Protecting Shape of a Product: Design Registration or Shape Trademark

Shapes form a dominant feature of a product and can be presented in different forms, height, color, size to present the product through which the buyer can easily channel the idea of the product.

Thus the business needs to protect the unique identification of its product presented through a shape. The owners can obtain intellectual property registration in the Design Act or Trademark Act.
Both the acts have different provisions for protecting the shape of a product, which is discussed in this article.

Can shape be protected under the Designs Act, 2000 and the Trademarks Act, 1999?

As per the Designs Act, 2000
The design includes qualities of an article in terms of:

  • Shape
  • Configuration
  • Pattern
  • Ornament
  • Composition of lines/colors
The article can be 2d/3d, or both, and such article has been processed through industrial means 
It does not include a mere mechanical device, trademark, property mark as per the Indian penal code, any artistic work as per the copyright act.

As per the Trade Marks Act, 1999
The act provides:

A “mark” includes 

  • Device,
  • Brand, 
  • Heading, 
  • Label, 
  • Ticket, 
  • Name, 
  • Signature, 
  • Word, 
  • Letter, 
  • Numeral, 
  • The shape of goods, 
  • Packaging and combination of colors

A "trademark" means a mark:

  • That can be presented graphically,
  • That can distinguish the goods/services of one person from the others,
  • It may include the shape of goods/packaging/combination of colors.

How to distinguish the registration in the Designs Act, 2000 and the Trade Marks Act, 1999?

Both the Acts (Design Act and Trademark Act) include the shape in their core registration criteria, which might create puzzlement as to which registration shall be preferred. 

The elements provided below in regards to registration of shape can assist in distinguishing the idea of registration in both the Acts:

  • As per section 9 of the Trade Marks Act, 1999, a mark will not get registered if it consists of the shape of goods which is derived from the nature of the goods themselves; or the shape of goods which is mandatory to achieve the technical result; or the shape which gives considerable value to the goods. Mark, which lacks unique quality or might mislead the public or lead to confusion, is not liable to register under the act.  

  • Section 4 of the Design Act has mentioned that a design cannot be registered if it is not new, cannot distinguish it from already known designs, contains scandalous/obscene material, or has been revealed to the public in/outside India prior to the date of filing.

The intellectual property registration allows the business to protect its brand image and goodwill in the market. It allows them to have better access to market share through the unique identification of their product that becomes known to the customers. And it becomes easier for the shape to obtain registration where it provides considerable merit to the product.

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