Registration of Shapes of Goods

shapes

Sub-section (3) of Section 9 reads as follows –

A mark shall not be registered as a trademark if it contains of –

  • The Shapes of goods which result from the nature of the goods ; or
  • The Shapes of goods is necessary a technical result; or
  • The Shapes, which gives substantial value to the goods.

This is a new provision. The ‘shapes of goods and their packaging’ is already included in the definition of mark for purpose of Trademark registration. Section 9(1)(3) however prohibits registration as a trademark if it consists exclusively of a shape which results from the nature of the goods themselves  or such shape of goods is necessary to obtain a technical result or that the shape of those goods gives substantial value to the goods.

For registrability, the shape of goods should be such as being capable of distinguishing the goods of the applicant from those of others. If the shape is also distinctive that it primarily serves to identify the product and to distinguish it from competing products, without being hit by the provisions of section 9(3), it will be qualify for trademark Registration.

In certain countries –including India- the law did not recognize as a trademark the shape of goods or their packaging. This is based on the construction that a mark must be something apart from the goods themselves. The concept that the mark must be something affixed on the product or its container is an old concept, which has largely been abandoned.

The criterion for trademark protection is whether what is claimed as a trademark really identifies and distinguishes the claimant’s products from those of others. Modern technology can fashion shapes of products or containers, which are distinctive and can serve to identify and distinguish. The Coca Cola bottle can identify this beverage just as much as the name. A blind man can identify this product by touching the shape of the bottle. The “Parker” pen is identified by its shapes without reading the name on it. The provisions in section 9(3)(a), (b) and (c) are all inter-related. For certain goods, the shape thereof will be determined by the nature of such goods. Similarly for ensuring the intended performance of the goods themselves, the goods have to be in a particular shape. Therefore, where such shapes of goods have necessarily to be so, it will apparently lack distinctiveness and be devoid of any distinctive character. It is a fact of the market place that some shapes are recognized by consumers as distinctive of the product of a p[articular trader. Allowing the registration of such shapes would therefore not be conferring the monopoly – it would merely be recognizing that a monopoly already exists. In other words, although not registrable as the law now stands, such shapes are in fact already functioning as unregistered trademark. As with colors and sounds, it is likely that evidence of factual distinctiveness will be necessary in most cases.

Shapes which result from the nature of the goods

shapes

Section 9(3)(a) prohibits trademark registration if it consists exclusively of the shape of the goods which results from the nature of the goods. The subsection is intended to exclude from registration basic shapes that will be available for use by the public at large. The goods refer to the goods in respect of which the trademark is to be registered. Those are the goods which it must be capable of distinguishing and in respect of which the proprietor obtains, no registration, the exclusive right to use the trademark. The words are used to refer to any of the goods falling within the class for which the trademark is registered. For example registration of a picture of banana in respect of “fruit” would be just as objectionable as registration of that word would be in respect of “bananas”. The purpose of the sub-section was to prevent traders monopolizing shapes of particular goods and that cannot be defeated by the skill of the applicant when securing the class of goods for which the registration is sought.

Shapes which are necessary to obtain a technical result

In the context of section 9(3)(b), according to which a mark shall not be registered if it consists of the shape of goods which is to obtain a technical result, it is of interest to see what the court of appeal held in Philips Electronics NV versus Remington Consumers product Ltd. It was held: “the subsection must be construed so that its ambit coincides with its purpose. That purpose is to exclude from registration shapes which are merely functional in the sense that they are motivated by and are the result of technical considerations. Those are the types of shapes which come from manufacture of patentable inventions. It is those types of shapes which should not be monopolized for an unlimited period by reason of trademark registration, thereby stifling competition. Registrable trademarks are those which have some characteristic which is capable of and denote origin. In my judgment the restriction upon registration imposed by the words “which is necessary to obtain a technical result” is not overcome by establishing that there are other shapes which can obtain the same technical result. All that has to be shown is that the essential features of the shape are attributable only to the technical result. To adopt the meaning suggested by Philips will enable a trader or traders to obtain registration of all the alternative shapes that were practicable to achieve the desired technical result. That would result in sub-section being given a meaning which would not achieve the purpose for which I believe it was intended. I agree with the judge and with the dissenting judgment in the Swedish District Court”

“To obtain a technical result”

shapes

The meaning of “necessary to achieve a technical result” as used in section 9(3)(b) of the act should be determined by inquiring whether in substance the shape solely achieves a technical result. The sub-section must be construed so that its ambit coincides with its purpose. That purpose is to exclude from trademark registration shapes which are merely functional in the sense that they are motivated by and are the result of technical considerations. Those are the types of shapes which come from manufacture of patentable inventions. It is those types of shapes which should not be monopolized for an unlimited period by reason of trademark registration, thereby shifting competition. Registrable trademarks are those which have some which is capable of and does denote origin. On this basis the judgment of the above case i.e., Philips Electronics NV verses Remington Consumers products “which is necessary to obtain a technical result” is not overcome by establishing other shapes which can helps to obtain the same kind of technical result. To adopt the meaning suggested by Philips will enable a trader or traders to obtain registration of all the alternative shapes that were practicable to achieve the desired technical result. That would result in the sub-section being given a meaning which would not achieve the purpose for which believe it was intended.

Shapes which gives substantial value to the goods

shapes

Section 9(3)(c) prohibits the registration of a trademark  if it consists exclusively of “the shape which gives substantial value to the goods “. There may be overlap between this sub-section and the sub-section which excludes shapes necessary to obtain a technical result, but the purpose is different. The latter is intended to exclude functional shapes and the former aesthetic type shapes. Thus the fact that the technical result of a shape is excellent and therefore that the article can command a high price does not mean that it is excluded from registration by sub-section (c). The sub-section is only concerned with the shapes having “substantial value”. That requires a conclusion as to whether the value is substantial , which in the common view requires that the comparison has to be made between the shape sought to be registered has, in relative terms, substantial value that it will be excluded from registration. In the present case the shape registered by Philips has a substantial reputation built up by advertising and reliability and the like. That in the view is not relevant. What has to be considered is the shape as a shape. If that is more value than other shapes which were established to be as good as and as cheap to produce as that which is registered.

The question of the registration of the shape of a bottle in respect of non-alcoholic beverages came up for consideration before the appointed person on appeal. The Registrar earlier held “the mark at issue seems to me to be a plain bottle shape with no obvious characteristics to distinguish it in the market place from bottles of a similar, although not necessarily identical, shape. I do not say that the mark is unregistrable but in the absence of any evidence of recognition as a trademark by the public or evidence of distinctiveness acquired through the use made of it, the magistrate considers it would be appropriate to grant a monopoly in this particular bottle shape”. The Appellate Authority who agreed with the Registrar held that “the features identified impart relatively little by way of specific individuality to the bottle shape in issue. I think they combine to produce a bottle shape which departs from established norms to such a small extend to such a small extend and so unadventurously that the shape remains within the realms of the visually unsurprising. Because it scores so poorly in terms of visual aberration, I would not  expect the shape to function as a point of reference for people interested in seeing whether the contents of such bottles (which may according to the application of registration, be non-alcoholic beverages, preparations for making such beverages, preparations for making such beverages, fruit flavored carbonated drinks or fruit juices for use as beverages) “ have originated under the control  of a single undertaking which is responsible for their quality”. The features of shape which enable the bottle to be distinguished from other bottles are, features that people would not take to be an indication of trade origin in relation to its contents unless and until they had been educated.

Illustrations of shapes which may not be registrable

shapes

The following illustrations in the British manual would show what shape of goods would not qualify for registration

  • The shape of an egg tray, whose purpose is to hold the eggs, would come within the purview of section 9(3)(a) and would not be considered as capable of distinguishing.
  • The shape of a square pinned plug – unless the pins are square, they will not fit into the standard socket. So its shape is necessary to achieve a technical result. Hence, will not be registrable under section 9(3)(b).
  • Under section 9(3)(c), shapes which are more effective than other alternatives for performing a particular task add substantial value to the goods would not be registrable.

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