Knitpro International vs. Examiner of Trademarks through Registrar of Trademarks

Introduction

Appellant “Knitpro International” applied for registration of the shape of a knitting needle in Class 26 in respect of ‘knitting needles and crochet hooks’. The image of “knitting needles” is shown herein below:

According to Sections 9(1)(a) and 9(1)(b) of the Act, the examiner rejected the application and determined that the mark lacked any unique characteristics. Angered by this decision, the Appellant filed an appeal on the grounds that the knitting needle’s shape is quite distinctive and has come to mean something else. The appellant was required by the court to demonstrate the distinguishing characteristics of the knitting needle that would allow it to qualify as a “shape mark” for registration. The Appellant did, however, withdraw this appeal.

[Image Sources : Shutterstock]

However, because the matter involves non-conventional marks, the Court has looked into it and established jurisprudence for it in order to establish a legal position on the registration of shape trademarks in India.

As per Section 2(m) of the Trade Marks Act, 1999 (‘Act’), a ‘mark’ also includes the shape of goods. Section 9(3) of the Act lays down the following grounds for absolute refusal of a shape mark, which includes the following bars:

 9(3) A mark shall not be registered as a trade mark if it consists exclusively of –

1. the shape of goods which results from the nature of the goods themselves; or
2. the shape of goods which is necessary to obtain a technical result; or
3. the shape which gives substantial value to the goods.

A shape must also overcome the grounds prelisted in Sections 9(1) and 9(2) of the Act in addition to the grounds unique to shape marks. The caveat to Section 9(1) states that an objection under that provision can be disproved by demonstrating acquired uniqueness. Significantly, a challenge under Section 9(3) of the Act cannot be defeated by proving that the mark has grown unique. As a result, under Section 9(3) of the Act, a trademark might still be rejected even after acquiring distinctiveness.

In the absence of any graphic or textual elements, customers typically do not have a habit of inferring information about the origin of products simply on the shape of the product or the package. The shape mark must meet the requirement of distinctiveness [as per Section 9(1)(a)] due to the nature of the mark in order to be registrable. Positive answers to the uniqueness question are only possible if the product can be recognised by its shape alone in the absence of packaging and a trademark. Many well-known form marks, such the 4-finger Kit Kat and the London Taxi, have perished in the international graveyard of lack of distinctiveness.

In this particular case, the court relied upon “Levi Strauss and Co. v. Imperial Online Services Private Limited”, wherein it was observed that since the definition of the mark has evolved over time, therefore, the mark can be divided into two broad categories:

1. Traditional Trademarks; and
2. Non-Traditional Trademarks.

The court emphasises whether the trade mark fulfils its fundamental purpose, which is to associate the mark with the goods or services it represents. In other words, can the consumer recognise the source of a certain design or pattern when they see it? The test of acquired meaning is comparable to the test of secondary meaning used with descriptive words, according to the court’s opinion.

In Wal-Mart Stores, Inc. v. Samara Brothers, “the court found that “for exclusivity to be awarded in the design of a product, the plaintiff must ‘always’ prove that the design has gained secondary significance in the market place and therefore could never be classed as fundamentally distinctive.”

Conclusion

A proposed to be used mark may be registered under Section 18 of the Act. At the time of filing, the applicant just must intend to use the mark; actual usage is not required. In contrast, if a registration is not used for a continuous period of 5 years and 3 months after the date of a non-use rectification application made in accordance with Section 47 of the Act, it may be cancelled.

According to a review of shape trademark applications in India, a sizable portion of them are submitted with the intention of being exploited. This ruling will make those marks non-distinctive even if they are intrinsically distinctive, and form marks will only be allowed to be registered with usage claims going forward. The Act allows for proposed to-be-used marks, which the judgement violates. Hence, regardless of assertions of inherent distinctiveness, applications filed on a proposed-to-be-used basis will now be regarded as non-distinctive. As a result, this ruling is retroactive and introduces a requirement that is against the Act. It is understandable that shape markers rarely stand out, yet that does not imply that all shapes lack fundamental distinctiveness.

Author: Tanya Saraswat, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.

References

• Sharad Vadehra, Jurisprudential aspects of “Shape mark” under Indian Trade marks law Kan and Krishme (2022), https://kankrishme.com/jurisprudential-aspects-of-shape-mark-under-indian-trade-marks-law/ (last visited Mar 16, 2023).
• SpicyIP, The shape of shape marks in India SpicyIP (2022), https://spicyip.com/2022/11/the-shape-of-shape-marks-in-india.html (last visited Mar 16, 2023).