Threshold For Extending Exclusive Rights To Shape Of A Product Quite High In Trademark Law: Delhi High Court

The Delhi High Court has observed that in the law of trade marks, the threshold for extending exclusive rights to the shape of a product, is quite high.

"The shape by itself should immediately be identifiable with the source of the product. For trade mark registration of shape of a product, the same can only be granted if it has acquired a secondary meaning," Justice Pratibha M Singh added.

The Court was of the view that for trade mark registration of shape of a product, the same can only be granted if it has acquired a secondary meaning.

"Generally, the novel shape of a product which has aesthetic appeal is protectable under the law of designs, if the requisite conditions are satisfied. However, under the law of trade marks, the threshold for extending exclusive rights to the shape of a product, is quite high. The shape by itself should immediately be identifiable with the source of the product," it said.

The Court was dealing with an appeal challenging the impugned order dated 26th September, 2019 passed by the Senior Examiner of Trade Marks by which the trademark application for the registration of shape of a knitting needle in Class 26 in respect of 'knitting needles and crochet hooks' was rejected.

The application was found to be objectionable under sec. 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999 and the mark was found to be devoid of any distinctive character by the Senior Examiner.

"On juxtaposing definitions of the word 'mark' under the old and the new trade mark laws, it can be inferred that the scope and meaning of the word 'mark' has expanded over time and is no longer limited to what are commonly referred to as traditional trademarks. The law now extends trade mark protection to features such as shape of goods, packaging, sound, smell, and combination of colours amongst others, as long as they fulfil the quintessential function of trademark- 'source identification'," the Court observed.

The Court reiterated that in order for a shape trademark to be registered, it has to be shown that the said shape is not the generic shape of the product.

"It has to be a distinctive shape that associates the mark with the source by itself without anything further like a name or logo appended on it. The shape must have lost its inherent or generic meaning and ought to have acquired a secondary connotation," the Court said.

At the outset, since the Appellant wished to withdraw the appeal, the Court dismissed the same as withdrawn.

"The rejection of trade mark application bearing no. 2735618 in Class 26 in respect of knitting needles and crochet hooks, is accordingly not interfered with and is upheld. This shall however not prejudice the Appellant from seeking protection in law for a shape mark, if permissible, at a later stage, upon establishing that the same has acquired a secondary meaning and is hence distinctive," the Court ordered.

Case Title: KNITPRO INTERNATIONAL v. EXAMINER OF TRADE MARKS THROUGH REGISTRAR OF TRADE MARKS

Citation:2022 LiveLaw (Del) 678

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