It is a general saying that A picture is worth a thousand words. A Pictures casts great impression on the human mind. If a picture or shape is striking, then it lasts for a longer period of time in the memory of a man.

The basic premise of law regarding the protection of trademark is evolved on the concept of association of particular name with a particular legal entity. By passage of time, the Trade Mark Law evolved to include inter-alia the shape of a product as a trademark.

Section 2(zb) of the Trade Marks Act 1999

• 2(zb):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;
   

The Trade Marks Act further provides the conditions which is anti thesis of the shape of product to be qualified as a trademark. Section 9 (3) of the Trade Marks Act 1999 provides the absolute ground of refusal for a shape trade mark. The same provides as here under:

•  9(3):A mark shall not be registered as a trade mark if it consists exclusively of:
  
  • the shape of goods which results from the nature of the goods themselves; or
  • the shape of goods which is necessary to obtain a technical result; or
  • the shape which gives substantial value to the goods.

From combined reading of Section 2(zb) and Section 9(3) of the Trade Marks Act 1999, the following picture emerges regarding the shape of a product to function as a trademark.

Following conditions is sine qua non for the shape Trademark:

• The shape of the product should be capable of being represented graphically.
• It should capable of distinguishing the goods or services of one person from those of other.
• The shape results from the nature of the goods themselves.
• The Shape should not be functional in nature And
• It should not give substantial value to the goods.

Before proceeding further it is relevant to point out here that Design Act also dealt with the issue of Shape of a product. As per the definition of Design Act 2000, the same is inclusive of Shape of a Product Also. Section 2(d) of the Designs Act, 2000 defines a design as under:

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) [Now Trade Marks Act 1999] 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).

From perusal of the provision of the Design Act 2000, it is that design means those features of shape, configuration, pattern, ornament or composition of lines or colours applied to an article which appeal to and are adjudged solely by the eye but it does not include trade mark as ' defined in the Trade Marks Act. Trade mark and design are entirely different connotations. The trade mark is put on a product to link it to its manufacturer/producer, who may be the proprietor of the registered trade mark or who might have acquired reputation.

On the other hand, the design is merely a feature of shape, pattern, configuration, ornament or composition of lines or colours applied to an article to make it attractive and appealing to the eye of the consumer.

The other difference is that a Trade mark may also be attractive and appealing to the eye but it should be directly relatable to the owner of the goods whereas the design may be merely appealing or attractive to the eye and need not give any indication to the consumer about the identity of the manufacturer or producer of the article.

The basic difference between a trade mark and design is that trade mark signals to the mind the source or identity of the producers/manufacturer of the article whereas design appeals to the eye and attracts the consumer/purchaser. Thus those shape which are source indicator of the owner, are qualified as trademark, though it may or may not have the aesthetic quality, while those shapes which are solely guided by the aesthetic feature, irrespective of this fact whether is it source indicator of the owner or not, are qualified as Design.

For A shape to be a Design, it is not necessary that it is distinctive to the owner , while the for a Shape to serve as the shape trademark, it must show the acquired distinctiveness .Normally the shape of the good is not considered as a strong trademark. Rather it is considered as a weak trademark.

However on the basis of acquired distinctiveness, the shape of a product can serve the function of a trade mark. But as there been various restriction of the shape of a product to serve as a trademark, normally it is not considered as easy to establish proprietary rights in the shape as a trademark.

In case it is found that the shape of a product results from the nature of the goods or is functional in nature or it gives give substantial value to the goods, then its registrations as a shape trademark can be declined even if it has acquired distinctiveness. Reason behind imposing the tough condition on the shape to serve as a trademark is that no one should be allowed to create the un warranted monopoly on the shape of a product to throttle out the healthy competitors.

The unique feature of the shape trade mark is that it is intrinsic part of the products itself. Normally the conventional trade marks are super imposed on the product. The conventional trade marks like Name, Label, Logo , packaging material, the unique wrappers etc appearing on the products are not inseparable part of the product.

These are being affixed on the product. While the shape trade mark of a product is inseparable part of the part of the product. The shape of the goods is also inclusive of pattern, configuration etc. If the product itself is a shape of the product and has aesthetic attributes, then it serves the function of a design and is not qualified as a trademark.

Now by passage of time the Indian Courts have also started to recognize the shape of a good as a source indicator. The Mumbai High Court, in recent Judgment dealt with the issue of shape as a trademark. The Hon’ble Mumbai High Court, in Vodka Case [1], recognized the shape of the bottle of the plaintiff as a trademark.

The plaintiff namely Gorbatschow Wodka filed the Suit on the basis that the shape of its bottles of Vodka was distinctive and formed an intrinsic part of its goodwill and reputation. The shape of bottle which the defendant had adopted under the trademark SALUTE was alleged to be deceptively similar to that of the plaintiff. The shape involved in dispute were as under:

The Suit was filed in which ex-parte injunction was granted. After appearing in the matter, the defendant alleged that its products were sold under the trademark SALUTE. The products of the defendant were sold in different colour. The product of the defendant were to be consumed by the educated consumers. Hence there can not be any possibility of any confusion.

The Hon’ble Mumbai High, while granting injunction against John Distilleries Limited, the defendant therein, observed as under:
“Under the Trade Marks Act, 1999, the shape of goods is now statutorily recognized as being constituent element of a trade mark. Section 2(zb) of the Trade Marks Act, 1999 defines the expression 'trade mark' to mean 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 to include the shape of goods, their packaging and combination of colours.

Parliament has, therefore, statutorily recognized that the shape in which goods are marketed, their packaging and combination of colours for part of what is described as the trade dress. A manufacturer who markets a product may assert the distinctive nature of the goods sold in terms of the unique shape through which the goods are offered for sale.

The shape of the bottle which the plaintiff has adopted has no functional relationship with the nature of the product or the quality required of the container in which Vodka has to be sold. The shape, to use the language of a leading authority on the subject, is capricious. It is capricious in the sense that it is novel and originated in the ingenuity and imagination of the plaintiff. Prima facie, a comparison of the shape of the bottle which has been adopted by the defendant with the bottle of the plaintiff would show a striking similarity.”

This is not that prior to enactment of Trade Marks Act 1999, the Indian Courts has not recognized the shape as a trade mark. In the year 1990 itself, in M.R.F. case [2], the Hon’ble High Court of Delhi recognized the pattern of a tyre as trademark. In MRF case, the plaintiff filed the suit against the defendant, seeking the relief of permanent injunction against user of selling auto-rickshaw tyres having prominent features of the tread pattern similar to that of the tread pattern of the auto rickshaw tyres of the plaintiff.

The Court observed that the tread pattern of the plaintiff’s tyres was essential and integral part of the tyre. The Court was of the view that unlike a wrapper, a label or a container, the tread was not something external to the tyre but it was an indivisible part. The Court also observed that similarity of the tread pattern may also raise a presumption of common origin or close business association between the plaintiff and the defendant. After observing the possibility of similarity of tread pattern of the parties, the Hon’ble High Court of Delhi, granted injunction in favour of the plaintiff.

In ZIPPO[3] case, the Hon’ble High Court of Delhi restrained the defendants from using the identical shape. This case was related to shape of lighters. The plaintiff filed the Suit claiming itself to be world leader in manufacture and trade of lighters, which it sells under its invented trademark Zippo. It was alleged that important feature of the plaintiff’s lighter was the chimney or windscreen enclosing the wick with round air holes punched into its sides in horizontal rows of three-two-three formation. It was claimed that the shape of the lighter as well as well as the windscreen chimney are unique and have acquired a secondary meaning to denote the plaintiff's cigarette lighters.

The plaintiff filed the suit against the defendants as the defendants were selling counterfeit Zippo lighters from its various outlets in Delhi and those lighters not only bore the word mark Zippo, but also constituted infringement of plaintiff's shape mark and were in fact verbatim imitation of the product of the plaintiff. The Hon’ble High Court of Delhi, while grating the relief of injunction in favour of the plaintiff and against the defendants observed that on seeing the lighter of the defendant bearing the trademark ZIPPO and/or on having a 3-dimensional shape identical to that of the product of the plaintiff-company, the customer may form a bona fide impression that either this is the genuine product of the plaintiff-company or it has been manufactured in collaboration and/or under license from it. Accordingly the defendants were injuncted from using the 3 dimensional Shape Trade Mark, similar to that of the plaintiff.

In DGT Case[4], the Hon’ble High Court of Delhi was having occasion to deal with the plea of the defendant that the design of a product can not be used as shape trade mark. The defendant raised the argument that relief for passing off can not be based in relation to design as shape trade mark. The Hon’ble High Court of Delhi after relying upon para 34 of Mohan Lal case[5] , The plaintiff would be entitled to institute an action of passing off in respect of a design used by him as a trade mark provided the action contains the necessary ingredients to maintain such a proceeding” also rejected the plea of the defendant that no registration of a trademark in relation to the shape of the products could be granted.

The Hon’ble High Court of Delhi further held ” It will always be open to the Plaintiff, as long as it satisfies the Court about the ingredients of a suit for passing off, to maintain such action.” Thus the Hon’ble High Court of Delhi. After relying upon the Mohan Lal case, laid down that Suit in Design of a product can be maintainable as passing off for shape trademark , provided such passing off action contains the necessary ingredients to maintain such a proceeding.

In Lilly ICOS Case[6] plaintiff filed the suit alleging that the Defendants has adopted the trade mark MCALIS which is deceptively similar to the plaintiff's well known trade mark CIALIS. Also, the CIALIS Tablet Trade Dress including distinctive yellow almond shaped tablet with inscription C20 and distinctive CIALIS Swirl have been allegedly copied by the Defendants. The plaintiff claimed that the same developed a unique packaging with unusual artwork, referred to as the Cialis Swirl.

The tablet sold under trademark CIALIS was given a unique and unusual shape of an almond and colour of light yellow. In this the defendant was restrained as defendant could give no justification whatsoever for adoption and use the deceptively similar trade mark with the swril device as well as the trade dress of the tablet of the plaintiff, which was also inclusive of plaintiff’s unique shape of the product.

The Hon’ble High of Delhi, in a recent Judgment Apollo Tyres Case[7] was having occasion to deal with the tread pattern of Apollo Tyre. The pattern of Apollo Tyre involved in the Suit was as under:

The Plaintiff namely Apollo Tyre filed this suit and sought the relief of inter-alia the permanent injunction to against the defendant so as to restrain the defendant from using the tread pattern claimed by the plaintiff to be its proprietary in respect of its truck tyre Endurance LD 10.00 R20, or any other tread pattern identical or similar therewith, in respect of their business of importing and selling of tyres, or representing a trade connection with the plaintiff so as to pass off, or enable others to pass off their goods/services as that of the applicant/plaintiff. The tread pattern of parties involved in question were as under:

In this case Vide order dated 15.09.2015, an ex-parte ad-interim order of injunction against the defendant was passed. The defendant raised the plea of inter-alia the tread pattern of the plaintiff to be functional and that similar tread pattern were used by various parties. The defendant submitted The tread in a tyre are functional and imperative to provide proper gripping and friction. The real issue is with regard to the pattern of the treads, as the pattern of the treads are a matter of imagination and creation.

The tread pattern adopted by the plaintiff is certainly not the only tread pattern which could serve the purpose, as there could be innumerable tread patterns which can achieve the same objective. The defendant also relied upon various other tread pattern used by various parties in the market.

The Hon’ble High Court of Delhi rejected the argument of the defendant regarding functionality aspect , returned the finding that the unique tread pattern adopted by the plaintiff is attributable only to the technical result, namely, of providing grip and stability to the vehicle on which the tyre of the plaintiff is used. The same function can be performed by any other tyre with a different tread pattern.

The Court restrained the defendant after observing that merely because there are multiple manufacturers of tyres in China who may have planned to capture the Indian market by flooding their tyres with identical tread patterns, as that of the plaintiff or other leading Indian tyre manufacturers, is no excuse to permit the defendant to do the same.

Thus it can safely be said that the Indian Courts are not lagging behind, in so far the recognition of rights in Shape Trade Marks is concerned.

End-Notes:

1. Gorbatschow Wodka Kg v. John Distilleries Limited, 2011(47)PTC100(Bom)
2. M.R.F.Limited v. Metro Tyres Limited, 1990 PTC 101
3. Zippo Manufacturing Company vs. Anil Moolchandani and Ors. 2011(48)PTC390(Del): 185(2011)DLT51: 2011IXAD(Delhi)661
4. 2013(55)PTC271(Del) DGT Holding B. V & Anr Vs Ravi Scientific Industries & Anr.
5. MANU/DE/1254/2013 : MIPR 2013 (2) 156 Mohan Lal v. Sona Paint & Hardwares
6. Lilly ICOS LLC and Anr. Vs Maiden Pharmaceuticals Limited 2009(39)PTC666(Del)
7. Apollo Tyres Ltd. vs. Pioneer Trading Corporation and Ors 2017 VII AD (Delhi) 127

Written By: Ajay Amitabh Suman - Advocate: High Court of Delhi