Choosing between Design and Trademark Protection for Shape of Goods

The stiff competition in the market compels businesses to roll out products with distinctive variations to stand out. One way to do this is the adoption of unique trademarks to help consumers distinguish between the origins of different goods. However, the quest to create differentiating factors in products is not limited to trademarks alone. Some proprietors also adopt unique designs, configurations, etc., to attract more eyeballs in the market. The distinct shape of goods is another way to help customers differentiate your brand’s products from the rest. The Indian IP law allows companies to register and protect the unique shape of goods or packaging. But brands are often confused about whether to go for trademark protection or a design patent to safeguard such innovations.

This article discusses the scope of protection for the shape of goods under trademark and design laws, the overlapping nature of design and trademark protection, and the better option between the two.

Scope of Protection under the Trade Marks Act, 1999 and the Designs Act, 2000

The statutory laws for designs confer exclusive rights over only the features of shape, configuration, pattern, ornament, or composition of lines or colors when applied to articles in two-dimensional or three-dimensional forms. On the other hand, the trademark law protects any “mark” consisting of a device, brand, label, heading, ticket, name, word, signature, letter, numeral, shape of goods, packaging, or combination of colors.

This safely suggests that under the Designs Act, the protection granted concerns the overall aesthetic appeal of an article, which is solely judged by the eye. On the contrary, the Trade Marks Act protects marks that can be visually represented and differentiate the owner’s goods and services from those of competitors.

Deciphering the Overlap Between Design and Trademark Protection

The overlap between the protection granted by both laws greatly stems from their definitions. The differences between the two are found in the application or the purpose that a particular design or trademark serves. While businesses use trademarks to act as source indicators, designs help improve the visual attractiveness of an article and make it more artistically pleasing.

It is pertinent to mention that trademarks are generally affixed and/or placed on the articles or relate to the trade dress of an article. In the cases of unconventional trademarks, such as the shape of goods, they are not two-dimensional affixations of source indicators but are three-dimensional figures. For example, the four KitKat chocolate bars or the distinct shape of Coca-Cola bottles, etc.

iconic-shape-coca-cola-bottles
Figure 1: The Iconic Shape of Coca-Cola Bottles

Designs, however, are widely used as two-dimensional affixations of unique patterns, which solely enhance the aesthetic appeal, and three-dimensional shapes of articles. Comparatively, the two-dimensional designs or trademarks do not create a critical overlap owing to two reasons:

1. It is relatively easier to differentiate between the application and purpose of 2D designs from 2D trademarks. For example, affixed geometrical shapes printed in stylized color combinations, emitting hologram effects on a packet of chips. This pattern is two-dimensional and acts as a unique design printed on the package of chips solely to add aesthetic value to the look and feel of the packet. Further, the placement of the logo or tagline of the chips brand on the package is 2D and only depicts the origin of the chips.

In layman’s terms, the design on the packet of chips and the trade dress of the packet are interchangeably understood as designs. However, the trade dress differs from the design affixed to the articles. The primary criteria for creating a unique trade dress is not aesthetic appeal but rather the unique placement of the logos or the tag lines and the specific arrangement of the different aspects of the trademark, which may or may not add any aesthetic value to the look and feel of the article.

In the above example, suppose the unique geometrical shapes creating a hologram effect on the packet of chips are removed. However, the logo, tagline, and specific placement of other source indicators on the packet still exist. In that case, the trade dress persists and can be protected by the law. Hence, it becomes relatively easy to differentiate between the application of a pattern used as a design or trade dress when applied to articles in a 2D format.

2. The Designs Act, 2000 prohibits the registration of any design capable of registration under both the Designs as well as the Trade Marks Act and has been registered as a trademark. The prohibition does not decrease the liability of overlapping legislation but reduces the chances of conflict between the two.

The main problem arises with the advent of 3D design and trademark registration. The following section discusses the same.

The Better Option: Design vs. Trademark Protection

As elucidated earlier, it is comparatively easy to differentiate between 2D designs applied to articles and designs capable of registration as a trademark. The next complexity that arises is the application of design on 3D products. Since bare eyes cannot distinguish between 3D design applied for design registration and 3D design applied for trademark registration, one has to rely on theoretical affirmations to decide between the two.

If a 3D shape design has to be registered, it is essential to note that it can gain protection under both regimes. The following test points make choosing between the two easier:

1. Faster Registration

In terms of chances of faster registration, an application under the Designs Act should be preferred.

For designs to successfully qualify for registration under the Designs Act, they should:

  • be new or novel
  • not have any prior publication
  • not already be registered as trademarks

If any design meets the above requirements, the chances of successful registration under the Designs Act increase. However, if the same design has to be registered as a trademark, then it has to first defy objections under Section 11 of the Trade Marks Act. It states that the mark to be registered cannot be identical to any prior existing marks on the Trade Mark Registry. Moreover, the design should also fulfill conditions laid down under Section 09 of the Act. It requires the proprietors to demonstrate that the shape applied for registration is distinctive and sets its product apart from others. Overcoming the objections raised under Section 09 is not impossible but somewhat more challenging as the 3D shape design must be new and novel in the market.

2. Duration of Protection

One may consider trademark registration for a longer period of protection. Trademark protection lasts ten years, and can be renewed for the next ten years till perpetuity. However, designs only enjoy protection for a total tenure of 15 years. Moreover, designs can be initially registered for ten years and renewed for another five years by submitting a renewal application. Post expiration of this period, the proprietor can no longer assert exclusive rights on the design.

3. Pressing Common Law Rights

If the 3D shape design has been registered as a trademark, then in the event of an infringement of the design, the owner can file a suit for infringement and passing off, for infringement of all aspects of the design ranging from the three-dimensional shape to the color combination and trade dress. However, this does not apply to piracy of design registrations. The primary rationale behind the same is that only those design elements that are not used as a trademark are registrable under the Designs Act. While contesting the suit for piracy of design, the contrary contestation will lead to invalidation of the design.

However, in 2018, the Delhi High Court relieved this criterion in the case of Carlsberg Breweries vs. Som Distilleries and held that a single suit could invoke claims for piracy of design and passing off. A critical point to note here is that the plaintiff must avoid using the design components as a trademark or as a larger trade dress, get-up, or product presentation.

4. Subsequent Registration in the Other Act

A persisting complexity remains in the cases where both the registrations seem equally important. It is vital to note that in contrast to the theoretical assertions made above, a particular design can be registered under both regimes in certain extraordinary circumstances. The exception, however, is only possible when a 3D shape has been registered first as a design and has subsequently become eligible for trademark registration. A proprietor can claim trademark and trade dress rights on the shape, aesthetics, and other elements of the 3D design.

The subsequent registration as a trademark is only conceivable after the 3D design has achieved substantial goodwill and recognition, and the public associates the product solely and directly with its proprietor. For example – the 3D shape of the Coca-Cola bottle has gained secondary significance and popularity amongst its customers. People associate the shape of the bottle solely and directly with Coca-Cola. Even the need for distinguishing trademark stickers is negated, and only the shape of the bottle acts as an indicator of the source.

Why You Should Choose Sagacious IP to Protect your Intellectual Assets

  • A team of 350+ technology/industry experts with in-depth knowledge of Indian and international IP laws.
  • Strong network that allows for quick and accurate communication within the Indian Patent Office.
  • Vast experience in filling and prosecuting trademark applications in India & globally. Our trademark team can assist you with the procedure and other related incidental matters.
  • Unparalleled knowledge of national and IP best practices. Over 1000 clients from 45+ countries have availed our services for a variety of technological fields, from simple inventions to complex topics in life sciences, engineering, and ICT.

Conclusion

As mentioned earlier, the conflict between design and trademark protection for a design is not that prevalent in situations involving two-dimensional aspects and features of a particular product. However, if one considers the protection of a product’s shape and the three-dimensional layout of a specific product, the difference between trademark and design law appears to be a little blurry. What must be borne in mind is that for holistic protection, one should venture to create tremendous goodwill and reputation of their design in order to achieve both the design registration first followed by trademark registration.  

Over the years, Sagacious IP has provided flawless IP solutions to over 5000 clients through 25,000+ projects. Additionally, it assists clients in maintaining exclusivity and safeguards their brand from potential infringement through its India Trademark Filing and Prosecution Service and India Design Filing and Prosecution Service. To know more, visit our dedicated service pages.

 – Maitrayee Sinha, Akash Dudhwa (IP Filing and Prosecution) and the Editorial Team

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