How to Trademark a Shape?

Three-dimensional trademarks include the shape of a product or its packaging. A shape that discerns the goods or services of one business from those of other businesses can be registered as a Shape Trademark.

Prior to 1999, there was no proper statutory provision that recognized shapes as trademarks. The shape of a product was seen as its essential character warranting no protection under the Intellectual property laws. The Trademarks Act, 1999, recognized non-traditional trademarks such as the shape of the packaging and specific product shapes. Now, a Trademark Registration can be attained for any distinctive three-dimensional(3D) shapes under the Indian law.

Applicant requirement

• The applicant is under an obligation to state that the application for trademark registration is for shape trademark

• A drawing to be submitted with the application, which will show all the features of the trademark

• There shall be no discrepancy between the representation and description of the trademark. The illustration must be accompanied by a concise and accurate description of the shape mark.

• The image must contain more than one view of the trademark

• With the application, the representation of the mark can be submitted in black and white or through color photographs. The photographs submitted must be the original photos and not photocopies of an image.  

Examples of Shape Trademark in India

1. Zippo lighter

   Zippo lighter surprisingly received a registration in the year 1998, even before the statute.

2. ‘Gorbatschow’ branded vodka bottle

   “Gorbatschow’ branded vodka bottle filed for trademark certification in the year 2008.

The criterion that shape 'TM' need to fulfil

• The graphical representation of the trademark

The representation of the shape trademark must be explicit so that the registrar can identify the mark. To register a shape mark, it is necessary to make a statement of effect in the application. The shape mark application must include an accurate description of the trademark. The applicant is under the obligation of providing a suitable representation of the trademark.

• The shape must acquire distinct character

The main problem faced while registering a shape trademark is when the proprietor has to prove the inherent distinctiveness of the mark. Although currently, the trademark office does not explicitly ask for evidence showing prior use for shape trademark.

• Evidence of prior use

In current practice, showing prior use of the mark is not a prerequisite. However, if prior use is claimed in the application, the proprietor is obliged to show the proof for the same.

Conclusion

Research has shown that the shape and packaging of the product add to brand recall. Registration of shape marks has not picked up in India because it lacks precedents. Nonetheless, it can be valuable for a brand.