Shaping the law: high court clarifies requirements for shape marks

Since 2003 it has been possible to register non-traditional trademarks, including shape marks, in India. However, even after nearly two decades, seeking registration for such marks is challenging as the threshold for extending exclusive rights to the shape of a product remains high.

The requirement for registrable shape marks was once again reiterated by the Delhi High Court in a recent case - Knitpro International v Examiner of Trademarks Through Registrar of Trademarks (CA (COMM.IPD-TM) 110/2022). The court was deciding an appeal originating from a refusal order of the Senior Examiner of Trademarks in respect of the shape of a needle sought to be registered for 'knitting needles and crochet hooks' (filed under Application 2735618 in Class 26), which was held to be non-distinctive and descriptive of the goods.

The appeal was however withdrawn upon questioning by the court on the distinctive elements of the needle. Regardless, the court went on to record the legal position for registration of shape marks in India. It held that the shape by itself should be immediately identifiable with the source of the product, and registration can only be granted if the mark has acquired a secondary meaning.

The court referred to several international judgments, one being the Kit Kat case of Société des Produits Nestlé SA (Nestlé) v Cadbury UK Ltd [2017] EWCCA Civ 358, in which the CJEU recognised that the perception of consumers is not the same when it comes to three-dimensional marks versus word/figurative marks. The average consumer is not in the habit of making assumptions about the origin of products based on their shape or the shape of their packaging in the absence of any graphic or word element, and it may, therefore, prove more difficult to establish distinctiveness in a three-dimensional mark. It was also observed that the more closely the shape for which registration is sought resembles a conventional shape, the greater the likelihood of it being devoid of distinctive character. Last, in assessing whether a mark has acquired distinctive character through use/secondary meaning, an overall assessment must be made by taking into account all of the relevant evidence and circumstances in which the relevant public may have seen the mark.

Based on the same grounds, the Delhi High Court held that per the settled legal position, in order for a shape mark to be registered, it has to be shown that the shape is not the generic shape of the product and the same should have gained such distinctiveness or secondary meaning that it serves as a source identifier by itself, that is, without any name/logo appended to it.

The court also noted that the withdrawal of the appeal in this case shall not prejudice the appellant from seeking protection for their shape mark at a later stage upon establishing that it has acquired a secondary meaning.

The court’s position in this case is similar to what prevails in most jurisdictions across the world and reflects how the newer category of trademarks often hit a roadblock in trying to fulfil the essential function of a trademark: source identification.