India enacted the Trademarks Act 1999 and the Trademarks Rules 2002 (effective September 15 2003) to ensure adequate protection for domestic and international brand owners, in compliance with the TRIPs Agreement. Pursuant to the Trademarks Act, a trademark includes inter alia, the shape of goods, their packaging and colour combinations. Thus the shape of a good can serve a source identifying function and therefore can be an enforceable trademark. Shape of a product can be both inherently distinctive and one with secondary meaning.

A product or container shape may also be subject to a design. In 2000, Designs Act 2000 was passed (brought into force in May 2001) to meet the obligations under the TRIPs Agreement for industrial designs. Under Designs Act, 2000 a design means features of shape, configuration, pattern, ornament or composition of lines or colours applied to any ‘article’ whether in two or three dimensional forms (or both), by an industrial process or means which appeals to the eye. Thus a design should fulfill the following conditions.

  • It should be new and original,
  • Distinct from the existing designs
  • Not disclosed in public

The purpose of design registration is to protect the novel designs devised from being applied to particular articles manufactured and marketed commercially. The right to manufacture an article, granted to the holder of the design, is an exclusive right bearing the same design for a limited period of time.

Therefore the difference under the two Acts is the essential function they perform.

The Design Act essentially determines the novelty factor in the shape of a product or pattern or ornament applied to an article whereas shape of goods as trademark, applied to the product under the Trademarks Act, is to identify a particular trade origin in connection with specific goods and/or services.

The Design Act prohibits a third-party from making, selling or using a product of the protected design. To infringe a design, the infringing container and the container shape shown as the design must look alike to the eye of the ordinary observer. It makes no difference what is inside of the container. Under trademark law, the infringing container must be such as to cause confusion, mistake, or deception among the consuming public. This determination will, of necessity, take into account what is actually sold within each container as the container or shape of the product derives its indication as a source from what it holds. In addition, courts analyzing a trademark infringement action would also look at the buying habits of the consumers, and the sales methods used by each manufacturer.

The shape of a product or container can serve as a source indicator under Trademarks Act and can also be a novel design fulfilling the criteria of registrability under the Designs Act. Thus, dual protection from both design and trademark laws may coexist. The issue of conflict in the overlap of protection does not arise, as the nature of "protection" given under the two laws is different.

© Lex Orbis 2007

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