Absolute grounds for refusal in shape trademarks:
The shape trademarks have been recognised by the 1999 act in India, and their registration has been allowed. Not only shape of goods but also that of packaging has also been allowed as a trademark. They were recognised and allowed registration in the UK by the trade marks act, 1994. Shape trademarks have to fulfil the requisite of distinctive character mentioned in section 9(1) and it should not be confusingly similar as required in section 9(2) besides other conditions stated in the provisions. Both shape of the product and packaging are eligible for trademark registration. This recognition of shape trademarks would also permit unregistered shape trademarks. Naturally the shape trademarks would be protected by way of infringement and passing off proceedings.
How it can be protected?
Protection and registration of shape trademarks shall be discussed including section 9(3) which disallows registration of three types of shapes which are based on internal factors within the shape of trademarks. As the law accepted that qualified shapes of goods may be adopted as trademarks, all the attendant rights and obligations of the trademarks are available in respect of the shape trademarks. Unregistered shape trademarks have already been asserted in passing off action successfully and one such trademark has got away with an injunction against a registered design. Shape trademarks have been preferred more to monopolize a long standing shape which already identifies the product in the market, so as to forestall invasion of the existing market by the competitors making the product in similar shape of goods/packaging/containers.
Shape trademarks are not a preferred category as it faces difficulty in building goodwill, reputation and difficult in advertising as happens with signatures as trademarks. Even though the registration of shape trademarks were permitted in the year 2003, very few registration applications for shapes have been filed in India; the reason is difficulty in achieving distinctiveness for the shape trademark. Compared to the traditional trademarks, three dimensional 3D trademarks are used much less by business people and few applications are filed for such trademarks.
In India in past nine years, since shape or 3D trademarks have been permitted, there have been very few pronouncements on registrability and/or deceptive similarity of such marks even though an attempt at protecting unregistered 3D or shape marks have been successful.
The actual shape of goods is normally not allowed and even the shapes which are dictated necessarily by technique or functions, such shapes are not permitted as trademark. The approach for registration of a Community Trademark (CTM) by the office of Harmonisation in the International Market (OHIM)is comparatively strict. Shape trademarks met resistance in other countries too. Japan having allowed the protection of 3Dmarks in 1997, the Coca-Cola Company obtained 3D registration of it’s bottle after a long wait in the year 2007 after a long legal battle with the Japan patent office.
Requisite for registration of shape trademark:
The 1999 act provides for the possibility of shape or packaging of goods to be adopted as a trademark and if the same is of distinctive character it may be registered as a trademark. In the new definition of trademark the substantive requirements for being a trademark are
- The trademark must be capable of being represented graphically;
- The trademark must be capable of distinguishing the goods or service from those of others.
These have to be fulfilled succinctly by the shape and packaging trademarks. The proviso to section 9(1) would permit the shapes which become distinctive by use or publicity, thus curing the defect of the trademark in section 9(1).
The words capable of being represented graphically would mean that the mark should be such as capable of being put on the register in a physical form and also being punished in the trademark journal. The term “Graphic representation” is defined as “representation of a trademark for goods or service in Paper form”. This would facilitate registration of three-dimensional marks, as long as they can be graphically represented. In passing g off situations, it appears that the requirement of graphic representation would not be necessary, but the proprietor shall have to prove use and reputation as also function of the shape as indicating source of goods.
That the trademark must distinguish goods or services of the proprietor of trademark from those of others, is now specifically stated for a mark to qualify as a trademark and for being proprietor of a trademark or a shape trademark. The trademark must possess capability to distinguish goods or services for the purposes of registration of trademark in the register.
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