Building a strong brand identity is essential for businesses today. A trusted brand name gives you a competitive edge and helps you stand out. To achieve this, consistent brand evolution and a memorable impression are key. Trademarks are a powerful tool in this process. They legally protect the brand identity, allowing the proprietor to operate freely both domestically and internationally. Besides, trademarks promote trust among customers by serving as a sign of quality and reliability. A 3-Dimensional (in short referred to as “3-D” hereinafter) trademark is a mark which utilizes a 3-D form of a product or its packaging with a view to gain distinction in the market.
A 3-D trademark is a form of intellectual property that guards the shape or form of a product, or even packaging, as a means of identifying the origin of the product and distinguishing it from others. The shape of the Coca-Cola bottle, Toblerone chocolate bar, the Zippo lighter are all iconic shapes that are immediately recognizable to consumers, and have consequently, they have been successful in acquiring trademark protection for their shapes. These unique shapes are being depicted below:
The Trade Marks Act, 1999 (‘the Act’ for short), under Section 2(1)(zb) defines a trademark as a mark which can be visually depicted (graphically), is distinctive per se or identifies the goods/services it designates, and may even include the shape of the goods themselves, their packaging, or a combination of colours. The same requirements apply to the non-conventional marks if they are to be registered. As 3-D marks fall in the category of non-conventional marks, above requirements become the criteria for registration of the same.
Distinctiveness: The Crux of 3-D Trademark Registration
For a trademark to be registered as a 3-D trademark, the 3-D shape must possess a distinctive character. A shape is deemed distinctive if it is inherently distinctive or has gained distinctiveness, assists in identifying a specific source of goods and differentiates it from the goods of other players in the market. It is necessary to ensure that the shape should not be of common usage and should not be mistaken for an existing form of a certain type of goods or services. Distinctiveness is important for 3-D trademarks for many reasons. On one hand, it safeguards public interest by barring monopolies over generic shapes, which promotes healthy competition and innovation. On the other hand, it guarantees the very essence of trademarks – consumer identification. Unique shapes, such as the Coca-Cola bottle, serve as a brand’s visual identification, facilitating consumers in identifying the origin and preventing confusion. Lastly, uniqueness does not include original shapes, such as a phone screen rectangle, openly available to be used by all firms freely, promoting healthy competition in product development.
Other key requirements for a 3-D trademark include:
- Non- Functionality
It is a crucial requirement for trademarking a 3-D shape. Not every 3-D shape can be trademarked in India. The shape must not be required for the inherent function of the product. Think of a distinctive bottle form that facilitates pouring – that would not be protectable as a 3-D trademark. The trick is to distinguish between functional features and those that provide aesthetic appeal. Aesthetic, non-functional design aspects stand a greater chance of trademark registration.
- Secondary Meaning
Not all 3-D shapes are inherently unique to be registered as a trademark in India. A common shape can become so with extensive use in the market, gaining a secondary meaning, or “acquired distinctiveness”. To establish this acquired distinctiveness, companies can submit evidence of long-term commercial use of the 3-D shape, marketing materials featuring the shape, and consumer surveys establishing brand association.
Scope of 3-D Trademarks in India
India permits registration of shape of goods as trademarks as per the definition under Section 2(m) and Section 2(1)(zb) of the Act. Indian trademark law makes it possible to protect the distinctive shape of a product, its packaging, or any 3-D feature, as long as it is possible to represent it visually. A graphical symbol satisfies the demand of the 3-D trademark for registration. One of the earliest cases of shape mark in India is Zippo Manufacturing Company v. Anil Moolchandani and Ors (CS (OS) 1355/2006). The case brief is as follows:
Zippo Manufacturing Company, a U.S. based lighter company, filed legal suits against an Indian company for its illegal production and supply of fake Zippo lighters. Zippo contended that their mark “Zippo” was famous because it was marketed all over the world and that the distinctive shape of their lighters, which had been registered as a 3-D mark since 1996, was also violated. The Delhi High Court held in favour of Zippo. The Court acknowledged the uniqueness of the Zippo lighters’ shape and its nature as a trademark. Even in the absence of the use of the “Zippo” name, the Court held that a similar shape could result in confusion and passing off. The Defendant retailers sought to take advantage of the goodwill and reputtaion enjoyed by Zippo by selling inferior lighters, damaging Zippo’s reputation. A permanent injunction was ordered, which forbade the Defendants from selling, offering for sale, distributing, or marketing lighters of the offending shape. Though Zippo was unable to establish specific damages, the Court granted them Rupees 5 lakhs along with a permanent injunction against the Defendants selling similar lighters, safeguarding both consumers as well as Zippo’s rights from confusion.
The case of Gorbatschow Wodka KG v. John Distilleries Ltd [(2011) 4 Mah LJ 842] is another notable case exploring the element of 3-D mark. Gorbatschow Wodka (plaintiff), being an internationally popular premium vodka brand with a unique bottle design, instituted a suit to restrain John Distilleries (defendant) from releasing its vodka, titled “Salute”, in a similar shaped bottle. The plaintiff contended that its bottle was distinctive and had gained substantial goodwill. They stated that the defendant’s bottle was misleadingly similar, causing possible consumer confusion and erosion of their brand reputation. The defendant replied that their bottle was original, supported by a registered design, and addressed a discerning consumer group not likely to be confused. They also argued that the plaintiff’s goodwill in India was dubious. The Delhi High Court held in favour of the plaintiff, issuing an injunction against the defendant, that the plaintiff’s bottle shape was distinctive and non-functional, and the defendant’s bottle was deceptively similar. The Hon’ble Court dismissed the defendant’s contention regarding the sophistication of consumers, highlighting that consumer protection applies to all, irrespective of socioeconomic status. The Court held that the plaintiff had effectively created a reputation for its brand both globally and in India and acknowledged that the plaintiff had specifically created the bottle shape to make it distinctive and unique in appearance, having no relation to the functional aspect of the product. The design of the bottle was Russian Orthodox-inspired, particularly its bulbous shape, which the defendant had reproduced without leaving any substantial reason for doing so. The Court insisted that permitting the defendant to copy the plaintiff’s bottle would lead other firms to violate the plaintiff’s intellectual property rights. The Court held that the defendant’s conduct threatened the plaintiff’s reputation and goodwill, which were established over time.
When Shapes Cannot Be Trademarks
Section 9 of the Act provides absolute grounds for refusal of registration of a trademark. Section 9(3) makes provision for grounds under the aspect of the shape of goods. According to this Section, a mark should not be registered if it’s shape results from the nature of the goods themselves; or the shape is necessary to obtain a technical result; or that the shape confers significant value to the goods.
The Act disallows people and businesses from trademarking shapes that have direct connection to the function of a product. If a particular shape is crucial for the product to function correctly, then it is not allowed to be registered as a trademark, ensuring that there is no monopoly in the market. The aforesaid provision deals with the shape and appearance of a good, rather than its purpose.
For the registration of a 3-D trademark in India, Rule 26(3) of the Trade Marks Rules, 2017 (‘the Rules’ in short), has to be taken into account. On the application form for registration of a 3-D shape, the applicant must indicate that the application is for a shape mark. The aforementioned Rule necessitates filing a clear visual depiction of the trademark, and this means furnishing three different perspectives of the 3-D shape in the application for registration of the same. If these perspectives are not sufficiently clear, the Registrar can demand up to five further perspectives and a written description to enable better comprehension. In extreme situations, even a physical model of the 3-D trademark itself might be demanded.
Conclusion
Trademarking an unusual 3-D shape can be an effective means to gain brand differentiation. An unusual 3-D shape can become an independent indicator of a brand, differentiating it from others without the use of words or logos. This is especially useful where packaging is constrained or obscured, such as on a shelf or from a vending machine. But as set out in this article, 3-D trademark registration in India involves the exercise of caution in relation to distinctiveness and functionality. The central idea of distinctiveness ensures that a registered 3-D shape fulfills its general function, and that is to distinguish the origin of a product and make it stand out from others. Consumers must be able to identify at least one brand connected with an unusual shape, such as the Coca-Cola bottle. This distinctiveness promotes good competition by keeping simple forms freely available for every business while rewarding brands for coming up with creative designs.