By Ananyaa Banerjee and Sandhya A. Parimala
A shape of a product forms the aesthetic feature of that product, which would immediately draw the attention of the consumers and enable them to recognize the product through its distinctive shape. Products having distinctive shapes may be granted trade mark protection in the shape. The customer will be drawn more towards the distinctive shape and packaging of the goods to identify a product at the first instance rather than just the name of the product. Further, few products may have shapes/packaging in such a way that a visually impaired person can simply touch the product and associate it with the brand that manufactures the product or an illiterate consumer may identify the product without reading the label. Therefore, many organizations such as Toblerone, Coca-Cola etc have shown great interest in registering the shape of their product/packaging so that the distinctive element of their product is not copied by any other third party.
POSITION OF SHAPE TRADE MARKS IN DIFFERENT JURISDICTIONS
POSITION IN THE EUROPEAN UNION
Article 3(3)(c) of EUTMIR states that a shape mark is a trade mark consisting of a 3-D shape, including containers, packaging, the product itself or their appearance. The EU law allows the registration of shapes as trade marks provided the shape has not arised from the nature of the product or is due to the technical aspect of the product or gives substantial value to the goods.
According to the EU Law, a shape mark may be represented by a graphic reproduction of the shape, including computer-generated imaging or through a photographic reproduction and may contain upto six different views. The European Union has recently implemented Common Communication for determining the distinctiveness of three dimensional marks.
The EUIPO has categorized shape marks into three different categories as follows:
- Shapes unrelated to the goods or services: in such cases, the shape marks are usually distinctive. A few examples are  registered in Classes 16 and 21 and  registered in Classes 36, 39 and 42.
- Shape of the goods themselves or shapes related to the goods or services: In such cases, the examiner is required to first examine whether the grounds of refusal as stated in Article 7(1)(e) EUTMR are applicable, as those cannot be overcome through acquired distinctiveness. Further, the examiner is required to determine whether the representation of the shape mark extends to other elements, such as words or labels which might give a distinctive character to the trade mark. Lastly, the distinctiveness of the shape itself have to be assed. The test of determining the same is that the shape should be so materially different from basic, common or expected shapes that it enables a consumer to identify the goods just by their shape. Examples of marks registered for the shape of goods:  for toys,  for ice creams.
- Shape of the packaging: The shape of the bottles or containers for the goods should be materially different from a combination of basic or common elements and must be striking and sufficient regard has to be given to the functional character of the trade mark. A few examples are  for goods in Classes 29, 30, 32 and  for goods in Classes 4 and 11.
It can be summed up that a functional element of a product’s shape or packaging is not entitled to trade mark protection. For example, the shape of the handles and blade assembly for a pair of scissors, which is necessary for the functioning of the product, cannot be registered as a trade mark. Further, we often see that the shape of a product is first registered as industrial design and, once it acquires distinctiveness, it is registered as three-dimensional trade mark.
It is pertinent to note that in P Lego Juris A/S v OHIM and Mega Brands Inc. Case, the Court of Justice of the European Union held that Lego’s long-contested Community trade mark consisting of the shape of a red Lego brick was invalid under Article 7(1)(e)(ii) Community Trade Mark Regulation (207/2009) (CTMR) i.e the shape of the said mark is necessary to obtain a technical result.
In yet another case between the two chocolate manufactures Cadbury and Nestle, the three-dimensional trade mark of Nestle has been refused registration on the basis of the objection raised by Cadbury that the four-fingered shape of Kit-Kat lacks the distinctive character and had failed to acquire a distinctive character.
Furthermore, in 2017, the United Kindgom’s Court of Appeals in the case of The London Taxi Corp v. Frazer-Nash refused to grant trade mark protection to the shape of London Taxi on the ground that the shape of taxi for the car sector is not distinctive.
However, it is interesting to note that the 3-D shape of the famous car brand Volkswagen is protected in EUIPO for the shape of the car (). Further, the French cosmetics brand Guerlain recently successfully gained protection for the shape of its lipstick in the European Union (). Guerlain stated that the lipstick cannot stand upright or vertically and that it resembles a boat with round edges and a convex upper part with a double mirror on the rectangular hinge and embossed oval shape on the case. The Court found that the shape of the lipstick was unique and stood apart from other brands because it could not be put down and the standard shape in the industry is cylindrical or rectangular. The Court held that, “shape at issue is uncommon for a lipstick and differs from any other shape existing on the market.”
POSITION IN THE UNITED STATES
Section 1052 of the Lanham Act states that a trade mark should fulfill the requirement of non-functionality and distinctiveness, in order to become eligible to registration. Further, even in the United States, a shape mark can be registered if the same is distinctive and not functional, which means that the mark should be capable of distinguishing the product from others and the shape of the product should not be essential to the purpose of the product, use of the product and should not affect the quality or the cost of the product.
It is pertinent to note that, an application for registering a 3-Dimensional trade mark, the applicant is required to submit a drawing that depicts the mark in a single rendition, and the description of the mark should state that the trade mark is three-dimensional nature. This three-dimensional feature of the mark must be shown in the supporting specimens of use, in order for the drawing to comprise a substantially exact representation of the mark as actually used. Further, if a three-dimensional shape is described as a two dimensional shape, then the specimen would not be acceptable to show the use for a mark. However, if the applicant states that the mark cannot be displayed in a single rendition, then they may petition the Director to waive the requirement and accept a drawing featuring multiple views of the mark.
Further, the United States also recognizes the concept of trade dress. Trade dress includes the design of a product (i.e. the product shape or configuration), the packaging in which a product is sold (i.e. the “dressing” of a product), the color of a product or of the packaging in which a product is sold, and the flavor of a product. In situations where it would be difficult to determine if the mark for which registration is sought for is a product packaging or product, then the trade dress is treated as product design. Further, while determining the registrability of a trade dress, the examiner is required to consider the functionality as well as the distinctiveness of the mark.
POSITION OF SHAPE TRADE MARKS IN INDIA
Section 2(m) and 2(1)(zb) of the Trade Marks Act, 1999 includes the shape of goods in the definition of a mark. Therefore, the Indian Trade Marks Act expressly allows the registration of shape of goods as trade marks. In India, a trade mark can be used to a distinctive form of goods, packaging, or any three-dimensional item that may be visually represented. For shape mark to get registered, it is quite simple to represent the mark graphically, hence satisfying the first criteria of a trade mark. Further as stated in the proviso of Section 9(1), the distinctiveness of a shape mark can be determined by evaluating the distinctiveness acquired for shape.
However, according to Section 9(3) of the Trade Marks Act, 1999, a mark cannot be registered if it contains (i) a form of goods that results from the nature of the products themselves, (ii) a form of goods that is required to achieve a technical result, or (iii) a form that lends considerable value to the products. The Manual elaborates that the purpose of Section 9(3) is to ensure that the common shape of goods does not get monopolized, and should be free for the public to use.
In view of the above said, it can be understood that, if the shape of a good is such that it solely and exclusively achieves a technical/utilitarian/functional result, then it shall not be registered as a trade mark pursuant to Section 9(3)(b) Trade Marks Act, 1999. Thus, it would be necessary to prove that the trade mark does not have only a functional purpose. This means that the shape of the good should have something extra or have distinctiveness in and of itself to qualify for registration as a trade mark under the Act whilst not being purely functional in nature. To prove the same, the proprietor is required to prove that there has been enough use of the mark in commerce in India or trans-border reputation in India to establish their direct connection with their trade mark and to show distinctiveness.
It can be summed up that for a shape to be eligible for registration in India, like the other jurisdictions, the shape of the product should not be wholly functional in nature to avoid rejection of the trade mark. Further, in India, protection is granted to shapes marks such as 3-D marks as well as the packaging of the products (trade dress). Further, the courts have also protected the trade dress and have also granted damages to the right holder.
Rule 26(3) of the Trade Marks Rules, 2017, states that 3-Dimensional trade mark can be registered by reproduction of the trade mark, which shall consist of a two dimensional graphic or photographic reproduction. Rule 26(4) of the Trade Marks Rules, 2017, states that the shape of the goods, shall consists of shape of goods or its packaging, can be registered by producing at least five distinct perspectives of the trade mark and a description by word of the brand.
On the trade mark application form, the applicant must specify that the application is for a shape trade mark. If this is not specified but is pretty obvious since the trade mark is portrayed in a three-dimensional (3-D) drawing, the examiner should question whether the trade mark is a shape trade mark. Wherever possible, the depiction comprising a shape must be in the form of a perspective drawing that clearly depicts all of the trade mark’s attributes. A short and precise description of the trade mark must be included with the representation. There should be no inconsistency between the representation and the description, and the description should typically relate to the representation to clarify their relationship. If the representation provided by the applicant does not clearly show the features of the trade mark, the Registrar may require upto 5 further views of the trade mark. Furthermore, the draft manual states that black and white or colour photographs of shape marks which have been mounted on good quality paper will be acceptable as representations of the trade mark, however, they must be able to be reproduced for the purposes of advertisement.
Some of the shape trade marks registered in India are given below:
|Shape Trademark||Application Number||Graphical Representation||Applicant||Application Date|
|MISC.GEO (DEV)||714368||Zippo Manufacturing Company||May 10, 1996|
|TOBLERONE 3-DIMENSIONAL SHAPE||1279340||Kraft Foods Schweiz Holding GmbH||April 19, 2004|
|COCA-COLA WITH DEVICE MARK OF BOTTLE||1414264||The Coca-Cola Company||January 17, 2006|
|GORBATSCHOW WODKA WITH DEVICE||1648594||Gorbatschow Wodka KG||January 31, 2008|
|SHAPE OF STITCHED NINE YARD SARI IN VARIOUS COLOR COMBINATION. IMAGE IS SHOWING SHAPES CAPTURED FROM VARIOUS ANGLES||3670037||Anuradha Ganesh Tumma||November 04, 2017|
|SHAPE OF BOTTLE||4220487||Parle Agro Pvt. Ltd.||June 29, 2019|
|RING CEREMONY SHAPE
|4902818||Ridhi Ramnani||March 12, 2021|
Nowadays, the companies are not only showing interest in protecting the shape of their product and its packaging, but are also showing great interest in protecting the shape of their buildings/architecture/layouts etc.
Some of the popular structures in the world like the Chrysler Building, Eiffel Tower, New York Stock Exchange Building, Sydney Opera House etc. are registered marks.
A few examples for the shape of the buildings/architecture are the Taj Mahal Palace Hotel in Mumbai which was granted protection for its architecture (//) and the device of temple by Bochasanwasi Shri Akshar Purushottam Swaninarayan Sanstha ().
Not only is the outer structure of a building protected but so are the store layouts. Details of some of the store layouts registered in India are given below:
|Trade Mark||Application No.||Applicant||Registration Date||Class|
|MARY COHR Store Layout||4073262||MARY COHR||January 31, 2019||44|
|HEALTH & GLOW (Layout)||4191623||HEALTH & GLOW PRIVATE LIMITED||May 05, 2019||5|
|MARY COHR Interior of a Beauty Salon Layout||4134918||MARY COHR||April 02, 2019||44|
Layout of the Discussion Area Zone in a Store
|4169443||GODREJ & BOYCE MANUFACTURING COMPANY LTD.||May 07, 2019||35, 42|
This establishes the level of protection granted to shape trade marks. Even the judiciary is very active in protecting the rights of the proprietors of shape trade marks. In plethora of judgements the court has protected the shape of the trade mark. In Gorbatschow Wodka KG v John Distilleries Limited the Mumbai High Court prohibited the defendant from using a bottle shape that was identical or deceptively similar to that used by the plaintiff. The court specifically stated that the shape of goods or their packaging is capable of trade mark registration. Similarly, in Zippo Manufacturing Company v Anil Moolchandani, the plaintiff sold lighters with the Zippo mark and owned the trade mark rights to the 3D design of the lighters. The defendant imitated the plaintiff’s goods by selling counterfeit Zippo lighters. The defendant was barred from selling lighters bearing the Zippo trade mark and having a 3D form that was identical or similar to the plaintiff’s lighter. Following that, a permanent injunction was issued preventing the defendant from selling, distributing, or promoting lighters bearing the Zippo brand or having a 3D form that was identical or comparable to a Zippo lighter, as illustrated on its registration certificate. It is also pertinent to note the case of Ferrero Rocher v. Ruchi International, where the Delhi High Court granted damages in favour of the plaintiff, ensuring protection of their trade dress / packaging of the product.
Further, in the case of Pidilite Industries Limited v. Proma-Ex Productsthe court held that the product packaging containing the trade mark KWIKHEAL of the defendant (Proma-Ex) is similar to that of trade mark of the plaintiff as if the defendant has sold the product of the plaintiff.
CHALLENGES FACED IN PROTECTION OF A SHAPE MARK
The main challenges faced by the proprietors of a shape mark are:
- Proving the distinctiveness of a shape mark: Identifying a product only by its 3-D shape or the packaging of the product without the absence of any word element would be little difficult and is a challenge to the proprietor to prove that the public identifies the product only with the shape. Proving non-functionality in practicality might be difficult. If customers do not perceive the shape as a trade mark exclusively and independently, it does not qualify as a trade mark. In case at the time of filing the image view is not clear, there should be provision to file a video as well to clearly show the exact shape of the product.
- Overlap with the Designs Act, 2000: It is pertinent to note a design is merely applied for to enhance the aesthetic value and of a shape and a trade mark is applied to determine the source of origin of the shape mark and the association to its brand. There are possibilities where a person wishes to acquire protection both under Trade Marks Law as well as under the Designs Act. However, Section 2(d) of the Designs Act, 2000 states that a trade mark is excluded from being considered as a design, and a design is eligible for registration only for a period of 15 years. However, the law is not clear on determining if a registered design can be used as a trade mark after the period of 15 years lapses. However, if a design is capable of identifying the source of a product, then the same is functional as a trade mark, and the design can be cancelled according Section 19(1)(e) read with Section 2(d) of the Designs Act, 2000. However, the Hon’ble Delhi High Court in the case of Mohan Lal v. Sona Paints and Hardwares held that a design once registered could not be cancelled on the grounds that it has become an indicator of source i.e a trade mark. The majority opinion also held that “a design can be used as a trade mark and if by virtue of its use, goodwill is generated in the course of trade or business, it can be protected by an action in the nature of passing off”. Further, in the case of Crocs Inc USA v. Aqualite India Ltd and Ors Justice Endlaw, Delhi High Court, referring to the Mohan Lal case and stated that, the goodwill acquired during the period of registration, when there is a statutory bar to its use as a trade mark, cannot be considered and the person claiming protection as a trade mark will have to show the rights as accruing with effect from post registration. This would affect the right holder of the registered design as they would not be able to claim any rights over the said shape after the lapse of 15 years and the design would be under public domain. Even otherwise, to enforce rights under Trade Mark Law, the right holder would have to show that there are additional features to the famous design and seek to enforce rights based on that. The recourse or remedy which the right holder can seek in such kinds of situations is not made clear yet and the law on this point is still ambiguous which might put the right holder in confusion.
From the aforementioned it can be observed that a shape mark / 3D mark / packaging / trade dress is not barred from registration. Further, representing a shape mark graphically is also possible and almost precise. Since the shape marks carry a great significance in identifying a brand, there is great necessity of registering shape marks. Some of the original shapes may also qualify for protection under copyright and this is very helpful in situations where the shape is not registered as a trade mark/design or if the registrations by way of trade mark or design is invalidated.
Sandhya A. Parimala, Associate at S.S. Rana & Co. has assisted in the research of this article.
 Article 3(3)(c) EUTMIR: In the case of a trade mark consisting of, or extending to, a three-dimensional shape, including containers, packaging, the product itself or their appearance (shape mark), the mark shall be represented by submitting either a graphic reproduction of the shape, including computer-generated imaging, or a photographic reproduction. The graphic or photographic reproduction may contain different views. Where the representation is not provided electronically, it may contain up to six different views;
 Article 7(1)(e) EUTMR (the same has been stated in Article 4(1)(e) EUTMD)
 Article 3(3)(c) EUTMIR
 Common Communication Distinctiveness of Three-Dimensional Marks (Shape Marks) Containing Verbal and/or Figurative Elements when the shape is not distinctive in itself, April 2020 available at: https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/News/cp9/CP9_en.pdf last accessed on January 18, 2022.
 EUTM No. 1705367
 EUTM No. 715524
 EUTM No. 15240534
 EUTM No. 10350593
 EUTM No. 12485702
 EUTM No. 12491858
 Lego Juris A/S v OHIM (Mega Brands Inc. intervening) (Case C-48/09 P)
 Société Des Produits Nestlé Sa Vs. Cadbury Uk Ltd  EWCA Civ 358.
  EWCA Civ 1729
 Vrinda Sehgal, Shape Marks & Technical Necessity available at https://www.lexology.com/library/detail.aspx?g=2483349a-1dea-4919-960e-38c49e047f98, last accessed on January 18, 2022.
 Registration No. 002069342
 Registration No. 018333084
 15 U.S. Code § 1052
 Shape Mark – An Unconventional Trademark, August 08, 2020 available at: https://www.lawcommunity.in/articles/shape-mark-an-unconventional-trademark, last accessed on January 18, 2022.
 Trademark Manual of Examining Procedure § 1202.02(c)(iv).
 Registration No. 1986822, Dated March 23, 1995.
 Registration No. 1057884, Dated May 25, 1976.
 Trademark Manual of Examining Procedure § 1202.02.
 Section 2(m) of the Trade Marks Act, 1999: “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;
 Section 2(1)(zb) of the Trade Marks Act, 1999: “trade mark” 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;
 Draft Manual Ch II, at 12.2.6.
 Vrinda Sehgal, Shape Marks & Technical Necessity available at https://www.lexology.com/library/detail.aspx?g=2483349a-1dea-4919-960e-38c49e047f98, last accessed on January 18, 2022.
 Ferrero Rocher v. Ruchi International & Anr, 2018 SCC OnLine Del 8129
 Rule 26(3) of the Trade Mark Rules, 2017: Where the application contains a statement to the effect that the trademark is a three dimensional trademark, the reproduction of the trademark shall consist of a two dimensional graphic or photographic reproduction as follows, namely:—(i) the reproduction furnished shall consist of three different view of the trademark; (ii) where, the Registrar considers that the reproduction of the trademark furnished by the applicant does not sufficiently show the particulars of the three dimensional trademark, he may call upon the applicant to furnish within two months, up to five further different views of the trademark and a description by words of the trademark;(iii) where the Registrar considers the different views or description of the trademark referred to in clause (ii), still do not sufficiently show the particulars of the three dimensional trademark, he may call upon the applicant to furnish a specimen of the trademark.
 Rule 26(4) of the Trade Mark Rules, 2017: (i) Where an application for the registration of a trademark consists of shape of goods or its packaging, the reproduction furnished shall consist of at least five different views of the trademark and a description by word of the trademark. (ii) If the Registrar considers the different views or description of the trademark referred to in clause (i) do not sufficiently show the particulars of the shape of goods or its packaging, he may call upon the applicant to furnish a specimen of the goods or packaging, as the case may be.
 Draft Manual Ch I, Section B at 4.7.1.
 Draft Manual Ch I, Section B at 4.7.2.
 Draft Manual Ch I, Section B, at 4.7.4.
 Draft Manual Ch I, Section B, at 4.7.6.
 Registration No. 1429078
 Registration Nos. 3386350 / 3386351 / 3387665
 Gorbatschow Wodka KG v John Distilleries Limited , 2011 SCC OnLine Bom 557
 Zippo Manufacturing Company v Anil Moolchandani , CS(OS) 1355/2006
 Pidilite industries v. Poma-Ex products, 2017 (72) PTC 1 (Bom)
 Gautam Kumar, India: Protection of Trade Dress – Developing Jurisprudence available at: https://www.mondaq.com/india/trademark/689348/protection-of-trade-dress-developing-jurisprudence, last accessed on January 19, 2022.
 Section 2(d), Designs Act, 2000: “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957)
 2013 55 PTC 61 (Del)
 CS (COMM 903/2018).