It is a general saying that A picture is worth a thousand words
. A Pictures
casts great impression on the human mind. If a picture or shape is striking,
then it lasts for a longer period of time in the memory of a man.
The basic premise of law regarding the protection of trademark is
evolved on the concept of association of particular name with a particular legal
entity. By passage of time, the Trade Mark Law evolved to include inter-alia
the shape of a product as a trademark.
Section 2(zb) of the Trade Marks Act 1999
- 2(zb):trade mark means a mark capable of being represented graphically
and which is capable of distinguishing the goods or services of one person
from those of others and may include shape of goods, their packaging and
combination of colours;
The Trade Marks Act further provides the conditions which is anti
thesis of the shape of product to be qualified as a trademark. Section 9 (3) of
the Trade Marks Act 1999 provides the absolute ground of refusal for a shape
trade mark. The same provides as here under:
- 9(3):A mark shall not be registered as a trade mark if it consists
- the shape of goods which results from the nature of the goods
- the shape of goods which is necessary to obtain a technical result; or
- the shape which gives substantial value to the goods.
From combined reading of Section 2(zb) and Section 9(3) of the Trade
Marks Act 1999, the following picture emerges regarding the shape of a product
to function as a trademark.
Following conditions is sine qua non for the shape
- The shape of the product should be capable of being represented
- It should capable of distinguishing the goods or services of one person
from those of other.
- The shape results from the nature of the goods themselves.
- The Shape should not be functional in nature And
- It should not give substantial value to the goods.
Before proceeding further it is relevant to point out here that
Design Act also dealt with the issue of Shape of a product. As per the
definition of Design Act 2000, the same is inclusive of Shape of a Product
Also. Section 2(d) of the Designs Act, 2000 defines a design as under:
means only the features of shape, configuration, pattern,
ornament or composition of lines or colours applied to any article whether in
two dimensional or three dimensional or in both forms, by any industrial process
or means, whether manual, mechanical or Chemical, separate or combined, which in
the finished article appeal to and are judged solely by the eye; but does not
include any mode or principle of construction or anything which is in substance
a mere mechanical device, and does not include any trade mark as defined in
Clause (v) of Sub-section (1) of Section 2 of the Trade and Merchandise Marks
Act, 1958 (43 of 1958) [Now Trade Marks Act 1999] or property mark as defined in
Section 479 of the Indian Penal Code (45 of 1860) or any artistic work as
defined in Clause (c) of Section 2 of the Copyright Act, 1957 (14 of 1957).
From perusal of the provision of the Design Act 2000, it is that
design means those features of shape, configuration, pattern, ornament or
composition of lines or colours applied to an article which appeal to and are
adjudged solely by the eye but it does not include trade mark as ' defined in
the Trade Marks Act. Trade mark and design are entirely different connotations.
The trade mark is put on a product to link it to its manufacturer/producer, who
may be the proprietor of the registered trade mark or who might have acquired
On the other hand, the design is merely a feature of shape, pattern,
configuration, ornament or composition of lines or colours applied to an article
to make it attractive and appealing to the eye of the consumer.
The other difference is that a Trade mark may also be attractive and
appealing to the eye but it should be directly relatable to the owner of the
goods whereas the design may be merely appealing or attractive to the eye and
need not give any indication to the consumer about the identity of the
manufacturer or producer of the article.
The basic difference between a trade
mark and design is that trade mark signals to the mind the source or identity of
the producers/manufacturer of the article whereas design appeals to the eye and
attracts the consumer/purchaser. Thus those shape which are source indicator of
the owner, are qualified as trademark, though it may or may not have the
aesthetic quality, while those shapes which are solely guided by the aesthetic
feature, irrespective of this fact whether is it source indicator of the owner
or not, are qualified as Design.
For A shape to be a Design, it is not necessary that it is
distinctive to the owner , while the for a Shape to serve as the shape
trademark, it must show the acquired distinctiveness .Normally the shape of the
good is not considered as a strong trademark. Rather it is considered as a weak
However on the basis of acquired distinctiveness, the shape of a
product can serve the function of a trade mark. But as there been various
restriction of the shape of a product to serve as a trademark, normally it is
not considered as easy to establish proprietary rights in the shape as a
In case it is found that the shape of a product results from the
nature of the goods or is functional in nature or it gives give substantial
value to the goods, then its registrations as a shape trademark can be declined
even if it has acquired distinctiveness. Reason behind imposing the tough
condition on the shape to serve as a trademark is that no one should be allowed
to create the un warranted monopoly on the shape of a product to throttle out
the healthy competitors.
The unique feature of the shape trade mark is that it is intrinsic
part of the products itself. Normally the conventional trade marks are super
imposed on the product. The conventional trade marks like Name, Label, Logo ,
packaging material, the unique wrappers etc appearing on the products are not
inseparable part of the product.
These are being affixed on the product. While
the shape trade mark of a product is inseparable part of the part of the
product. The shape of the goods is also inclusive of pattern, configuration etc.
If the product itself is a shape of the product and has aesthetic attributes,
then it serves the function of a design and is not qualified as a trademark.
Now by passage of time the Indian Courts have also started to
recognize the shape of a good as a source indicator. The Mumbai High Court, in
recent Judgment dealt with the issue of shape as a trademark. The Hon’ble Mumbai
High Court, in Vodka Case
, recognized the shape of the bottle of the
plaintiff as a trademark.
The plaintiff namely Gorbatschow Wodka filed the Suit
on the basis that the shape of its bottles of Vodka was distinctive and formed
an intrinsic part of its goodwill and reputation. The shape of bottle which the
defendant had adopted under the trademark SALUTE was alleged to be deceptively
similar to that of the plaintiff. The shape involved in dispute were as under:
The Suit was filed in which ex-parte injunction was granted. After appearing in
the matter, the defendant alleged that its products were sold under the
trademark SALUTE. The products of the defendant were sold in different colour.
The product of the defendant were to be consumed by the educated consumers.
Hence there can not be any possibility of any confusion.
The Hon’ble Mumbai High, while granting injunction against John
Distilleries Limited, the defendant therein, observed as under:
“Under the Trade Marks Act, 1999, the shape of goods is now
statutorily recognized as being constituent element of a trade mark. Section
2(zb) of the Trade Marks Act, 1999 defines the expression 'trade mark' to mean
a mark capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from those of others and to
include the shape of goods, their packaging and combination of colours
Parliament has, therefore, statutorily recognized that the shape in which goods
are marketed, their packaging and combination of colours for part of what is
described as the trade dress. A manufacturer who markets a product may assert
the distinctive nature of the goods sold in terms of the unique shape through
which the goods are offered for sale.
The shape of the bottle which the plaintiff has adopted has no
functional relationship with the nature of the product or the quality required
of the container in which Vodka has to be sold. The shape, to use the language
of a leading authority on the subject, is capricious. It is capricious in the
sense that it is novel and originated in the ingenuity and imagination of the
plaintiff. Prima facie, a comparison of the shape of the bottle which has been
adopted by the defendant with the bottle of the plaintiff would show a striking
This is not that prior to enactment of Trade Marks Act 1999, the
Indian Courts has not recognized the shape as a trade mark. In the year 1990
itself, in M.R.F. case
, the Hon’ble High Court of Delhi recognized the
pattern of a tyre as trademark. In MRF case, the plaintiff filed the suit
against the defendant, seeking the relief of permanent injunction against user
of selling auto-rickshaw tyres having prominent features of the tread pattern
similar to that of the tread pattern of the auto rickshaw tyres of the
The Court observed that the tread pattern of the plaintiff’s tyres
was essential and integral part of the tyre. The Court was of the view that
unlike a wrapper, a label or a container, the tread was not something external
to the tyre but it was an indivisible part. The Court also observed that
similarity of the tread pattern may also raise a presumption of common origin or
close business association between the plaintiff and the defendant. After
observing the possibility of similarity of tread pattern of the parties, the
Hon’ble High Court of Delhi, granted injunction in favour of the plaintiff.
In ZIPPO case, the Hon’ble High Court of Delhi restrained the
defendants from using the identical shape. This case was related to shape of
lighters. The plaintiff filed the Suit claiming itself to be world leader in
manufacture and trade of lighters, which it sells under its invented trademark
Zippo. It was alleged that important feature of the plaintiff’s lighter was the
chimney or windscreen enclosing the wick with round air holes punched into its
sides in horizontal rows of three-two-three formation. It was claimed that the
shape of the lighter as well as well as the windscreen chimney are unique and
have acquired a secondary meaning to denote the plaintiff's cigarette lighters.
The plaintiff filed the suit against the defendants as the
defendants were selling counterfeit Zippo lighters from its various outlets in
Delhi and those lighters not only bore the word mark Zippo, but also constituted
infringement of plaintiff's shape mark and were in fact verbatim imitation of
the product of the plaintiff. The Hon’ble High Court of Delhi, while grating the
relief of injunction in favour of the plaintiff and against the defendants
observed that on seeing the lighter of the defendant bearing the trademark ZIPPO
and/or on having a 3-dimensional shape identical to that of the product of the
plaintiff-company, the customer may form a bona fide impression that either this
is the genuine product of the plaintiff-company or it has been manufactured in
collaboration and/or under license from it. Accordingly the defendants were
injuncted from using the 3 dimensional Shape Trade Mark, similar to that of the
In DGT Case
, the Hon’ble High Court of Delhi was having occasion
to deal with the plea of the defendant that the design of a product can not be
used as shape trade mark. The defendant raised the argument that relief for
passing off can not be based in relation to design as shape trade mark. The
Hon’ble High Court of Delhi after relying upon para 34 of Mohan Lal case ,
The plaintiff would be entitled to institute an action of passing off in
respect of a design used by him as a trade mark provided the action contains the
necessary ingredients to maintain such a proceeding” also rejected the plea of
the defendant that no registration of a trademark in relation to the shape of
the products could be granted.
The Hon’ble High Court of Delhi further held ” It
will always be open to the Plaintiff, as long as it satisfies the Court about
the ingredients of a suit for passing off, to maintain such action.” Thus the
Hon’ble High Court of Delhi. After relying upon the Mohan Lal case, laid down
that Suit in Design of a product can be maintainable as passing off for shape
trademark , provided such passing off action contains the necessary ingredients
to maintain such a proceeding.
In Lilly ICOS Case
 plaintiff filed the suit alleging that the
Defendants has adopted the trade mark MCALIS which is deceptively similar to the
plaintiff's well known trade mark CIALIS. Also, the CIALIS Tablet Trade Dress
including distinctive yellow almond shaped tablet with inscription C20 and
distinctive CIALIS Swirl have been allegedly copied by the Defendants. The
plaintiff claimed that the same developed a unique packaging with unusual
artwork, referred to as the Cialis Swirl
The tablet sold under trademark CIALIS was given a unique and unusual shape of an almond and colour of light
yellow. In this the defendant was restrained as defendant could give no
justification whatsoever for adoption and use the deceptively similar trade mark
with the swril device as well as the trade dress of the tablet of the plaintiff,
which was also inclusive of plaintiff’s unique shape of the product.
The Hon’ble High of Delhi, in a recent Judgment Apollo Tyres
 was having occasion to deal with the tread pattern of Apollo Tyre. The
pattern of Apollo Tyre involved in the Suit was as under:
The Plaintiff namely Apollo Tyre filed this suit and sought the
relief of inter-alia the permanent injunction to against the defendant so as to
restrain the defendant from using the tread pattern claimed by the plaintiff to
be its proprietary in respect of its truck tyre Endurance LD 10.00 R20, or any
other tread pattern identical or similar therewith, in respect of their business
of importing and selling of tyres, or representing a trade connection with the
plaintiff so as to pass off, or enable others to pass off their goods/services
as that of the applicant/plaintiff. The tread pattern of parties involved in
question were as under:
In this case Vide order dated 15.09.2015, an ex-parte ad-interim
order of injunction against the defendant was passed. The defendant raised the
plea of inter-alia the tread pattern of the plaintiff to be functional and that
similar tread pattern were used by various parties. The defendant submitted The
tread in a tyre are functional and imperative to provide proper gripping and
friction. The real issue is with regard to the pattern of the treads, as the
pattern of the treads are a matter of imagination and creation.
pattern adopted by the plaintiff is certainly not the only tread pattern which
could serve the purpose, as there could be innumerable tread patterns which can
achieve the same objective. The defendant also relied upon various other tread
pattern used by various parties in the market.
The Hon’ble High Court of Delhi rejected the argument of the
defendant regarding functionality aspect , returned the finding that the unique
tread pattern adopted by the plaintiff is attributable only to the technical
result, namely, of providing grip and stability to the vehicle on which the tyre
of the plaintiff is used. The same function can be performed by any other tyre
with a different tread pattern.
The Court restrained the defendant after
observing that merely because there are multiple manufacturers of tyres in China
who may have planned to capture the Indian market by flooding their tyres with
identical tread patterns, as that of the plaintiff or other leading Indian tyre
manufacturers, is no excuse to permit the defendant to do the same.
Thus it can safely be said that the Indian Courts are not lagging
behind, in so far the recognition of rights in Shape Trade Marks is concerned.
Written By: Ajay Amitabh Suman
- Gorbatschow Wodka Kg v. John Distilleries Limited, 2011(47)PTC100(Bom)
- M.R.F.Limited v. Metro Tyres Limited, 1990 PTC 101
- Zippo Manufacturing Company vs. Anil Moolchandani and
Ors. 2011(48)PTC390(Del): 185(2011)DLT51: 2011IXAD(Delhi)661
- 2013(55)PTC271(Del) DGT Holding B. V & Anr Vs Ravi Scientific Industries
- MANU/DE/1254/2013 : MIPR 2013 (2) 156 Mohan Lal v. Sona Paint &
- Lilly ICOS LLC and Anr. Vs Maiden Pharmaceuticals
- Apollo Tyres Ltd. vs. Pioneer Trading Corporation and Ors 2017 VII AD
- Advocate: High Court of Delhi