What are the necessary ingredients for shape of a good to
qualify as trademark. The very genesis of trademark based on concept of
association of particular name with a particular legal entity.
In Trade and Merchandise Marks Ac 1999, shape of good was not included
to qualify as a trademark. However by passage of time, the Trade Mark Law
evolved to include inter-alia the shape of a product as a trademark. As per the
provisions of Section 2 (zb) of the Trade Marks Act, 1999, even shape of a
product has been included as a trademark.
Section 2(zb) of the Trade Marks Act 1999:
2(zb):trade mark means a mark capable of being represented graphically and
which is capable of distinguishing the goods or services of one person from
those of others and may include shape of goods, their packaging and combination
However for a shape of product to function as a trademark, certain conditions
are required to be fulfilled.
Following conditions is sine qua non for the shape
- The shape of the product should be capable of being represented graphically.
- It should capable of distinguishing the goods or services of one person from
those of other.
- The shape results from the nature of the goods themselves.
- The Shape should not be functional in nature and
- It should not give substantial value to the goods.
In Design Act also takes care of recognition of shape trademark. The
Old Design Act 1911 has been repealed and replaced by Design Act 2000. Presently
the Law pertaining to Design in India is governed by Design Act 2000. The
term Design is defined in Section 2 (d) of Design Act 2000, which is reproduced
means only the features of shape, configuration, pattern, ornament
or composition of lines or colors applied to any article whether in two
dimensional or three dimensional or in both forms, by any industrial process or
means, whether manual, mechanical or chemical, separate or combined, which in
the finished article appeal to and are judged solely by the eye; but does not
include any mode or principle of construction or anything which is in substance
a mere mechanical device, and does not include any trade mark as defined in
clause (v) of sub- section (1) of section 2 of the Trade and Merchandise Marks
Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or
any artistic work as defined in clause (c) of section 2 of the Copyright Act,
In other words the Design Act 2000 defines a Design as two-dimensional or
three-dimensional features of shape, configuration, pattern, ornament, or
composition of lines or colors applied to any article by any manual, chemical,
or mechanical ( separate or combined) industrial process or means, , which in
the finished article appeal to and are judged solely by the eye. The Design Act
2000 in India specifically excludes any mode or principle of construction or
anything which is in substance a mere mechanical device. The Design Act in India
also excludes any trade mark, property mark or any artistic work.
From holistic reading of relevant provisions of Trade Marks Act 1999
and Design Act 2000, it is apparent that for shape of a good to qualify as the
trademark, following conditions have to be fulfilled.
- It should not be functional in nature.
- It should be a shape to qualify as a Design under the Design Act 2000.
- Shape should be distinctive to the owner and shall not be because of nature of
More over , if shape of good does not aid into substantial value to the product,
other wise it shall qualify as shape trademark.
Written By: Ajay Amitabh Suman: Advocate,
Hon'ble High Court Of Delhi