In spite of the Trade Marks Act, 1999 containing provisions for the shape of goods to be registered as a trademark, there exist significant challenges to establish sufficient evidence of product shape exclusivity, as the burden of proof that the shape serves as a source identifier lies on the proprietor.

In 1990, in the case of M.R.F. Limited v. Metro Tyres Limited, 1990 PTC 101, the Delhi High Court acknowledged a tyre pattern as a trade mark. In this case, the plaintiff objected to the defendant’s sale of auto-rickshaw tyres having a tread pattern similar to that of plaintiff's auto-rickshaw tyres. The Court held that, the tread pattern of plaintiff's tyres was a vital part of the tyres and granted an injunction in favour of the plaintiff after observing similar tread patterns on the tyres of both parties. Similarly, the Bombay High Court treated a bottle shape as a trademark in the case of Gorbatschow Wodka Kg v. John Distilleries Limited, 2011(47)PTC100 (Bom).

Several judicial pronouncements have made it clear that, in order to register a shape trademark, it must be shown that the shape in question is not generic for the product. It must be a unique shape that associates the mark with the source without any other name or logo attached to it. The shape must have lost its inherent or general meaning and should have acquired a secondary connotation.

Recently, the Delhi High Court discussed the quandary of allowing trademark registration for shape marks in the case of Knitpro International v Examiner of Trade Marks through Registrar of Trade Marks C.A. (Comm. IPD-TM) 110/2022.

In this case, Knitpro International’s (Knitpro) trademark application in Class 26 was refused by the Trade Marks Registry. The trademark of the Applicant was for the registration of a trademark for the shape of a knitting needle. The Ld. Examiner expressed that the mark was devoid of any distinctiveness. Hence, Knitpro appealed to the Delhi High Court.

ISSUE:-

·       Whether the mark had acquired distinctiveness through use and a secondary meaning?

·       Whether the particular shape arose from the nature of the goods?

The primary issue before the Court was, whether the distinctive element in the needle entitled it to shape mark protection. However, in due course the appeal was withdrawn by Knitpro. Nonetheless, the Hon’ble High Court decided to clarify India's legal position on shape marks. In this case, the Delhi High Court held that for the registration of a shape mark, it must be demonstrated that the shape in question is not the general shape of the product.

Before elucidating India's legal position on shape trademark registration, the Court referred to several international judgments such as Wal-Mart Stores, Inc. v. Samara Brothers 529 U.S. 205, 120 S.Ct. 1339 wherein it was held that, in order to grant exclusive rights to a product design, the plaintiff must always prove that its shape mark has a secondary meaning in the market. In the international context, another case which was referred to was Société des Produits Nestlé SA v Cadbury UK Ltd. [2017] EWCCA Civ 358, wherein the Court observed, the requirements of evaluating acquired distinctiveness through use and secondary meaning. The issue related to the four fingered shape of the Kit-Kat mark which had its distinctive character, with reference to Nestle’s three dimension trade mark.

The Hon'ble Delhi High Court observed that, the shape of a product, if aesthetic in nature, could qualify as a Trademark. However, in order to qualify for registration as a Trademark , the shape by itself should immediately be identifiable with the source of the product. Secondary meaning was required for a shape of a product to qualify as a Trademark.

The generic shape of the product or any other shape which is not unique or distinctive, could not qualify as a trademark and it could be said that only those shapes, which consumers associate a particular product with a particular legal entity could qualify as trademarks making “source identifier” as the actual test. If the shape of a product serves as source identifier, it could serve as trade mark as well.

In the Knitpro case, the Court observed that the applicant had failed to point out any unique feature or acquired distinctiveness, regarding the subject matter shape trademark in its knitting needle.

This judgment is regressive and brings in a requirement which is contrary to the Trade Marks Act, 1999. Section 18 of the Act permits the registration of a mark which is proposed-to-be used in virtue of which, the Applicant only requires to display the intention to use the mark at the time of filing and no prior use is required.

Several applications for the registration of shape marks in India are applied on a proposed-to-be-used basis and this judgment might render those applications as non-distinctive even if they are inherently distinctive and mandate the shape marks to be filed only with a prior use claim irrespective of claims of inherent distinctiveness.