NOVELTY AND RECOGNITION: CHOOSING BETWEEN DESIGN REGISTRATION AND TRADEMARK PROTECTION FOR SHAPE
Authored by Ankith Kumar & Namratha Arjun
With every new innovation in product design, proprietors of such products are often left with a question on what can one do to protect the unique visual element or appearance of the product which distinguishes the product from that of the competitors? This is where the confusion arises whether the shape of a product should be protected as a trademark or as a design. Design law asks: Is this shape new? Whereas the trademark law asks: Does this shape mean you? A shape may be entirely new at launch yet have no source-identifying significance, while an old shape may, over time, become strongly associated with a particular brand. Design law protects the former, whereas the trademark law protects the latter. Much of the confusion in this area disappears once this distinction is understood.
This confusion is particularly pronounced in the automotive industry, where it is often assumed that the vehicle shapes are inherently utilitarian and therefore fall exclusively within the design regime. That assumption is neither legally nor factually correct. Vehicle shapes are registered, enforced and also struck down as trademarks the world over – from the Land Rover Defender and the London Black Cab, to the Ferrari 250 GTO. What decides the outcome is rarely “function”. It is the distinctiveness, added value, usage, and above all, the timing. This article first explains what each regime protects, then uses three vehicles as an illustration to show how shape claims fail, before turning what it all means, in India.
A. WHAT THE TWO REGIMES ACTUALLY PROTECT
The protection of any shape is based on two very different questions. Design law merely considers whether a vehicle’s shape is novel. If it is novel, unique, and visually appealing, it can be safeguarded, regardless of the fact that it is associated with a particular brand. However, protection is limited for the same. It is initially ten years, and it can be extended by an additional five years. This is intended to honour a new design at debut. Before the vehicle is displayed to the public, the design should be registered because early disclosure loses novelty.
The contrary is asked under the Trademark law. Does the shape reveal who the manufacturer is to consumers? A shape can be a trademark only if buyers treat it as a sign of origin, either immediately or as a result of prolonged use. However, there are three shapes, no matter how well-known they are, can never be registered[1]:
- Shapes derived from the traits of the products: Certain shapes are just the products itself. Every car has wheels and every tyre is round. Because every automaker needs tires, no manufacturer can claim that the shape of a tire is their own innovation.
- Shapes that produce a technological outcome: Certain shapes are ubiquitous because they improve the functionality of the product. Ever wondered why bodies of particularly all the cars are curved? Simply essential because of its aerodynamic drag. A car’s body form determines how readily air flows around it, and at highway speeds, a significant portion of its engine power is used to push the air out of the way.
- Shapes that significantly increase its value: The “substantial value” restriction applies where the shape or aesthetic appeal of a product is itself a major reason why people find the product attractive or desirable. For example, if people are attracted to a particular piece of jewellery mainly because of its distinctive shape or design, that shape may be considered to give substantial value to the jewellery. In such a case, the proprietor cannot simply claim the shape as a trademark and prevent others from using the design indefinitely.
| Basis | Design Registration | Shape Trademark |
| Core Test | Is the shape new and original? | Does the shape identify and distinguish the commercial source of the goods? |
| Effect of Prior Disclosure / Use | Prior disclosure destroys novelty. | Prior use establishes acquired distinctiveness and consumer recognition. |
| Functionality | No automatic bar if the designer had freedom of design. | A shape may be refused if it falls within the Section 9(3) exclusions, including technical result or substantial value. |
| Scope of Protection | Protects the visual appearance of the article. | Protects the shape as a source identifier/brand. |
| Duration & Commercial Objective | Limited protection: 10 years + 5 years. Best suited to protecting a new product design. | 10 years, subject to renewal and continued validity/use. Best suited to long-term brand protection. |
| Key Evidence & Remedies | Novelty/originality, representations, prior-art evidence; remedy primarily for cancellation of design under Section 19 and piracy of designs under Section 22. | Consumer recognition, sales, advertising and market evidence; remedies include infringement, passing off, injunctions, damages/account of profits, etc. |
B. FOUR VEHICLES, FOUR DIFFERENT REASONS FOR FAILURE
With the aforesaid points in mind, four well – known vehicles show how a shape claim actually falls, and that “function” is rarely the reason.
- Land Rover Defender (Failure on distinctiveness):[2] Jaguar Land Rover (“JLR”) tried to register the shape of the Defender as a trademark. The Application was opposed by Ineos, which was launching it’s lookalike, Grenadier. The crucial question was, whether a typical consumer would recognize the shape as that of a specific kind of car or would they instantly link it with Land Rover. The upright windshield, side windows, and roof illumination were deemed by the court to be insufficiently distinctive from those of other cars. Additionally, JLR was unable to produce sufficient proof that customers identified the shape as a brand. To put it briefly, the Defender failed not because it was practical but rather because its design was not sufficiently distinctive.
- London Black Cab (Adding substantial value to the shape): The London Taxi Corporation filed a lawsuit against the manufacturer of the competitor Metrocab which registered the designs of its Fairway and TX taxis as trademarks. The Court of Appeal declared such marks to be invalid. The court determined that the “average buyer,” which includes people who hire or ride in taxis as well as those who purchase them, would interpret the design as just the shape of a taxi and not as an indication of whose company produced it.[3] The case demonstrated that a shape must be substantially different from the typical shapes found in the market in order to qualify as distinctive. This criteria was subsequently applied against the aforesaid defender case.
Ferrari 250 GTO (A non-usage case)[4]: Since the model had not been produced since 1964, Ferrari’s shape mark for the 250 GTO was cancelled by the EU for automobiles. However, it persisted for the scale models and toys that were still offered for sale. Hence, a registered shape mark can be revoked if it is not being used for the goods it covers.
C. SIGNIFICANCE IN INDIA
Indian law functions similarly, and the same problems emerge here. A design registration, submitted prior to the vehicle’s revealing, is the reliable path at launch. A vehicle’s shape can be trademarked under class 12 of the Nice classification, but the same is harder. The manufacturer must show that people recognize the shape as belonging to that particular brand, and not merely as the shape of a particular type of vehicle. Even then, the shape must satisfy the restrictions that is placed under the Trademark Act, 1999. [5]
Accordingly, vehicle manufacturers can use different forms of protection at different stages. Trademarks, along with the additional concept of passing off and Copyright, can also be used to safeguard unique features as the brand gains recognition, whereas design registration is used to protect a new shape at launch. In reality, top automotive manufacturing companies Like Porsche, Volkswagen, Jeep, and Ferrari have adopted this strategy by combining trademark protection for unique and identifiable shape elements, along with obtaining a design protection for the novelty in their car models.
Therefore, the practical course of action for proprietors is to register the design while it is still new before disclosing it to the public. At the same time, businesses should develop evidence such as sales, advertising, and media coverage that buyers link the vehicle’s unique qualities to their brand. Additionally, the mark must also be used honestly in connection with the goods and services it is applied under.
D. CONCLUSION
A vehicle’s shape lives two lives. On the drawing board and in the showroom, it is judged for its newness, and design law rewards it for being unlike anything before it. Years later, if it has lodged itself in the public’s memory, the same shape is judged for something design law never asked whether, at a glance, it names its maker. The four vehicles here each stumbled at a different point on that journey: the Defender was never distinctive enough to make the crossing, the Vespa was too admired for its own good, and the 250 GTO simply outlived its own use. What sinks a shape claim is rarely the engineer’s hand. It is almost always a matter of timing. The proprietor who grasps that a shape must first be protected for what it is, before it can be protected for what it means, is the one who never has to choose between the two.
[1] Section 9(3) of Trademarks Act, 1999.
[2] Jaguar Land Rover Limited v Ineos Industries Holdings Limited [2020] EWHC 2130 (Ch)
[3] The London Taxi Corporation v Frazer-Nash Research & Anor [2016] EWHC 52 (Ch)