IN LOVE WITH THE SHAPE OF YOUR PRODUCT OR ITS 3D PACKAGING? SECURE IT UNDER THE INDIAN TRADEMARKS ACT! – Eshwars
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IN LOVE WITH THE SHAPE OF YOUR PRODUCT OR ITS 3D PACKAGING? SECURE IT UNDER THE INDIAN TRADEMARKS ACT!

Authored by Padma Akila

An average consumer in today’s world does not acknowledge a product just from its brand name or appearance but is also highly interested in the way the products feel and the shape of their packaging. A three-dimensional trademark is a type of non-conventional trademark that comprises the 3D shape of a product, or its package/container created to acquire distinction among its competitors. A 3D mark may include shapes of the container in which the product is packed (example: the shape of the coca-cola bottle) or the shape of the product itself (example: the shape of KitKat and Toblerone chocolate bars).

The Trade Marks Act, 1999 defines a mark and a trade mark to include the shape of goods and hence protectable under the Indian trademark law. At this juncture, it is pertinent to note that 3D trademarks in India go way back to the 90s with their trademark game when the Indian Trademark Registry granted protection to the shape of ZIPPO lighters in 1996. Apart from the general conditions to be followed while registering an ordinary (two-dimensional) mark, the shape of the 3D mark on which protection is being sought is also subject to certain conditions laid down under Section 9(3) of the Trade Marks Act which states that a mark shall not be registered if it consists of (i) shape of goods which results from nature of goods themselves, or (ii) shape of goods which is necessary to obtain a technical result, or (iii) shape which gives the substantial value of goods. The Trademarks Manual states that the purpose of Section 9(3) is to ensure that the common shape of goods, as it exists in nature, does not get monopolised. Further, Rule 29(4) of the Trade Mark Rules, 2002 states that when applying for a trademark of a shape mark, the graphical representation must contain a 5-point perspective photograph showing all features of the mark, accompanied by a detailed word description of the mark.

It is pertinent to note that brand owners can alternatively opt for the protection of the shape of their products under the Design Act, 2000 which includes features of shape, configuration, pattern or ornament or composition of lines applied to any article whether two-dimensional or three-dimensional or in both forms. It is pertinent to note that securing registration on 3D trademarks in India, needs extensive proof of usage and a higher burden of proof to claim exclusivity in relation to such 3D shapes in favour of the applicant as compared to regular trademarks. One of the basic elements or pre-requisites for registration of, a product design under the Design Act, 2000 is novelty viz., the product on which design registration is being sought needs to be original and also implies that the subject design must not have been previously published anywhere in India or in any other country in a tangible form or by use or in any other way.

Some examples of 3D trademarks include the shape of the Ferrero Rocher chocolate, the contour of a Coca-Cola bottle, the shape of the Zippo Lighter, the 3D shape of the Super Cub Scooter of Honda, the Toblerone packaging, Les Grands Chais de France wine bottle and many more.

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