India: The Shape Mark Conundrum Vis-À-Vis Acquired Distinctiveness

Last Updated: 20 July 2017
Article by Shrabani Rout

Most Read Contributor in India, December 2018

INTRODUCTION

An average consumer in India does not just recognize a product from the name embossed on the product alone. There are customers who connect more to the feel of the trademark rather than its visual appeal. They rely heavily on the color combination, packaging and sometimes even the shape of the goods to identify the product. Coming exclusively to the issue of shape marks, they were not statutorily recognized in India before the Trademarks Act, 1999 came into force. Post the enactment, a trademark under Section 2(zb) can include, interalia, the shape of goods, their packaging so long as it is possible to graphically represent the same and such shape clearly distinguishes the goods sold under such trademark from those of another manufacturer.

The first set of challenges in registering a shape mark arises when an application is made to register a shape as a trademark. From graphically representing it to proving that the shape has acquired distinctiveness, the hurdles to registration are endless. It is pertinent to mention here that shape marks are not considered to be inherently distinctive in nature. The Applicant has to prove that the shape of the mark has acquired distinctiveness and consumers rely on that to identify the Applicant.

The protection of shape marks in India, is however unclear due to the lack of suitable precedents regarding the same. However it is interesting to note that the Indian Trademark Registry granted protection to the shape of 'ZIPPO' lighters way back in 1996. Another notable instance was the registration of the shape of the famous Gorbatschow Vodka bottle which was registered in class 33 in the year 2008 for the unique shape of its bottle.

Along with the general criterion that a trademark needs to fulfill before it can be registered, shape marks are required to fulfill 3 other criterions:

  1. The shape should not result from the nature of the goods themselves.
  2. The shape should not be such that it would be necessary to obtain a technical result.
  3. The shape should not be such that it gives substantial value to the goods.

NESTLÉ VS. CADBURY - NEED A BREAK?

Recently, Nestlé's Kit Kat bar was denied registration in Europe1 when Cadbury opposed the application stating that the shape mark was not distinctive and hence could not be registered as a trademark.

The main issue before the Court was that of acquired distinctiveness. Nestlé had produced heaps of evidence stating that the four fingered bar had acquired immense popularity and distinctiveness and consumers directly associated the bar with Kit Kat.

The Indian Trademarks Act of 1999 and First Council Directive 89/104/EEC of 21 December 1988 (European Statute) have very similar provisions when it comes to the registration of shape marks and the conditions to be fulfilled by a shape mark to be considered for registration. As a consequence of the similarity between the statutes, the arguments put forth could very well be of consequence when such questions come up in any Indian case.

Before delving into the issue of acquired distinctiveness, the facts and issues raised before the Court have been stated down below:

FACTS OF THE CASE:

Société de produits Nestlé SA ("Nestlé") had filed an application on 8th July, 2010 seeking registration of a three-dimensional sign (the Kit Kat chocolate bar) with the European Intellectual Property Office (the "EUIPO") under class 30.

Cadbury Schweppes Plc ("Cadbury") objected and had claimed that the trade mark should be declared invalid on the grounds of lack of distinctive character.

The case travelled across quite a few judicial bodies, details of which are not mentioned here for th e sake of brevity. Finally after the Advocate General of the Court of Justice of the European Union ("CJEU") gave their opinion on the matter; the case had gone back to Justice Arnold in the England and Wales High Court, who concluded the matter in favor of Cadbury.2

ISSUE OF ACQUIRED DISTINCTIVENESS

The question regarding acquired distinctiveness that led Justice Arnold to his decision can be summarized as follows:

"In order to establish that a trade mark has acquired distinctive character following the use that had been made of it, is it sufficient for the applicant for registration to prove that at the relevant date a significant proportion of the relevant class of persons recognize the mark and associate it with the applicant's goods or must the applicant prove that the relevant class of persons rely upon the mark (as opposed to any other trademarks which may also be present) as indicating the origin of the goods?"

OPINION OF THE COURT AND ITS ANALYSIS

The question posed by Justice Arnold sought to determine the question of acquired distinctiveness. To determine whether the shape had in fact acquired distinctiveness, two scenarios have to be looked at. Firstly, whether the consumers use the shape to identify the company i.e. Kit Kat from Nestlé or whether the consumers rely on the shape mark to identify the company?

The Court rightly settled on the latter in deciding the question of acquired distinctiveness. Mere general recognition of the shape mark does not necessarily mean that the consumers identify it exclusively as a trademark for the company.3 The consumers might know and recognize that the shape of the mark is associated with a company but they might not rely on the mark exclusively to determine if a product belongs to the company. If the shape is not exclusively and independently recognized by the consumers as a trademark, then it fails to qualify as a trademark.

To determine if a mark has acquired distinctiveness, the relevant question to be asked is "Are consumers using the mark to identify the manufacturer in exclusion to his competitors?" If the consumers don't use the shape mark to exclusively identify the company then it cannot be considered as a trademark. While coming to this conclusion, the Court relied on the case of Philips vs. Remington4 where while deciding upon the issue of acquired distinctiveness, the Court had held that:

"the identification, by the relevant class of persons, of the product as originating from a given undertaking must be the result of the use of the mark as a trade mark and thus as a result of the nature and effect of it, which makes it capable of distinguishing the product concerned from those of other undertakings"

If the shape mark is not used as a trademark by the consumers, then it cannot have acquired distinctiveness. The Court applied the factors regarding acquired distinctiveness laid down in Philips vs. Remington and held that the consumers did not place reliance on the shape to identify the company. It instead focused on the fact that the consumer has to understand origin as a result of use of the sign in question and that sign alone.

Apart from the issue of acquired distinctiveness, Justice Arnold in the EU High Court held that the shape was functional in nature and was necessary to obtain a technical result i.e. the slab shape resulted from the nature of chocolate bars and the fingers were necessary to separate and break the product and were therefore technical in nature. Therefore the mark could not be registered in the European Union.

It is pertinent to mention here that Nestlé was successful in registering the shape in South Africa. The South African Supreme Court of Appeal held that the shape trade mark was not hit by the "technical result" exclusion, because the trade mark did not consist "exclusively" of a shape that is necessary to obtain a technical result. The court felt that, even though there were functional features to the shape, there were also non-functional features. The court also held that the four-finger shape had become distinctive through use.

CONCLUSION

The main hindrance to shape mark registration is being able to prove the inherent distinctiveness of the shape. Proving inherent distinctiveness is however not a mandate. If the Applicant can show that his mark has acquired distinctiveness, then the mark can be considered for registration. In the above mentioned case however, Nestlé failed to prove that consumers relied upon the shape of the Kit Kat bars to denote the origin. It had only proved that they recognized the shape and associated it with Kit Kat products.

However an Applicant can take the following steps to make their shapes distinctive to the consumers:

Adopting and using ''shapes'' for goods that depart significantly from the norm or customs of the sector of goods concerned - they are more likely to be deemed inherently distinctive and registrable.

Promoting the shape of their goods as identifying the trade source of the goods. By educating consumers to perceive the goods as originating from a particular business because of the shape and appearance of the goods, the same may well ''become'' a trade mark and thus should be capable of registration. Another reason why Nestlé lost to Cadbury. They failed to prove that the consumers use and rely upon the four-finger shape to denote the origin of the shape.

Obtaining evidence that, as a result of the marketing efforts, average consumers have indeed come to see the shape of the goods as indicating the trade source of the goods .They will need to prove that such persons would rely upon the shape as denoting the origin of the goods if it were used on its own.

Thus it is essential for companies wishing to trademark the shape of goods to plan their marketing strategies accordingly and make the consumers aware by educating them to perceive the goods as a trademark of the company and to rely on the shape itself to indicate origin. The current case, along with Philips vs. Remington has strongly established the use factor as a necessary factor for proving a shape mark has acquired distinctiveness.

Footnotes

1. http://www.independent.co.uk/news/business/news/nestle-kit-kat-trade-mark-denied-eu-court-four-finger-chocolate-shape-a7477196.html

2. Société de produits Nestlé SA vs. Cadbury U.K. Ltd. [2016] EWHC 50(CH)

3. Case No. CH/2014/0392

4. Koninklijke Philips electronics N.V vs. Remington Consumer Products Ltd. Case C-299/99

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions