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A lot has already been written about trademark registration in India and what can be a trademark. But today we will discuss about how to get a particular shape of goods to be protected under trademark law in India.
As a reminder we must be clear that EVEN shape of goods, holograms etc can be protected as trademarks.
But how to get them registered, yes there exists some guidelines that we need to keep in mind before filing for such a trademark for registration.
Primary requirement for protecting a shape of the good to be a trademark is:
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It is to be capable of 2D or 3D clear pictorial representation.
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It must be capable of distinguishing itself from the other products and goods already existing in the market.
In addition to the generic criteria for trademarks, shape marks have to satisfy some specific criterion in order to be eligible for use as a trademark. To start with It must not claim any inherent feature of the good. (Such as nature of goods, value of goods and technical result.
Now let us proceed about how to identify the above mentioned points and what is the test to possible mistakes in registration.
What is the test for Nature of Goods?
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This basically means that the shape mark shall not result from the very nature of the goods. Suppose you going to protect a bottle shape and it is evident that a bottle has a base, neck and cap area. This is something what every bottle has so you cannot file for a shape of the bottle as a trademark until and unless its shape is really distinct. For example shape of coke bottle is strikingly different from ordinary bottles available in the market hence its shape can be very well protected under trademark act.
Now, how to know what is distinct or not?
The distinctive features of a shape are analyzed based on the presumed reasonable knowledge of the general consumers or how a common man is able to distinguish or perceive the shape in question.
What is Technical Result?
Let us understand it by taking an example, suppose you want to trademark a shoe design or shape. Now a shoe comprises of various parts including lace, sole base etc.
The sole of the shoe in any shoe is always more or less same, no matter how many number of variations exists in shoe design across the market.
Hence, one cannot claim a trademark over the sole of shoe as it is something which is inseparable part of every shoe and also it is a technical result of shoe manufacturing.
Value of Goods
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The shape should not be such that it gives substantial value to the goods. This criterion has been put in place to safeguard other manufacturers of similar goods who may lose out on the value of their goods if the shape being registered is essential part of the product completion process and adds an element of value to the finished goods in terms of design or outward appearance. This criterion is determined based on an analysis of the shape being registered and the shape of other equivalent goods.
Procedural requirements for the filing of shape marks as trademarks as listed in The Trademark Rules, 2002 includes:
• The applicant is required to file a written description of the shape which he /she intend to use as a trademark.
• This written description shall be accompanied with a two dimensional graphic or photographic representation of the mark representing the shape from various angles.
• In case the registrar is not satisfied with the detail in the application, the applicant may be asked to present the mark in five additional angles of viewing and a further details regarding description of the shape mark;
• In the case where the registrar is still not satisfied with the application, the applicant maybe asked to submit a specimen of the shape along with the application.
Getting your Product as a trademark registered can be very useful and pivotal your brand. Expert advice and guidance can help you secure one with ease.
