Delhi High Court (hereinafter “the Court”) in the case of “KNITPRO INTERNATIONAL v. EXAMINER OF TRADE MARKS THROUGH REGISTRAR OF TRADE MARKS” examined the requirements for registering a “shape mark” in accordance with the Indian Trade Marks Act, 1999 (hereinafter “the Act”). In this particular judgment, the Ld. High Court laid down jurisprudence with regard to the registrability of non-conventional trademarks such as “shape mark” in India. The Court opined that in order to protect a “shape mark” in India the same can only be granted if it has acquired a secondary meaning.
Facts of the Case
Appellant “Knitpro International” applied for registration of the shape of a knitting needle in Class 26 in respect of ‘knitting needles and crochet hooks’. The image of “knitting needles” is shown herein below:
Image from the decision
The said application was rejected by the examiner under Sections 9(1)(a) and 9(1)(b) of the Act and the mark was found to be devoid of any distinctive character. Aggrieved by this order, the Appellant appealed on the grounds that the shape of the knitting needle is very distinctive and has acquired secondary meaning. The Court asked the Appellant to show what are the distinctive elements in the knitting needle that entitle it to be registered as a “shape mark”? However, the Appellant withdrew this appeal.
Nevertheless, since the issue pertains to non-conventional marks, the Court, in order to establish a legal position regarding the registration of shape trademarks in India, has examined the issue and laid down jurisprudence for the same.
According to Section 2(1)(m) of the Act, the definition of the ‘mark’ is mentioned herein below:
(m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;
The above definition is inclusive in nature, which means that the shape of goods, packaging, sound, smell and combination of colours amongst others, can be registered as a trade mark as long as they fulfil the quintessential function of trademarks, i.e. the mark should disclose its ‘source identification’.
Further, the provisions of Section 9(1)(a) and 9(1)(b) of the Act requires that the mark should have a distinctive character in order to be registered. Thus, irrespective of the nature of the mark, it should disclose the information related to its source and has to have a distinctive character in order to qualify as a registrable mark in India.
In this particular case, the court relied upon “Levi Strauss and Co. v. Imperial Online Services Private Limited”, wherein it was observed that since the definition of the mark has evolved over time, therefore, the mark can be divided into two broad categories:
- Traditional Trademarks; and
- Non-Traditional Trademarks.
The court put emphasis on whether the trade mark performs its basic function, that is, does it identify the mark with the goods/services associated with it. In other words, when the consumer looks at a particular shape/pattern, will he/she be able to identify the source of the same? The court opined that “the test of acquired meaning is similar to the test of secondary meaning applied to descriptive words”.
The Court also considered “Wal-Mart Stores, Inc. v. Samara Brothers”, wherein it was held that, “for exclusivity to be granted in the design of a product, the plaintiff must ‘always’ prove that the design has acquired secondary meaning in the market place and it could never be classified as inherently distinctive.”
Further, the Court considered a case of the UK court, “Société des Produits Nestlé SA (Nestlé) v. Cadbury UK Ltd.”, wherein Lord Justice Kitchin opined that, “average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it may therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark. The more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of distinctive character.”
Judgment of the Court
The court thus held that “Under the law of trademarks, 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 the shape of a product, the same can only be granted if it has acquired a secondary meaning.”
Further, the Court opined 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 to it. The shape must have lost its inherent or generic meaning and ought to have acquired a secondary connotation. The standard of distinctiveness required to be acquired would be quite high.”
The protection of shape marks in India is however unclear due to the lack of suitable precedents regarding the same. Hence, the court has examined the issue in length in this particular case. Though under Section 2(1)(m), as per the definition of the ‘mark’, one can apply for the registration of non-conventional marks, Section 9(3), lays down the following grounds for absolute refusal of a shape mark:
9(3) A mark shall not be registered as a trade mark if it consists exclusively of –
- the shape of goods which results from the nature of the goods themselves; or
- the shape of goods which is necessary to obtain a technical result; or
- the shape which gives substantial value to the goods.
Therefore, in view of this, it was the need of the hour to touch upon this issue. However, according to this order, now it will be more difficult for a proprietor to get registration of its mark as a shape mark due to the high standard of distinctiveness along with its secondary meaning. Proving distinctiveness is highly difficult because if customers do not perceive the shape as a trade mark exclusively and independently, it does not qualify as a trade mark.
While arriving at this judgment, the court relied on the legal position set in US and UK. Though the criteria to examine the shape mark is liberal in those states, on the contrary, the Delhi High Court has taken a stricter route by giving the criteria that:
- Firstly, the shape ought to have acquired a secondary meaning;
- Secondly, the standard of distinctiveness required to be acquired would be quite high.
Now, the Applicants will face more challenges while registering the mark as a shape mark. In addition to passing the criteria laid down under Section 9(3) which prevents a shape mark from being generic, functional, and ornamental, this additional requirement as stated above will act as a bar to the Applicants.
In our opinion, the judgment is regressive in nature, which does not go with the spirit of the Act. On the one hand, the definition of the “mark” as per the Act has evolved and allows the non-traditional marks to be able to register, in contrast, this order puts a bar by imposing stricter tests to be passed. Now, the Applicants will have to show the mark is distinctive and has acquired a secondary meaning, which will pose a challenge to them.
 C.A. (COMM.IPD-TM) 110/2022
 CS(COMM) 657/2021 order dated 24th March, 2022
 529 U.S. 205, 120 S.Ct. 1339
  EWCCA Civ 358