What are the necessary ingredients for shape of a good to qualify as trademark. The very genesis of trademark based on concept of association of particular name with a particular legal entity.

In Trade and Merchandise Marks Ac 1999, shape of good was not included to qualify as a trademark. However by passage of time, the Trade Mark Law evolved to include inter-alia the shape of a product as a trademark. As per the provisions of Section 2 (zb) of the Trade Marks Act, 1999, even shape of a product has been included 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 colors;

However for a shape of product to function as a trademark, certain conditions are required to be fulfilled.

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.

In Design Act also takes care of recognition of shape trademark. The Old Design Act 1911 has been repealed and replaced by Design Act 2000. Presently the Law pertaining to Design in India is governed by Design Act 2000. The term Design is defined in Section 2 (d) of Design Act 2000, which is reproduced herein below.

Design means only the features of shape, configuration, pattern, ornament or composition of lines or colors 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 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

In other words the Design Act 2000 defines a Design as two-dimensional or three-dimensional features of shape, configuration, pattern, ornament, or composition of lines or colors applied to any article by any manual, chemical, or mechanical ( separate or combined) industrial process or means, , which in the finished article appeal to and are judged solely by the eye. The Design Act 2000 in India specifically excludes any mode or principle of construction or anything which is in substance a mere mechanical device. The Design Act in India also excludes any trade mark, property mark or any artistic work.

From holistic reading of relevant provisions of Trade Marks Act 1999 and Design Act 2000, it is apparent that for shape of a good to qualify as the trademark, following conditions have to be fulfilled.

• It should not be functional in nature.
• It should be a shape to qualify as a Design under the Design Act 2000.
• Shape should be distinctive to the owner and shall not be because of nature of goods.

More over , if shape of good does not aid into substantial value to the product, other wise it shall qualify as shape trademark.

Written By: Ajay Amitabh Suman: Advocate, Hon'ble High Court Of Delhi