the design of the bottles is seen to be distinctive and greatly contribute to the brand’s recognition and reputation, making it eligible for trademark protection. In the case of shape marks, however, there is a strong contradiction between the mark’s distinctiveness (or lack thereof) and its potential descriptiveness. In Lenskart Solutions Pvt. Ltd. v. M/s. Lenspark Optician, (TM No. 72/2018) the Plaintiff, an eyeglasses business, claimed that it had used the imaginative and inherently distinctive trademark ‘LENSKART’ since 2009. The Plaintiff further argued that it was the owner and proprietor of the copyright for the original artistic creation that was included on the label. The Defendant changed the name of its optical retail store to ‘LENSPARK.’ The Court determined that the Plaintiff’s copyright as well as trademark rights were violated by the phrase ‘LENSPARK.’

Similarly, in Cadbury India Limited and ors. v. Neeraj Food Products (2007 (35) PTC 95 Del), the Plaintiffs asserted that the defendant was using a package that was strikingly similar to that of the well-known ‘Cadbury Gems. Moreover, Cadbury objected to the defendant’s marketing of its product as ‘James Bond,’ which it said unjustly exploited the Plaintiff’s popularity by sounding too similar to their own ‘Gems Bond’ character from an earlier advertising campaign, thus confusing customers. It was ruled that a mere possibility of confusion is adequate to establish trademark infringement; absolute confusion is not required.

A Mark Means Much More than a Mark Now

The issue of shape marks came up again recently before the Delhi High Court in Knitpro International v. Examiner of Trademarks. The Senior Examiner of Trade Marks rejected the appellant’s trademark application for the registration of the shape of a knitting needle in class 26 in relation to “knitting needles and crochet hooks” (see below).

For the purposes of recording the legal position on shape trademarks, the Court noticed that according to section 2(1)(j) of the Trade and Merchandise Marks Act of 1958, a ‘mark’ includes a device, brand, heading, label, ticket, name, signature, word, letter, or numeral, or any combination of these. The Trade Marks Act of 1999 added to this definition by defining the term ‘mark’ in section 2(1)(m) as follows:

‘Mark’ comprises a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of products, packaging, combination of colors, or any combination of colors.

Comparing the definitions of ‘mark’ under the old and current trademark standards, it can be inferred that the term’s scope and meaning have increased through time and are no longer confined to traditional trademarks as long as they fulfill the key purpose of a trademark, i.e. source identification.

Shapes Leading to Distinguishing Factors

One of the biggest risks of registering shape marks as trademarks is that the owner of the shape could wind up with a monopoly on a specific set of goods, despite the fact that shape marks can assist in expressing creativity (and attracting more customers). That’s one of the major reasons why any shape of a product that is essential for achieving a technical result cannot be trademarked. Therefore, any shape that consists only of the shape of a product due to the technical result cannot be trademarked. Invalidation of the Lego mark by European Courts dictates the relevance of technical result achieving shapes. In 2010, following years of legal battle, the European Court of Justice  (‘ECJ’) concluded that allowing Lego to trademark its eight-studded building brick would prevent other manufacturers from making a basic technical construction shape. Having said that the ECJ, in another instance, has also ruled that Lego miniatures people are more than just building blocks, lending support to the Danish toy maker. Lego prevailed in that trademark dispute after a judge declared that its mini-figures should continue to be categorized as protected shapes, preserving its status in toytown.

Continuing with these themes, The Delhi High Court stressed upon Levi Strauss and Co. v. Imperial Online Services Private Limited, where it was held that the definition of ‘mark’ has changed throughout time. Earlier, trademarks have covered names, words, gadgets, packaging, among other things. However, this list of trademarks has grown over time to now include things like color, color combinations, product shapes, product patterns, fragrance, and sound marks, among other things. The case revolved around the question of a stitching pattern that is incorporated on the plaintiff’s jeans items but is not a product design.

It was stated that in such a case, the question would be whether the stitching design alone could serve as a trademark. If the answer to this question is affirmative, the pattern would be regarded as a trademark worthy of protection. When a trademark owner’s stitching pattern uniquely identifies a pair of jeans without a name or logo, the owner intended for the stitching pattern to fulfill the same function as a trademark. The Court would then determine whether the stitching pattern has a “secondary meaning” or if it is distinctive in and of itself.

The Court determined that the bar for extending exclusive rights to the shape of a product is rather high. By itself, the form should indicate the origin of the product. Only if the term has acquired a secondary connotation is it eligible for registration. Relying on cases like Wal-Mart Stores and Nestle, the Court believed that the plaintiff will have to demonstrate that the design has taken a secondary meaning in the marketplace in order for the design of a product to be given exclusivity. It was noted that average customers are not accustomed to inferring a product’s origin from its shape or packaging in the absence of any visual or word features, therefore it may be more difficult to establish distinctiveness for a three-dimensional mark than for a word or figurative mark. This remark was discovered during an evaluation of the distinguishing qualities of markings.

In addition, while determining whether a shape has acquired distinctive traits via usage, a thorough review must be conducted, taking into account all pertinent data and all probable situations in which the target audience may have encountered the mark. This is because the likelihood of a form without unique characteristics increases as the shape for which registration is sought approaches the form most likely assumed by the product. The Court noted that this should not prevent the appellant from obtaining legal protection for a form mark in the future, if authorized, by demonstrating that it has gained a secondary meaning and is distinctive if the mark has acquired a secondary meaning.

Concluding Thoughts

The understanding of a trademark not forming a generic shape branches out from the consequences of monopoly. The Delhi High Court has reiterated through Knitpro that in order for a trademark to be registered, it must be demonstrated that the trademarked shape is distinguishable from the generic shape of the product. The form must have gained a secondary meaning and lost its original or generic significance. It would require significant effort to get the required level of distinction. In old industries like hand sewing needles, having the threshold high for a shape mark reinforces the law’s discouragement towards unjustified monopoly, maintaining fair competition.

Secondly, corporations realize that the duration of protection trademark law has to offer is much more than most other relevant IP protection. Therefore, trademark protection would have been especially desirable, as a trademark may be renewed as often as desired and the owner of such a trademark could have prevented competitors from using comparable marks indefinitely. On the other hand, other wings of IP laws offer protection, if standards are met, to precarious cases like these. For example, as mentioned above, Lego was denied shape mark protection but upheld its design protection in 2021. A registered design allows its owner a 25-year monopoly on the claimed design, which appears sufficient for a mark to enjoy monopoly, albeit for a limited time. The majority of products are unable to successfully market themselves with the same design for over a quarter century. Additionally, only a few designs are able to obtain blanket protection from design protection.

Therefore, if the prerequisites are met, the novel aesthetic form of a product can be protected under the law of designs. However, under trademark law, the hurdle for extending exclusive rights to a product’s shape is appropriately high, as it should be.


Ms. Niharika Salar is an Assistant Professor of Law at NALSAR, Hyderabad. This blog is a part of RSRR’s Excerpts from Experts Blog Series, initiated to bring forth discussion by experts on contemporary legal issues.


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