We’re pleased to bring to you a guest post by Akshay Ajayakumar examining the Delhi High Court judgment in the recent Knitpro International case, on shape marks. Akshay is a lawyer based in Munich, Germany. He is a graduate of National Law University, Jodhpur, and is currently pursuing his LL.M in IP and Competition Law from Munich Intellectual Property Law Center (MIPLC) – A cooperation project of the Max Planck Society, the University of Augsburg, the Technical University of Munich, and The George Washington University. All views in the post are personal. You can view his earlier posts for us here and here.
The Shape of Shape Marks in India
This post briefly touches upon the requirements for a shape mark and then critiques the Delhi High Court’s judgment in Knitpro International v. Examiner of Trade Marks through Registrar of Trade Marks (C.A. (COMM.IPD-TM) 110/2022).
As per Section 2(m) of the Trade Marks Act, 1999 (‘Act’), a ‘mark’ also includes the shape of goods. Section 9(3) of the Act lays down the following grounds for absolute refusal of a shape mark, which includes the following bars:
9(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.
In addition to shape mark-specific grounds, a shape should also overcome the grounds prelisted in Sections 9(1) and 9(2) of the Act. However, an objection under Section 9(1) can be overcome by showing acquired distinctiveness (proviso to Section 9(1)). Notably, an objection under 9(3) of the Act cannot be overcome by demonstrating that the mark has acquired a distinctive character. Consequently, despite having acquired distinctiveness a trademark can still be refused under 9(3) of the Act.
Usually, consumers are 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. Due to the nature of the shape mark, it must pass the hurdle of distinctiveness [as per Section 9(1)(a)] to be registrable. The question of distinctiveness can be positive only if the shape alone bereft of the packaging and trademark can identify the product. Numerous famous shape marks from the 4-finger Kit Kat to London Taxi have gone down the graveyard of lack of distinctiveness internationally.
The Delhi High Court in Knitpro International v. Examiner of Trade Marks through Registrar of Trade Marks (C.A. (COMM.IPD-TM) 110/2022), concerning an appeal against a refusal for a shape of a knitting needle, held:
“…. the novel shape of a product which has aesthetic appeal is protectable under the law of designs if the requisite conditions are satisfied. However, 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 trade mark registration of the shape of a product, the same can only be granted if it has acquired a secondary meaning.’ Therefore shape marks ought to have acquired a secondary connotation to be able to be registered.”
“…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 has to 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.” (Emphasis supplied)
Therefore, a shape must have acquired a secondary connotation to be able to be registered.
What does this mean?
Section 18 of the Act permits the registration of a mark which is proposed to be used. The Applicant only needs the intention to use the mark at the time of filing and no use is needed. It is a different story that a registration can be cancelled if it is not used for a continuous period of 5 years and 3 months from the date of a non-use rectification application under Section 47 of the Act.
An analysis of shape trademark applications in India shows that a good percentage of them are applied on a proposed-to-be-used basis. This judgment will render those marks non-distinctive even if they are inherently distinctive and make shape marks to be filed only with use claims irrespective of their inherent distinctiveness. The Act provides for proposed to-be-used marks and this judgment runs counter to it. Therefore, the applications filed on a proposed-to-be-used basis will now be considered non-distinctive irrespective of claims of inherent distinctiveness.
This is particularly problematic considering that the DHC used case laws in the EU and the US to arrive at this. The test in the EU is that a shape mark which departs significantly from the norm or customs of the sector can possess distinctive character and not a requirement for acquired distinctiveness (see here). Even in the US, Wal-Mart Stores, Inc. v. Samara Brothers, referred to by the DHC, refers to the earlier Two Pesos case to reiterate the legal principle that product packaging can be inherently distinctive (see here and here). The difference between product designs (not registrable without secondary meaning) and product packaging (registrable without secondary meaning) is challenging and can be very subjective at the very least. Therefore, the DHC holding is not correct even as per US law.
Therefore, this judgment is regressive and brings in a requirement which is contrary to the Act. Understandably, shape marks are generally not very distinctive but that does not mean that all shapes are not inherently distinctive. Considering that the shape mark-specific requirements under Section 9(3) prevent a shape mark from being generic, functional, and ornamental, this additional requirement of acquired distinctiveness seems to be above and beyond what the legislature has mandated.