History of shape trademarks and how it can be protected

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History of shape trademarks and how it can be
protected?
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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.
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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/contai
ners.
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How it can be protected?
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.
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3D 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
its bottle after a long wait in the year 2007
after a long legal battle with the Japan patent
office.
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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).
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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.