Part I: Trade Mark Concepts #Shapes #Introduction

This month, I shall be discussing a series of European cases that deal with trade marking shapes and the associated functionality principles. This piece contains absolutely no analysis, and is only intended to lay the groundwork for the rest of the series.

Before you decide to abandon going through this series on account of the European origin, allow me to remind you that the Indian statute, in this context, is very similar to its European counterparts. As a consequence of the similarity between the statutes, the arguments put forth could very well be used whenever such questions come up in Indian courts.

Not only does this series provide greater insights into shape related trade marks, but also enlightens the reader about the general concepts surrounding trade mark law.

Produced below are the relevant provisions for the enthusiastic reader to compare.

All we need to do, at this point, is to have a cursory look at the four statutes and notice that the Indian provision is very similar its European counterparts.

The Trade Marks Act, 1999 (Indian Statute)

“…

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 colours;

…

9. Absolute grounds for refusal of registration.—

(1) The trade marks—

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered:

Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

…

(3) A mark shall not be registered as a trade mark if it consists exclusively of—

(a) the shape of goods which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods.

…”

First Council Directive 89/104/EEC of 21 December 1988 (European Statute)

“…

Article 2

A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Article 3

1. The following shall not be registered or if registered shall be liable to be declared invalid:

(a)    signs which cannot constitute a trade mark;

(b)    trade marks which are devoid of any distinctive character;

(c)    trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

(d)    trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

(e)    signs which consist exclusively of:

                                     –    the shape which results from the nature of the goods themselves, or

                                     –    the shape of goods which is necessary to obtain a technical result, or

                                     –    the shape which gives substantial value to the goods;

…

3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration.

…’

Council Regulation (EC) No. 40/94 of 20 December 1993 (European Statute)

“…

7. The following shall not be registered:

…

(e)       signs which consist exclusively of:

(i)   the shape which results from the nature of the goods themselves; or

(ii)  the shape of goods which is necessary to obtain a technical result; or

(iii) the shape which gives substantial value to the goods;

…”

Directive 2008/95/EC of 22 October 2008 (European Statute)

Article 3

“1. The following shall not be registered or, if registered, shall be liable to be declared invalid:

…

(e)      signs which consist exclusively of:

(i)      the shape which results from the nature of the goods themselves;

(ii)      the shape of goods which is necessary to obtain a technical result;

(iii) the shape which gives substantial value to the goods;      

…

“

These are all the statutes that I will dealing with over the course of this series.

We will go into much greater depth in relation to these statutes. The point behind showcasing them in the introductory piece was only for us to note that the provisions are incredibly similar and that the subsequent analysis (upcoming posts) is of immense theoretical significance for us Indians.

Introduction to Shape Trade Marks

Over the course of this series, as we traverse through slightly sticky and complicated areas of trade mark law, it will help to have a general overview of the nature of shape trade marks.

Shape marks are not inherently distinctive.

Allow me to explain…

Generally, consumers don’t rely on the shape of a product to identify the affiliated undertaking. Inherent marks include logos, word marks, et cetera, which consumers normally rely upon for ascertaining the origin of a product. Therefore, in order for a shape mark to be registered as a trade mark, the undertaking seeking registration needs to show acquired distinctiveness.

Once acquired distinctiveness has been shown to exist, the shape mark could be considered as fulfilling the role of a trade mark. But please note that despite fulfilling the role of a trade mark, a mark can still be denied registration on account of functionality restrictions (discussed further in upcoming posts).

With this general understanding, we can take up the first case for analysis.

Coming up

Koninklijke Philips v. Remington. Click here.

Chief Reference

Dr. Gangjee’s “Unconventional Trade Marks”.

Image from here.