Choosing between Design and Trademark Protection for Shape of Goods

 Businesses are forced to release items with unique variations in order to stand out due to the fierce competition in the market. Adopting distinctive trademarks to aid consumers in telling apart the provenance of various goods is one approach to do this. However, trademarks are not the only way to differentiate items from one another. To draw in more customers, some business owners also use original designs, layouts, etc. Another technique to assist clients recognise the products from your brand among the competition is by the distinctive shape of the goods. The distinctive shape of products or packaging can be registered and protected by businesses under Indian IP legislation. But when it comes to protecting such inventions, brands frequently disagree about whether to pursue trademark or design patent protection.

This article analyses the range of protection provided for product shapes under trademark and design regulations, how those two types of protection overlap, and which is the preferable choice.

Scope of Protection under the Trade Marks Act, 1999 and the Designs Act, 2000

When applied to items in two-dimensional or three-dimensional shapes, the statutory provisions for designs only grant exclusive rights over aspects of shape, configuration, pattern, ornament, or composition of lines or colours. Contrarily, any "mark" protected by trademark law can be a logo, brand, label, heading, ticket, name, word, signature, letter, number, shape of a product, packaging, or a combination of colours.

This clearly indicates that under the Designs Act, the protection given relates to an item's overall aesthetic appeal, which is determined only by the sight. Instead, the Trade Marks Act defends marks that distinguish the owner's products and services from those of rivals and can be visually depicted.

Deciphering the Overlap Between Design and Trademark Protection

Due in large part to their definitions, the laws' protections overlap significantly. The two can be distinguished by the application or function that a specific design or brand provides. While companies utilise trademarks to serve as source markers, designs contribute to an article's aesthetic appeal and creative appeal.

It is important to note that trademarks are typically attached to, put on, or associated with the trade dress of an item. Unconventional trademarks, such as the shape of objects, are three-dimensional figures rather than two-dimensional affixations of source identifiers. Take the four KitKat chocolate bars or the distinctive Coca-Cola bottle shape, for instance.

However, designs are frequently applied on objects as two-dimensional affixations of distinctive patterns that only serve to improve their aesthetic appeal. In contrast, the two-dimensional trademarks or designs do not result in a significant overlap for the following two reasons:

1. It is more straightforward to distinguish between the use and intent of 2D designs and 2D trademarks. For instance, holographic effects could be produced on a packet of chips by adhering geometric patterns printed in stylized colour combinations. This two-dimensional pattern serves as a one-of-a-kind design printed on the bag of chips in order to enhance the aesthetic appeal of the packet. Additionally, the 2D placement of the chips brand's emblem or phrase on the packaging just shows where the chips came from.

In layman's terms, the trade dress of the package and the design on the chip packet are both considered designs. The trade dress, however, is distinct from the design attached to the items. The positioning of the logos or taglines and the precise arrangement of the various elements of the trademark, which may or may not provide aesthetic value to the appearance and feel of the piece, are the main factors in determining whether a trade dress is distinctive rather than aesthetic appeal.

Consider the scenario above where the special geometrical shapes that gave the chip packet a holographic effect are gone. The logo, slogan, and precise positioning of other source identifiers on the packet are still present, though. The trade dress would then continue to exist and would be legally protected. As a result, when a pattern is applied to items in a 2D format, it becomes reasonably simple to distinguish between the application of a pattern employed as a design or trade dress.

2. Any design that is eligible for registration under both the Designs Act and the Trade Marks Act and has been registered as a trademark is prohibited from being registered under the Designs Act, 2000. The restriction lessens the likelihood of conflict between the two pieces of legislation, but it does not lessen the liability of overlapping legislation.

The introduction of 3D design and trademark registration is the key issue. The same is covered in the section that follows.

The Better Option: Design vs. Trademark Protection

As previously explained, it is quite simple to distinguish between 2D designs used on products and designs that can be registered as trademarks. The application of design to 3D items is the next complexity that develops. The distinction between a 3D design submitted for design registration and a 3D design submitted for trademark registration cannot be made with the naked eye; therefore, one must rely on theoretical confirmations.

It is important to keep in mind that a 3D form design can obtain protection under both regimes if it has to be registered. Making a decision between the two is made simpler by the tests that follow:

1. Faster Registration

An application made under the Designs Act should be favoured in order to increase the likelihood of a quicker registration.

Designs must meet the following criteria in order to be eligible for registration under the Designs Act:

1. be new or novel

2. not have any prior publication

3. not already be registered as trademarks

Any design has a better chance of being registered successfully under the Designs Act if it complies with the aforementioned standards. But in order to register the same design as a trademark, it must first overcome objections under Section 11 of the Trade Marks Act. It stipulates that a mark cannot be identical to another mark that already exists on the Trade Mark Registry. Additionally, the design must adhere to Section 09 of the Act's requirements. The owners must show that the shape they have applied to register is unique and distinguishes their product from others. While not impossible, it is more difficult to overturn the Section 09 objections because the 3D shape design needs to be brand-new and innovative.

2. Protection Timeframe

For a longer term of protection, one can think about trademark registration. The ten-year term of trademark protection can be extended indefinitely by another ten years. Designs, however, are only protected for a total of 15 years. The first registration of designs is valid for 10 years, and a renewal application might extend that registration for an additional five years. After this time has passed, the owner will no longer be able to claim exclusive rights to the design.

3. Activating Common Law Rights 

If the three-dimensional shape design has been registered as a trademark, the owner may initiate a lawsuit for infringement and passing off in the event that the design is copied in any way, including the three-dimensional form, colour scheme, and trade dress. This does not, however, apply to the theft of design registrations. The main justification for this is that under the Designs Act, only design components that are not utilised as trademarks are registrable. Contrary contestation will result in the design's invalidation while fighting the claim of design piracy.

However, in the case of Carlsberg Breweries v. Som Distilleries, the Delhi High Court lifted this restriction in 2018 and ruled that claims for design piracy and passing off could be brought in a single lawsuit. The plaintiff must refrain from using the design elements as a trademark or as part of a wider trade dress, getup, or product presentation.

4. Later Registration under the Other Act

In situations where both registrations appear to be equally significant, there is nonetheless a persistent complexity. It's important to remember that, contrary to the theoretical claims mentioned above, a specific design can be registered under both regimes in some exceptional situations. The exception, however, can only be made if a 3D shape has first been registered as a design and then has earned the right to be registered as a trademark. On the form, appeal, and other aspects of the 3D design, a proprietor may assert trademark and trade dress rights.

Only until the 3D design has gained considerable goodwill and recognition and the public has come to exclusively and directly link the product with its owner is the subsequent registration as a trademark viable. For instance, the 3D design of the Coca-Cola bottle has become more and more popular among its consumers. People only and specifically connect Coca-Cola with the bottle's shape. Only the bottle's shape serves as a source identification, negating even the necessity for distinctive brand stickers.

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To get more information, read the entire article about Trademark Protection.