Distinctiveness of 3D Trademarks

The scope of registration of 3D Trademark Law has been well debated across countries till date. However, it has been established that three-dimensional trademarks are said to be a peculiar subset of trade dress. Trade dress as a concept was initially associated with packaging and labelling only, however, it expanded its ambit to include the shape and design of a product as well. As established that the product has to be viewed in its entirety, trade dress represents a large aspect of the aesthetic appearance of a product. It includes the product’s total image and its features such as shape, colour, size, or colour combinations, texture, graphics, etc.[i]

The product market today faces stiff competition; if a brand doesn’t evolve itself or protect itself effectively, it will most definitely perish. Thus, making an indelible impression on the customer’s mind is one of the main targets focused on by various companies. To achieve this purpose, unique shapes and eye-catchy designs are being explored. Thus, the question arises that with innovation in the 3D representation of products, how well can the law keep pace and evolve to ensure its protection?

India has leaped to protect non-conventional marks, unlike a lot of other nations out there. Still, does that mean that applying the traditional approach to 3D appearances can assure its effective protection? Will the traditional approach allow such marks to be classified as distinct, or will it be counterproductive to its protection?

That being said, another knotty question remains how does 3D trademarks intertwine with the concept of trade dress, and how do different countries protect it?

The present article will thoroughly explain 3D trademarks in its entirety and also address some issues related to the protection of such marks.

Analysis of the Indian Position

1. Scope of registration of 3D marks in India

It is imperative to briefly discuss the conditions that determine the registration of a trademark in India. Section 2(1)(zb) of the Trade Marks Act, 1999 provides two conditions. Firstly, the mark should be capable of graphical representation. Secondly, the mark should be distinct enough to distinguish the goods and services it represents.

The abovementioned conditions imply that even the non-conventional marks must comply with these conditions. The underlying issue is that when the very nature of the marks is different, how it can comply with the traditional requirements in order to become eligible for registration.

Interestingly, India has come forward and granted protection to the shape of ZIPPO lighters back in 1996. This marks an important turn in how India is approaching its 3D trademarks.

In the Zippo Manufacturing Company v. Anil Moolchandani, Plaintiff sold lighters bearing the Zippo mark on them. Here the court granted a permanent injunction prohibiting the defendants from selling and distributing counterfeit products because Zippo had acquired registration on the 3D shape of the lighters.[ii] The court went on to rely on Gobatschow Wodka VG v. John Distilleries Ltd., where the issue raised was the shape of the bottle and owing to the uniqueness of the shape of the bottle, the court decided in favour of the plaintiff. The 3D representation of the bottle was a part of their goodwill.[iii]

1.1 Shift in the position of Trademark Law in India with respect to 3D Trademarks

Previously, three-dimensional representation of a product or shape of goods were not considered for protection under the Trade and Merchandise Marks Act, 1958. To elucidate the same, in Colgate Palmolive Company and Ors. v. Anchor Health and Beauty Care Pvt. Ltd., the defendant had argued that the plaintiff could not monopolise the shape of its product unless it is registered under the Designs Act because the 1958 Act didn’t provide protection to the shape of the goods.[iv]

The Delhi HC walked the extra mile in order to grant protection to the plaintiff’s goods. Colgate stated that their products had various distinctive features jointly and severally in terms of “shape, configuration and surface pattern”. The court decided this case by categorising the kind of customers buying the plaintiff’s products. It stated that an average and reasonable customer buys the product after considering the overall impression of the product and relates it to the source or origin. At the same time, an illiterate customer might get confused and solely buy the product because of its colour combination or shape that indicates a long-standing reputation of the plaintiff’s product. Thus, it is only fair that shape or the unconventional aspects of a product needs to be protected as they are responsible for the substantial reproduction of the product in question.[v] 

Presently, the Trade Marks Act, 1999 shows the open-minded approach of the legislature as it effectively addressed various technical difficulties that existed back in the day w.r.t the protection of trademarks.

It shall be understood that the standard of proof for the protection of unconventional marks such as 3D marks is higher than that of conventional ones. The way the judiciary has supported its protection is commendable. To further analyse the present provision with respect to the protection of 3D marks, Section 9(3) must be explained.

1.2 Purpose of Section 9(3)

Section 9 of the Indian Trademark Act, 1999 lays down the grounds for absolute refusal of trademarks from registration. Sub-section 3 exclusively caters to the shape of goods; it states that a mark is not registrable if it consists of:-

a) The shape of goods which is inherently the nature of the goods itself.

b) The shape of the goods is necessary for obtaining a technical result.

It is imperative to understand that this provision prohibits the registration of shapes that have a functional aspect to it. If the essential features of a product render a specific technical functionality, then such a shape cannot be registrable. It is well established in principle that such marks are incapable of acquiring a distinctive character. Thus, the filing of evidence also cannot help it overcome its objections.

c) The shape gives substantial value to the goods.

This provision disregards the functionality and deals with the substantial aspect of a good. It is believed that average consumers are not accustomed to presuming the origin of a product on the basis of their shape of packaging in the absence of any graphic or word element. The shape of the packaging is to be assumed as the shape of the goods itself where it is traded in the packaged form only. This stance was well discussed by ECJ.[vi] A good example would be beverages, cleaning fluids etc. Another example would be the shape of an ornamental lamp will attract objection under Section 9(3) (c) because its shape adds a substantial value to the product itself by contributing to its attractiveness.

A distinctive shape of goods (3D object) that can be represented graphically can be entitled to registration. The simple purpose of this provision is to keep the basic shapes of goods free for public utilisation. It won’t make much sense to register such shapes as it would disrupt the flow of goods to the general public, and such shapes shouldn’t be allowed to be monopolised.

To gain an international perspective on the distinctiveness of 3D marks, in Proctor and Gamblev. OHIM, the European Court of Justice, rejected the appellant’s stance. They claimed that the marks were distinctive because the product was a new concept in itself and that no similar dishwasher tablets were around at the time.

Taking reference from its decision in the Henkel case and stated that “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 any distinctive character”.[vii]

To interpret the same, the fact that claims related to functionality and the technical result of the shape of 3D goods had been questioned even when the application proceeded under the Patents law. It attracted objection under Section 9(3) (b).

2. Registrar’s course of action in case of 3D marks

Under Rule 29(4) of the Trade Mark Rules, 2002, it is laid down that the Applicants of a trademark are required to clearly and concretely mention that the application is for a shape mark. It is important for them to do so because otherwise, the Registrar will have to enquire into whether it is seeking a shape mark or not.

Rule 29 also stipulates that Applicants are required to provide one reproduction of the mark in Black and white. The reproduction furnished must accompany three different views. The registrar needs to see all the features of the 3D mark; if not, then he/she can call upon the same to be furnished within two months.

3. The Ferrero Rocher Conundrum

In 2019, the IPO of Singapore declined the grant of a 3D trademark to Ferrero Rocher. Ferrero had applied to protect the unique packaging of their chocolate balls as a 3D mark. However, IPOS declined, stating a lack of distinctiveness. The IPOS stated in its order that Ferrero was unable to show that its mark had acquired uniqueness of its own. Furthermore, it was determined that customers don’t solely associate the packaged chocolate with Ferrero Rocher only without it even bearing the sticker. The IPOS concluded that it was merely a decorative aspect and shall not be entitled to the protection of the same.[viii]

However, India has taken a positive stance; the Delhi HC awarded damages to Ferrero when a Chinese manufacturer infringed their trade dress. The Court considered the plaintiff’s arguments, and Section 2(1)(zg) r/w Section 11(6) of the TM act, 1999 led the court to decide in favour of Ferrero.

Comparative Analysis of 3D Trademarks across Jurisdictions

Japan

Japan only protects those marks that appeal to the visual sense. Thus, unconventional sports like sounds, smells, holograms and flavours etc., are deemed to be not protectable under their Trademark Law. However, 3D marks can be protected.

Principles of three-dimensional trademarks: in order to approve 3D marks as trademarks, an examination needs to be conducted regarding their distinctiveness. Marks consisting solely of a 3D shape of goods or packaging and the shape is an indispensable part of the main functions of the goods are deemed to be not registrable.[ix]

United States

Section 43(a) of the Lanham Act has provided protection to shape marks. Section 43(a) protects both registered and unregistered marks. It goes beyond the concepts engraved under the common law of “passing off” and “unfair competition”.[x]

For trade dress to gain protection U/s 43(a), it must be inherently distinctive or have acquired secondary meaning.

Inherently distinctive: this aspect of a trade dress identifies the source of a product “due to its intrinsic nature.”[xi] The essential characteristic of inherently distinctiveness is that a buyer will immediately rely on trade dress to distinguish the product from its competing manufacturers.[xii]

Secondary Meaning: it is possible that the ground of inherent distinctive of a 3D representation is lost on other issues such as failure to identify the source. In the Foamation case, the court held that Green Bay Packer cheesehead was entitled to protection under the concept of trade dress because the public didn’t associate it with the source itself. The product must acquire secondary meaning for it to be protected as a trade dress.[xiii]

The Examination Process on distinctiveness: The United States has a transparent system of functionality analysis in order to determine the registration of a trade dress. If it is non-functional, then distinctiveness has to be determined by the examiner. Similarly, if the product is “de facto” functional, the examiner determines its inherently distinctiveness or secondary meaning.[xiv] However, the “de jure” functionality of a product cannot be registered as a trade dress.[xv]

Other Countries

In a paper by IPO International Trademark Law and Anti-Counterfeiting Committee on shape marks, various countries such as Argentina, Nigeria, Australia etc.[xvi]

In Argentina, Portugal, Australia, Singapore, Taiwan and New Zealand stated that shape marks can be protected in their country, but it almost always faces difficulty. Whereas in Nigeria South Africa, there lie no express provisions to protect 3D marks. Proprietors desiring to register shape marks are advised to move under the Industrial design or patents law.

The Australian contributor stated a valid point that 3D marks face difficulty during registration because the Registrar has to determine the distinguishability of the shape marks. In most applications, the shape was either as a result of its functionality or just inherent in its nature; thus, due to lack of novelty, they were rejected. Few products such as Tiffany’s box was granted protection based on their unique shape and colour.

While commenting upon the use of shape marks, it was stated that it is difficult to discern general guidelines on the use of shape marks as there are none. However, it was clear that “Registrar will regard a Shape Trade Mark as unused where dominant shape features of the Shape Mark are present in use but are not included in the representation as filed”.[xvii]

Even if a product has acquired distinctiveness over a long period of time, regular shapes and attributes alike will not be granted protection.[xviii]

Conclusion: It is abundantly clear that the tangibility of 3D marks is the main point of contention. Thus, it invites various questions as it cannot be treated in a similar manner by the trademark law that governs 2D elements of a mark. There are three aspects that can be concluded from the above discussion; all these countries have a more or less uniform approach towards what can be classified as distinct 3D marks. The grounds for refusing a shape mark are almost similar in the countries perused above.

Moreover, it is understood that when applications related to 3D trademarks are dealt with by the Registrar, he has to check whether products are distinguishable from others by virtue of their shape, well-known reputation due to that particular shape or its packaging.

Another observation to be made is that courts look at public reception of the shape mark, trade dress or product in general. If the shape or its packaging is interlinked with the good itself and the Public perceives the product by virtue of its shape, then it plays a pivotal role in granting the trademark.[xix] All these factors contribute to whether the shape of a product facilitates its distinctiveness or not.

India is very much at par with the international standards established so far for the protection of 3D marks. However, what it needs is a clearer set of guidelines that would dictate Registrars to look at marks in their entirety and not get lost in its details.

References: [i] Two Pesos Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 (1992)

[ii] Zippo Manufacturing Company v. Anil Moolchandani & Ors, 2011 (48) PTC 390 (Del)

[iii] Gorbatschow Wodka KG v. John Distilleries Ltd., 2011 SCC OnLine Bom 557

[iv] Colgate Palmolive Company and Ors. vs. Anchor Health and Beauty Care Pvt. Ltd.,

[v]https://www.inta.org/wp-content/uploads/public-files/advocacy/committee-reports/INDIA-NTM-case-laws-2000-2020.pdf

[vi]Proctor and Gamble v. OHIM, C-383/99 P

[vii] Henkel v. OHIM, Joined Cases C-456/01 P and C-457/01 P

[viii] Ferrero Spa v M/s Ruchi International (CS(COMM) 76/2018), Delhi High Court.

[ix] https://www.wipo.int/export/sites/www/sct/en/comments/pdf/sct17/jp_1.pdf

[x] Supra Note 1

[xi] Ashley Furniture, Inc. v. SanGiacomo N.A. Ltd., 187 F.3d 363, 366 (4th Cir. 1999); Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 378 (2d Cir. 1997)

[xii] Insty*Bit v. Poly-Tech Industries, 95 F.3d at 673.

[xiii] Foamation, Inc. v. Wedeward Enterprises, Inc., 970 F. Supp. 676 (E.D. Wisc. 1997)

[xiv] Examining Manual, § 1202.02(a)(i)(B) (1997)

[xv] In re Morton-Norwich, 213 U.S.P.Q. at 15-16

[xvi] https://ipo.org/wp-content/uploads/2015/06/IPOShapeTrademarks.pdf

[xvii] Cadbury Schweppes Proprietary Limited, Effem foods Pty Ltd v Société des Produits Nestlé S.A., [2003] ATMO 74

[xviii] Multix Pty Ltd [2004] ATMO 51

[xix]https://www.khuranaandkhurana.com/2020/01/28/the-multidimensional-question-of-3-dimensional-trademarks/#_ftn1

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.