Shape of goods & its Protection under Indian IPR Laws

The definition of trademarks contained in the Indian Trade Marks Act, 1999 includes the shape of goods, but the scope of its protection is unclear, as statutory protection for the shapes of goods was only introduced in 2003. Whether the shape of goods may be protected under the principles of design law or trademark law is also a more interesting question especially in India where the definition of “design” under the Designs Act, 2000 excludes trademarks.

A decision by the Delhi High Court provides some assistance on the seemingly overlapping protection. In Corning Inc. & Ors. v. Raj Kumar Garg & Ors., 2004 (28) PTC 257, the Delhi High Court illuminated the fundamental distinction between a trademark and a design:

“trademark” signals to the mind, the source or identity of the producer/manufacturer of the article,whereas a “design” appeals to the eye and attracts the consumer/purchaser. A “trademark” may also be attractive and appealing to the eye but it should be directly relatable to the producer/manufacturer of the goods whereas the “design” may be merely appealing or attractive to the eye and need not give any indication to the consumer/purchaser about the identity of the manufacturer or producer of the article.”

The court also held that a design protects only the features of shape and configuration. This distinction is significant in view of the inclusion of shapes in the definition of trademarks under the Act, because it may be concluded that whereas trademark law protects the shape of goods, design law merely protects the features of such shapes. With regard to the issue of distinctiveness, there is no case law in India relating specifically to shape marks. However, pronouncements on product packaging or trade dress may provide guidance on the path that the courts are likely to take when faced with such an issue.

It has been repeatedly held that the trade dress cannot be inherently distinctive and while a claim of passing off is available, the plaintiff claiming passing off has to prove that the trade dress has acquired secondary meaning or reputation in the market in relation to the trade dress. Such reputation need not be based on the use in India alone but may also be in the form of trans-border reputation of a trademark that has travelled into India from some other countries.

Such cases have also indicated that the amount of evidence establishing reputation in relation to a shape mark is required to be more than that required for a word mark.