Under the law of trademarks, 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 trademark registration of the shape of a product, the same can only be granted if it has acquired a secondary meaning.

The case involved refusal of a trademark application for the shape of a knitting needle in Class 26 in respect of ‘knitting needles and crochet hooks’. The application was found objectionable by the Trade Marks Registry as not being distinctive under Section 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999. In its Appeal at the Delhi High Court, the Counsel representing Knitpro (the Applicant) submitted that the shape of the knitting needle sought to be registered by the Appellant is distinctive and has acquired secondary meaning. However, on Court enquiring to list the distinctive elements in the needle that entitles it to a shape trademark protection, the Counsel, on instructions, decided to withdraw the Appeal.

Are Shape marks Registrable in India?

The Court noted that:

1. The definition of the ‘mark’ has evolved. Traditionally, trademarks included names, words, devices, logos, label/packaging, letters, numerals, etc. However, this list of trademarks has expanded over the years to include non-traditional trademarks such as colours, the shape of goods, patterns of products, smell, and sound marks, among others, as long as they fulfill the quintessential function of trademark – ‘source identification.’
2. The law now extends trademark protection to features such as the shape of goods, packaging, sound, smell, and combination of colours, amongst others, as long as they fulfill the quintessential function of trademark – ‘source identification.’
3. The Court also referred to McCarthy on Trademarks and Unfair Competition [4th Ed § 8.4, page 8-13], J. Thomas McCarthy’s view was that the design and shape of the product could be protected as part of the trade dress. Traditionally, trade dress was thought to consist only of the appearance of the labels, wrappers, and containers used in packaging the product. Still, in modem parlance, it includes the total look of the product, it’s packaging and even the design and shape of the product itself.

In conclusion, the Court noted:

• That evolution of the definition of ‘mark’ under trademark laws has expanded the scope of trademark protection. While traditional trademarks include names, words, devices, logos, label/packaging, letters, numerals, etc., non-traditional trademarks include colour, a combination of colours, the shape of goods, patterns of products, smell, and sound marks, among others, as long as they fulfill the quintessential function of trademark – ‘source identification.’
• The settled legal position is that for a shape trademark to be registered, it has to be shown that the said shape is not the generic shape of the product. It must be a distinctive shape that associates the mark with the source by itself without anything further like a name or logo appended to it. The shape must have lost its inherent or generic meaning and ought to have acquired a secondary connotation. The standard of distinctiveness required to be acquired would be quite high.