Shape Of Goods Trademark Disputes India.
I. INTRODUCTION: SHAPE OF GOODS AS TRADEMARK
A shape of goods can function as a trademark if it serves as a source identifier and distinguishes the product from others in the market.
Legal Basis:
Section 2(1)(zb) of Trade Marks Act, 1999: Defines trademark broadly, including “shape of goods”.
Section 11(1) & 11(2): A mark must not be devoid of distinctive character.
Section 9(1)(b): Shapes necessary to obtain a technical result or giving substantial value are not registrable.
Key Principle:
Shape marks are protected only if they have acquired distinctiveness and are not purely functional.
Challenge:
Courts must balance functional utility vs distinctive character.
Ordinary shapes (bottle, chocolate bar, packaging) may not be protectable unless they are distinctive or have acquired secondary meaning.
II. PRINCIPLES ESTABLISHED IN SHAPE OF GOODS TRADEMARK DISPUTES
Non-functionality test: Shape marks cannot be purely functional.
Distinctiveness: Must be capable of distinguishing the goods of one trader from another.
Acquired distinctiveness: Even ordinary shapes may qualify if consumers associate the shape with the brand.
Likelihood of confusion: Shape may be protected if copying causes deception or confusion.
III. CASE LAWS: DETAILED EXPLANATION
Case 1: Cadbury UK Ltd. v. Neeraj Food Products (2007, Delhi HC)
Facts:
Cadbury claimed that Neeraj Food’s chocolate “Choco Treat” had a shape and packaging similar to Cadbury Eclairs/Perk.
Judgment:
Court held:
Overall shape and appearance of the chocolate could be protected if it creates a distinct commercial impression.
Injunction granted for deceptively similar shape.
Significance:
Shape of the product can be a trademark if it conveys brand identity.
Case 2: Cadbury UK Ltd. v. ITC Ltd. (Bournvita Tin Case, 2007)
Facts:
Cadbury claimed that ITC’s Bournvita tin shape copied Cadbury’s distinctive tin design.
Judgment:
Court emphasized:
Shape is protectable if it has distinctiveness and is recognized by consumers.
Mere functional shape (cylindrical tin) is not protectable, but Cadbury’s unique contours were distinctive.
Significance:
Functionality cannot be monopolized; distinctiveness is key.
Case 3: Dabur India Ltd. v. Colgate Palmolive (2003)
Facts:
Dabur claimed that Colgate’s toothpaste bottle shape copied Dabur’s distinctive contour.
Judgment:
Delhi High Court held:
Ordinary shapes of toothpaste tubes are functional, cannot be trademarked.
No distinctive secondary meaning proven → no infringement.
Significance:
Marks that are purely functional cannot enjoy protection.
Shape must have secondary meaning or non-functional distinctiveness.
Case 4: Reckitt & Colman of India Ltd. v. Borden (1990, SC)
Facts:
Dispute over distinctive lemon-shaped bottles used for cleaning products.
Judgment:
Supreme Court:
Shape of goods can be protected if it creates commercial impression and identifies the source.
Non-functional, distinctive shapes qualify as trademarks.
Significance:
Landmark case establishing shape marks protection in India.
Case 5: ITC Ltd. v. Crown Industries (1995)
Facts:
ITC alleged Crown Industries’ biscuit tin shape copied ITC’s distinctive packaging.
Judgment:
Court:
Shape of tin is protectable if it has acquired distinctiveness and is not necessary for function.
Ordinary tin shapes cannot be monopolized.
Significance:
Emphasized secondary meaning and non-functionality as tests for protection.
Case 6: Hindustan Unilever Ltd. v. Reckitt Benckiser India Ltd. (2010)
Facts:
Dispute over bottle shape of detergent product.
Judgment:
Delhi HC:
Bottle shape is protectable only if it creates unique brand identity.
Functional shapes serving only technical purpose are not protectable.
Significance:
Reinforces functionality vs distinctiveness principle.
Courts protect consumer association with shape rather than shape itself.
IV. JUDICIAL PRINCIPLES FROM THESE CASES
| Principle | Explanation | Example |
|---|---|---|
| Non-functionality | Shape must not be dictated by technical necessity | Toothpaste tube (Dabur v Colgate) |
| Distinctiveness | Shape must distinguish goods of one trader | Lemon-shaped cleaner (Reckitt & Colman) |
| Acquired secondary meaning | Consumers must associate shape with the brand | Chocolate shapes (Cadbury) |
| Overall impression | Court looks at entire look and feel, not minor differences | Biscuit tins (ITC v Crown) |
| Likelihood of confusion | Shape copying leads to deception → infringement | Chocolate brands (Cadbury v Neeraj) |
V. CONCLUSION
Shape of goods can be a trademark in India, but only if it:
Is distinctive or has secondary meaning.
Is non-functional (not dictated by technical necessity).
Can identify the source of goods to consumers.
Courts consistently apply a dual test: functionality vs distinctiveness.
Ordinary or functional shapes (bottle, tube, tin) cannot be monopolized, but unique, brand-associated shapes enjoy protection.
Consumer perception and commercial impression are central to judicial analysis.
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