Protecting product shapes in India is a multifaceted legal domain with implications for brand owners and innovators. While dual protection through both trademark and design registration may seem ideal, it's crucial to note that Indian law does not allow simultaneous trademark and design protection for certain aspects, such as patterns. Understanding the nuances of this intersection is essential to navigate the complexities of safeguarding product shapes effectively.
In this article, we delve into the intricacies of trademark and design protection, shedding light on the eligibility criteria, distinctiveness factors, and the practical implications of these two forms of intellectual property rights in India's legal landscape.
Trademark vs. Design Protection
With regards to Intellectual Property and its protection, India's legal framework encompasses trademark law and design protection law. The distinction between trademark and design protection lies in their primary focus. Trademark law protects the functional identity of goods or services, ensuring they are distinguishable from others in the market. This protection extends to names, logos, and, in some cases, even the shape of goods. On the other hand, design protection centres around preserving the aesthetic aspects of a product, like its shape, pattern, ornamentation, and colour. In short, elements that are visible to the eye.
- Trademark protection primarily guards the utilitarian attributes and functional value of a product.
- In contrast, design protection is geared towards preserving the visual and non-functional aspects that contribute to a product's uniqueness.
It's vital to recognise that while both trademark and design protection coexist and are essential, Indian law prohibits simultaneous statutory protection under the Trade Marks Act[1] and the Designs Act[2] for the same product features. This legal restriction underscores the need for a thorough understanding of the differences between these two forms of protection. The coexistence of these protections is possible when distinct elements of a product are safeguarded under each regime, making it crucial for brand owners to strategically navigate this intersection to maximise intellectual property rights while adhering to statutory limitations.
Design Registration in India
Design registration in India pertains to securing exclusive rights for the visual, non-functional attributes of a product. It's important to note that design protection is territorial, applying only within India's borders. Design protection lasts for ten years, with an option to renew for an additional five years. This ensures long-term safeguarding of the aesthetic elements of your product. To be eligible for design registration, your design must fulfil specific criteria. It must be original and distinguishable from existing designs in the market. These criteria help maintain a thriving culture of innovation and creativity in commerce.
Trademark Protection for Product Shapes
Shape trademarks have emerged as a distinctive form of trademark protection. They are unconventional but potent in safeguarding a product's identity. India has introduced unconventional trademarks to accommodate shapes and sounds, expanding the scope of trademark protection. Notable examples of shape trademarks include the unmistakable Zippo lighter shape, and the shape of Coca-Cola bottles. Certain shapes cannot be registered as trademarks. These include natural shapes, shapes dictated by technical requirements, and those primarily providing functional value to the goods in question.
Requirements for Shape Trademarks
Shape trademark applications require the submission of a 2D representation of the shape along with a detailed written description. Additional views may be requested by the Registrar during the examination process to ensure a comprehensive understanding of the shape's distinctiveness.
Distinctiveness of Shape Marks
The scrutiny process for determining the distinctiveness of 3D shape marks is rigorous. It aims to ascertain whether the shape is capable of uniquely identifying the source of goods or services. Factors influencing distinctiveness include the presence of a word element on the product or packaging, the seasonality of the product, and whether the shape significantly adds value to the product beyond its functional aspects.
Understanding these elements in design and trademark protection is vital for effectively navigating the legal landscape in India, ensuring your product's distinctive attributes are safeguarded while complying with the relevant regulations.
Overlapping Protections
It is possible to register a product's shape as both a design and a trademark in the Indian legal landscape. However, the concept of protection should be approached cautiously, considering the intricacies of each form of intellectual property.
Here's a breakdown of the key points:
- Two-dimensional aspects: In the case of two-dimensional aspects - such as patterns, lines, or colour compositions - there is no exclusion for a design under the Trade Marks Act, 1999. This means that the same design could potentially be protected as both a design and a trademark.
- Three-dimensional aspects: In the case of three-dimensional aspects (the shape of a product), it becomes more complex. Both design and trademark protection can apply, and various questions and challenges arise.
- Choosing protection: The owner of the product must decide whether to protect it as a design or a trademark. Choosing design protection may be more straightforward for entirely new and novel designs.
- Extending protection: If the product is protected as a design, the owner may still want to assert trademark rights for other aspects like unique stripes, colour combinations, or symbols. Conversely, if protected as a trademark, they may later seek registration as a design for the product's shape.
Enforcing Rights
In the case of Carlsberg Breweries v. Som Distilleries[3], The Delhi High Court, in December 2018, held that a plaintiff can combine two causes of action in a single lawsuit: one for infringement of a registered design and the other for passing off, against a single defendant. This judgement overturned the previous Mohan Lal v. Sona Paint[4] and Hardwares decision.
The case involved allegations of infringement and passing off related to the "Carlsberg" bottle and overall packaging. The defendant argued against this combination of claims, citing the Mohan Lal precedent. The matter was referred to a special bench.
The key issue was whether two distinct causes of action, design infringement, and passing off, could be joined in one suit. The court examined Order II Rule 3 of the Code of Civil Procedure[5] and found that common questions of fact and law could arise in such cases, allowing for a composite suit.
The judgement clarifies the law, emphasising the need to avoid multiple proceedings. It also confirms that a remedy for passing off can be sought for a registered design if it isn't functioning as a trademark. This ruling offers relief to plaintiffs and promotes efficient dispute resolution in design infringement and passing off cases.
The decision aligns with the goal of reducing the costs associated with IP litigation. It brings clarity to the jurisdiction of the Delhi High Court and supports the convenient resolution of such disputes.
Expiry and Trademark Protection
Following the expiration of a design registration in India, there exists the opportunity to claim trademark and trade-dress rights for your product. This is especially pertinent if your product has acquired goodwill and public recognition over time.
The Delhi High Court's ruling in December 2018 allowed plaintiffs to pursue both design infringement and passing-off claims in a single lawsuit, overturning the Mohan Lal precedent. This decision clarified that common questions of fact and law could arise in such cases, streamlining dispute resolution and reducing litigation costs.
Consequently, it was believed that once a design registration expired, no further trademark protection could be claimed, supported by cases like Crocs Inc USA v. Bata India[6]. However, a recent judgement by the High Court of Calcutta in Super Smelters Limited v SRMB Srijan Private Limited[7] challenged this notion.
The Calcutta High Court emphasised that after design expiry, trademark protection is possible if the design maintains goodwill and is associated with the product's proprietor. It established two key principles; (1) Passing off acknowledges a monopoly held by the proprietor over the article's shape, and; (2) an expired design can still fulfil trademark requirements, existing independently from design rights. This decision provides clarity on the coexistence of design and trademark protections and highlights the importance of goodwill in extending trademark rights beyond design expiration.
In conclusion, it is crucial to recognise the evolving nature of intellectual property law and the opportunities it offers, such as the transition from design to trademark protection. By carefully navigating these legal complexities, brand owners can ensure the longevity and integrity of their product's unique attributes in a dynamic marketplace.
[1] https://ipindia.gov.in/writereaddata/Portal/ev/TM-ACT-1999.html
[2] https://ipindia.gov.in/designs.htm#:~:text=The%20registration%20and%20protection%20of,the%20earlier%20Act%20of%201911.
[3] https://indiankanoon.org/doc/115888151/
[4] https://indiankanoon.org/doc/188045559/
[5] https://www.indiacode.nic.in/bitstream/123456789/2191/1/A1908-05.pdf