In today’s age, the importance of brands (and in turn trademarks) cannot be undermined. It is through brands that businesses (be it domestic or international) are able to thrive and flourish in various highly competitive sectors. While the brand promotion, protection, and enforcement strategy has been focused for many decades on conventional marks (such as a word mark or a logo mark), businesses have realised the potential of non-conventional trademarks (including colour, shape, or even smell and scent). Amongst these, shape has the unique status of expressly finding its place in the trademark statutes of most developed nations, yet the number of trademark registrations being granted to shapes remains quite low.
At a fundamental level, it is an accepted fact that a trademark serves as a source identifier viz. the basic purpose of a trademark is to distinguish the goods of the trademark owner from those of others. Generally, the chances that a common English dictionary word (related to a set of goods in some manner) would create an association in the mind of the consumer is much higher in comparison to that of an arbitrary word. However, at the same time, the chances that such a mark will be granted trademark registration will be much lesser owing to probable objections on the basis of lack of distinctiveness of the mark as well as the mark being descriptive in nature. Thus, in many scenarios, for a mark to be a successful brand, a balance has to be struck between the presence of distinctive element(s) in the mark and some element of relatability with the goods/services.
The aforementioned theory would hold good for most types of marks, however, with shape marks the intriguing dilemma of distinctiveness (or lack thereof coupled with the parallel possibility of descriptiveness of the mark) comes into play. While shape marks do offer the potential to brands to showcase their creativity (and attract more customers), granting of trademark registrations to shape marks also runs the risk of handing over the monopoly of a particular set of goods to the particular owner of the shape.
This dilemma over the grant of trademark registration to a shape mark was recently discussed by the High Court of Delhi. However, before discussing and scrutinizing the judgment, the relevant provision under the Trade Marks Act, 1999 requires adequate consideration. Section 9(3) of the Trade Marks Act, 1999 reads –
A mark shall not be registered as a trade mark if it consists exclusively of –
(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.”
It is abundantly clear from the statutory provision that shape, which arises from the nature of the goods themselves, cannot be granted trademark registration. However, the question of whether a particular shape originates owing to the nature of the goods or not is entirely at the hands of the adjudicating authority (be it the Trade Marks registry or the judiciary).
On a separate (but related) note, it should also be kept in mind that India is a common law nation and thus it recognises the earliest trademark rights in a mark as of the earliest date of use of such mark. Thus, trademark applications in India can either be filed on an intent-to-use basis as well as claiming prior use as of a particular date. Filing of trademark applications with a prior use claim particularly comes in handy with respect to relatively common dictionary works since proprietors can rely on the prior use claim to assert that the mark has acquired secondary meaning. However, it is absolutely clear that it is not a necessity under the Indian Trade Marks legislation for marks to be in use for obtaining trademark registrations. This concept is applicable for all marks and is not affected by the fact whether it is a conventional mark (like a word mark or a logo) or a non-conventional mark (such as a shape mark).
While the statute is absolutely clear on the aforementioned, a recent judgment (dated July 13, 2022) of the High Court of Delhi took an interesting (and somewhat surprising) observation on this. The case Knitpro International v Examiner of Trade Marks through Registrar of Trade Marks pertained to the rejection of Appellant’s (Knitpro International) trademark Application No. 2735618 for the mark in class 26 in respect of “knitting needles and crochet hooks”. During examination of the application, the Trade Marks registry had raised objections on the ground of lack of distinctiveness of the mark as well as on the ground of the mark being descriptive in nature. During the proceedings before the Court, the counsel for the Appellant submitted that the shape of the knitting needle is distinctive and had acquired secondary meaning. However, subsequently, the Appellant withdrew its appeal and the appeal was dismissed as withdrawn by the Court.
The Court, however, surprisingly, went ahead to make some observations to ‘record’ the legal position as regards registrability of shape marks. The Court discussed a couple of precedents and made an interesting (yet surprising and debatable) observation by stating that
Generally, the novel shape of a product which has aesthetic appeal is protectable under the law of designs, if the requisite conditions are satisfied. However, under the law of trade marks, the threshold for extending exclusive rights to the shape of a product, is quite high. The shape by itself should immediately be identifiable with the source of the product. For trade mark registration of shape of a product, the same can only be granted if it has acquired a secondary meaning.” (emphasis added).
While the appeal (in the case being adjudicated) was dismissed by the Court as withdrawn, the Court observed that the Appellant shall not be prejudiced from seeking protection in law for a shape mark, if permissible, at a later stage, upon establishing that the same has acquired a secondary meaning and is hence distinctive.
It seems surprising that the Court imposed the requirement of use of a shape mark in order for it to be granted trademark registration (despite the statute allowing inherently distinctive marks to be eligible for trademark registration as well). Moreover, in one of the cases which were discussed by the Court while arriving at its conclusion was that of Société des Produits Nestlé SA (Nestlé) v. Cadbury UK Ltd. wherein the Court of Appeal (Civil Division) exercised caution in making such a blanket statement as regards the registrability of shape marks. The Court of Appeal observed that
average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it may therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark.”
A careful reading of the Court’s observation herein would make it clear that the Court did not go to the extent of stating that shape marks which are not in use are entirely incapable of being registered (and simply observed that the requirement of distinctiveness for shape marks is placed at a relatively higher pedestal).
The observation by the High Court of Delhi in the Knitpro case comes as a surprise since the Indian legislation (as well as the rules framed thereunder) do not place any restriction on filing (and obtaining trademark registrations) in respect of shapes that are currently not in use. This judgment could have serious repercussions since it would effectively restrict anyone from filing trademark applications in respect of shape marks that are currently not in use. Such an approach doesn’t seem to have been the intent of the legislature in India and it will be interesting to see if this issue lands up before the Supreme Court of India for settling the air on this issue.
 C.A. (Comm. IPD-TM) 110/2022
  EWCCA Civ 358