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The product market today is highly competitive. If a brand does not constantly evolve itself, it is at the danger of failing to satisfy its customers. To keep reinventing itself, it must ensure protection to the assets that bring value to the company. For this reason, it is important to give recognition to non-conventional trademarks, such as shape of goods, 3D marks, sound marks, smell marks, etc., through which we can identify various products and services provided by companies.A company may use traditional trademarks to distinguish itself in the market. Traditionally, trademark protection was only given to words, symbols, devices and other 2D marks. However, with the changing trends in market, non-traditional marks came into the picture. Chanel No. 5 came to be recognised by its smell, Yahoo came to be recognised by its Yahoo yodel, and Coca Cola vied to be recognised by the shape of its glass bottle.
Today, non-conventional trademarks are recognised across various jurisdictions. India, in the year 1999 remodelled its legislation and recognised non-conventional trademarks. Section 2(1)(m) of The Trade Marks Act (hereinafter, ‘the Act’)defines “mark” to include shape of goods, packaging, colour marks, etc. This blog shall focus on the legal position of the trademark regime with regard to 3D trademarks.
Ferrero Rocher Conundrum
On 19th December 2019, the Intellectual Property Office of Singapore passed an order declining the grant of a 3D trademark to the Italian chocolatier Ferrero. The company has a trademark over the word ‘Ferrero Rocher’, which it uses for its chocolate-covered praline balls. Each chocolate ball is wrapped with crumpled golden paper, has an oval sticker with the word mark ‘Ferrero Rocher’, and is seated on a pleated brown paper base. Ferrero had applied to protect thisunique packaging of the chocolate as a 3D trademark in 2013. However, in the order, IPOS declined to register the trademark stating lack of distinctiveness. It stated in its order that Ferrero had failed to show that the mark had acquired uniqueness of its own. It further stated that it has not been proven that customers would associate such a packaged chocolate solely with Ferrero Rocher without the oval sticker. In refusing to register the trademark, the IPOS reasoned that the elements sought to be protected did not make it distinctive, but could be merely looked at as decorative packaging material.
3 Dimensional Trademarks
A 3 Dimensional mark can be applied for when a product stands out in the relevant product market due to its shape or its packaging. Applications for a 3D trademark are assessed by various factors. It is not a traditional trademark, in the sense that it does not comprise 2D elements of merely words, numerals or figures. It is in fact a tangible component of the product. In the above case, the packaging of the Ferrero Rocherchocolate would constitute to be a 3D mark. Other examples may include the shape of the Coca-Cola bottle, the 4-bar shape of the KitKat chocolate, and the packaging of a Toblerone chocolate bar.
In such cases, the paramount question is whether the application mark is distinguishable from other products by the virtue of the shape, or if it has acquired a well-known reputation due to that shape or its packaging. The court does not merely look at how such products are marketed and advertised, but it looks at the public reception of the product. If the shape or its packaging has become interlinked with the good itself, and the shape/packaging reminds its consumers instantly of the good, it plays a pivotal role in granting the trademark.
Position in India
In India, the Trade Marks Act 1999 provides for certain conditions to be fulfilled for a mark to be a trademark. Section 2(1)(zb) lays down the following conditions:
- The mark should be capable of being represented graphically
- The mark should distinguish the goods or services of one person from those of others.
This implies that even non-conventional marks must comply with the above-mentioned conditions to be a trademark. The condition of graphical representation becomes of particular relevance then. Smell marks, sound marks, shape marks, colour marks must be represented graphically. Fortunately, India has always welcomed non-conventional trademarks. Indian Trademark Registry granted protection to the shape of ZIPPO lighters way back in 1996. India’s first sound trademark was issued to Yahoo in 2008. India has also developed its law to accommodate and address the concerns relating to graphical representation of non-conventional trademarks and has issued a Manual of Trademarks, Practice and Procedure in 2015 (hereinafter, the “Manual”) to aid the applicants. The Manual lists down the requirements to be fulfilled by the applicant in cases of non-traditional trademarks, including smell marks, colour marks et al, along with adhering to the requirements under Section 2(1)(zb).
3D trademarks include both shape of goods and packaging. Section 9(3) of the Act lays down that a mark shall not be registered if it consists of (i) shape of goods which results from nature of goods themselves, or (ii) shape of goods which is necessary to obtain a technical result, or (iii) shape which gives substantial value of goods.
The Manual elaborates that the purpose of Section 9(3) is to ensure that the common shape of goods does not get monopolised, and should be free for the public to use. Apart from that, Rule 29(4) of the Trade Mark Rules, 2002 lays down that when applying for a trademark of a shape mark the graphical representation must be in the form of a perspective drawing showing all features of the mark, accompanied with an accurate description of the constituent features of the mark. The Manual also provides that packaging shall be deemed to the shape of good, where the good, due to its nature, can only be traded in that packaged form.
This fortifies the argument that in India, the legal framework is such that it welcomes the registration of 3D trademarks. If a trader has applied for a shape trademark, or packaging, according to the prescribed rules and can show that the said mark distinguishes his products from the products of other players in the market, there is a positive inference that such trade mark shall be granted registration.
Will Ferrero Rocher meet a sour end in India?
While Ferrero Rocher was not granted a 3D trademark over its packaging in Singapore, the situation is entirely different in India. In the 2018 case of Ferrero Rocher v. Ruchi International, the Delhi High Court awarded damages to Ferrero, against a Chinese manufacturer for infringing its trade dress. Ferrero had relied on the recognition of ‘Ferrero Rocher’ as a well-known trademark, and had claimed that the defendant violated its trademark by copying its trade dress. The court reasoned that the similarity in the packaging between Defendant’s products and Ferrero’s chocolate infringed the latter’s rights under Section 29(5) of the Act. The court decided to accord the trade dress protection as a well-known trademark within the meaning of Section 2(1)(zg) read with Section 11(6) of the Act. An implication of this is that Ferrero Rocher now has trademark over its packaging, i.e. it has been granted a 3D trademark. Falling in line with other precedents, this judgement also gave a sweet victory to Ferrero.
The author believes that one of the most pivotal considerations in granting a non-conventional trademark is whether or not it has acquired significant distinctiveness. There must be firm evidence to show that customers can recognise the packaging without the associated word mark. Mere evidence of advertising in the packaged form cannot substantiate consumer recognition. It must also be shown that the packaging of Ferrero Rocher has in fact acquired enough distinctiveness to be regarded as a well-known trademark in the relevant product market.
Therefore, in all cases relating to 3D trademarks specifically, the following factors need to be taken into consideration:
- Whether the shape of the good is enough to distinguish it from other goods, without the aid of other word marks?
- Whether the shape of the good has been graphically represented in a perspective drawing by the applicant?
- Whether the shape of the good results from the nature of the good or to obtain merely a technical result?
- Whether the shape of the good indicates instantly to the consumer the origin of goods from that particular trader?
- What will be the impact on other traders if the shape of good is granted a trademark, i.e. if the trademark will give the trader dominance in use of a common shape?
- Whether there is evidence that the shape has functioned as a mark for a long period?
- Whether the shape has goodwill attached to it?
In granting a trademark to non-conventional marks, courts and the Trade Mark registries should consider all relevant factors to balance the interests of the trader applying for the trademark with the interests of other traders who may be using elements of such trademarks in good faith. Consumer recognition and acquired distinctiveness also becomes an important factor in granting a non-conventional trademark. Be as it may, India is gradually becoming an agreeable market for traders applying for non-conventional trademarks, and the laws in India also aide in the same which is a favourable step towards the growth of Intellectual Property.
About the Author: Anushka is a 4th Year Law student at Hidayatullah National Law University. She is keenly interested in Intellectual Property Law and International Commercial Arbitration. In her spare time, she engages herself in poetry and music. In case of any queries please contact/write back to Niharika, at firstname.lastname@example.org.
3-Dimensional Trademark Registration India, available at: http://www.trademarksindia.net/three-dimensional-trademark-registration-3-d.php
The Shape Mark Conuncdrum vis-à-vis Acquired Distinctiveness, available at: http://www.mondaq.com /india/x/612218/Trademark/The+Shape+Mark+Conundrum+VisVis+Acquired+Distinctiveness
Yahoo Awarded India’s First Sound Mark; Nokia in Queue, available at: https://www.livemint.com/Home-Page/5z2B1NQUy3YyPkpRDp789M/Yahoo-awarded-India8217s-first-sound-mark-Nokia-in-queue.html
Manual of Trademarks, Practice and Procedure in 2015, Chapter II, Serial No. 12.2.7l
Ferrero Spa v M/s Ruchi International (CS(COMM) 76/2018), Delhi High Court.