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An analysis of the interplay between Designs & Trademarks

Shubham Mathew George – Associate

Introduction:

In the complex landscape of intellectual property rights, the protection of product appearance presents a fascinating legal paradox in India. The same product shape can potentially receive protection through two distinct legal regimes: as a shape mark under the Trademarks Act, 1999 and as a registered design under the Designs Act, 2000. While both regimes can potentially protect the visual appearance of products, they differ fundamentally in their underlying rationale, requirements, and most significantly, duration of protection.

This divergence in duration creates a particularly interesting tension: design registration offers a limited monopoly of 10 years (extendable by 5 years), while trademark protection can potentially last in perpetuity through renewals every 10 years. This stark contrast raises a critical question: Can the trademark system be strategically used to circumvent the deliberately limited monopoly granted by design law?

The issue is not merely academic. As businesses increasingly recognize the commercial value of product appearance, the strategic use of intellectual property rights to protect these assets has become more sophisticated. The potential for using shape marks to extend protection beyond the maximum 15-year period provided by design law represents a significant challenge to the careful balance struck by the Indian intellectual property system.

This article critically examines this potential ambiguity, analyzing the statutory frameworks, judicial interpretations, and policy considerations that govern the intersection of trademark and design protection in India. By exploring this issue, we aim to contribute to the ongoing discourse on balancing innovation incentives with public access to designs, to identify the correct/ethical strategy to extend protection of a product design and to identify potential solutions to prevent the misuse of shape marks to extend design monopoly.        

The Intellectual Property India Framework: Understanding the Dual Protection System:

Intellectual property rights are territorial in nature, and India has developed its own comprehensive framework through various statutes, including the Trademarks Act, 1999 and the Designs Act, 2000. These laws, while aligned with international standards following India’s accession to the TRIPS Agreement, reflect India’s unique approach to balancing private rights with public interest.

The individual and independent protection offered under the two acts cater to two very different forms of intellectual property. Design serves to protect the visual aspect of a shape or composition of lines or colors which is capable of being industrially applied to an article and reproduced, while Trademark is aimed at protecting the marks used in the course of Trade by businesses to identify their goods and services, however when the same is extrapolated to secure registration for product or packaging appearance, or design constituting the shape of a product, or packaging of the product, popularly termed as ‘Trade-Dress”, it creates an interesting overlap that is not fully addressed in the legislation. While the Trademarks Act and the Designs Act serve different purposes and protect different aspects of intellectual property, they can simultaneously apply to the same subject matter – the shape or appearance of a product. The only real bar between the two being the individual requirements by the respective acts. Design needs to be industrially applicable, visually appealing and is barred by lack of novelty (i.e. new or fresh) or originality (i.e. originating from the author)(‘which in essence means that even designs which are old and not new but are new in their application would qualify as original’) or public disclosure of the design as envisaged under Section 2(d) and Section 4 of the Designs Act, 2000 per contra Trademark needs to be capable of being represented graphically, capable of distinguishing the cognate goods and not being merely descriptive in nature of the concerned goods as envisaged under Section 2(1)(zb) and Section 9 of the Trademarks Act, 1999. The peculiarity here being that even though Design registration bars or excludes Trademarks from its purview, there is nothing in the Trademarks Act barring a Design from its ambit. As Trademark inherently can be inclusive of the design and shape of goods, which in concept is further expanded in scope through the concept of “Trade-Dress” which can implicitly include a product design, shape and packaging which broods the overlap which happens to be the pivot for this treatise. This overlap creates both opportunities and challenges for businesses and litigants alike.

The intellectual property India framework reflects a careful balance between providing adequate protection to creators and innovators while ensuring that these rights do not unduly restrict competition or public access. This balance is particularly evident in the temporal limitations imposed on various intellectual property rights, with patents and designs having limited terms while trademarks can potentially last forever as long as they remain in use.

Trademark Protection India: Legal Framework for Shape Marks

Trademark protection India extends beyond traditional word marks and logos to include unconventional marks such as shapes, and colors. The legal framework for shape marks in India is primarily governed by the Trademarks Act, 1999, which explicitly recognizes shapes as registrable marks.

Key Provisions of the Trademarks Act 1999 for Shape Marks

Section 2(1)(m) of the Trademarks Act 1999 defines a “mark” to include “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.” This inclusive definition provides the statutory basis for shape mark protection in India, explicitly recognizing that the three-dimensional form of goods can function as a trademark.

However, the Act also establishes important limitations on shape mark registration. Section 9(3) specifically addresses shapes, stating that a mark shall not be registered if it consists exclusively of:

• the shape of goods which results from the nature of the goods themselves; or E.g. Pasta spaghetti or general noodles are a viable example of goods that derive their shape from their production process.           
• the shape of goods which is necessary to obtain a technical result, E.g. Lego bricks, common paper clips where the shape is necessary for their technical function.

 or

• the shape which gives substantial value to the goods. E.g., Sugar Cubes – the cube shape makes the product substantially more expensive than regular or powdered sugar. Artisanal chocolates or candies shaped like a particular animal or character making them significantly pricier than their regular variants. Radial Tyres offer better grip, stability and fuel efficiency to the Vehicle due to their advantageous shape which provides the intrinsic value.

These exclusions serve as important safeguards against the inappropriate monopolization of functional or necessary product shapes. They reflect the fundamental principle that trademark law should not be used to protect functional features of products, which are more appropriately protected (if at all) through the patent system.

Requirements for Shape Trademark Registration in India

The process of trademark registration India for shape marks is particularly rigorous, reflecting the cautious approach taken by the Indian Trademark Registry and courts toward three-dimensional marks. Beyond the standard requirements applicable to all trademarks, shape marks face additional hurdles:

• Distinctiveness: Like all trademarks, shape marks must be capable of distinguishing the goods or services of one undertaking from those of others. However, for shape marks, this often requires demonstrating inherent distinctiveness along with acquired distinctiveness through extensive use and consumer recognition, as shapes are rarely inherently distinctive. E.g., The Distinctive tear drop shape of Hershey’s Kisses is a unique brand identifier.
• Non-functionality: The shape must not be functional or necessary to achieve a technical result. This requirement prevents trademark law from being used to protect functional innovations, which should instead be subject to the limited term of patent protection. E.g., The shape of the Calcium Sandoz bottle – The visage of a dog sculpted on the bottle was one of its kind. Distinctive but was purely visual and served no functional purpose.
• Not Substantially Value-Adding: The shape must not give substantial value to the goods. This prevents trademark protection for shapes that are valued primarily for their aesthetic appeal rather than as indicators of commercial origin. E.g. The hyperbolic paraboloid shape of Pringles Potato chips which is distinctive and functional in nature but doesn’t add any substantial value.

The threshold for shape trademark registration is deliberately high, reflecting the potential anti-competitive effects of granting potentially perpetual protection to product shapes. The Indian Trademark Registry and courts have generally taken a conservative approach to shape marks, requiring substantial evidence of acquired distinctiveness before granting registration.

In the landmark case of Zippo Manufacturing Company vs. Anil Moolchandani and Ors. (31.10.2011-DELHC)[1]:, the Delhi High Court emphasized that for a shape to function as a trademark, consumers must recognize the shape itself as indicating the product’s commercial origin, independent of any word marks or logos applied to the product. This high standard ensures that shape mark protection is limited to truly distinctive product shapes that genuinely serve as source identifiers in the marketplace.

Design Protection India: Scope and Limitations Under the Designs Act:

Duration and Renewal Under the Designs Act 2000

Designs Act excludes traditional Trademarks from its ambit through Section 2(d) which defines what constitutes a Design and Trademarks as defined under Section 2 (1) (zb) and any Artistic work as defined in Section 2 (c) of Copyright Act are specifically excluded. One of the most significant aspects of the Designs Act 2000 is its deliberate temporal limitation on protection. Section 11 of the Act grants an initial period of protection of 10 years from the date of registration. This period may be extended for a further period of 5 years upon application and payment of the prescribed fee before the expiration of the original period.

This maximum 15-year protection period reflects a careful legislative balance between rewarding designers and ensuring that designs eventually enter the public domain to foster further innovation. Unlike trademark protection, which can potentially last in perpetuity as long as the mark remains in use, design protection is deliberately time-limited.

The rationale behind this limitation is clear: designs, like other forms of intellectual property such as patents and copyrights, are granted limited monopolies to encourage innovation and creativity. After this period, the design should enter the public domain, allowing others to build upon it and further advance the field. This approach balances the private interests of designers with the public interest in accessing and building upon existing designs.

Rationale Behind Design Protection Limitations in India

The design protection limitations in India reflect several important policy considerations:

• Balancing Innovation and Competition: By limiting the duration of protection, the law encourages initial innovation while ensuring that designs eventually become available for others to use and build upon, fostering healthy competition.
• Preventing Perpetual Monopolies: The temporal limitation prevents the creation of perpetual monopolies over product designs, which could stifle innovation and restrict consumer choice.
• Recognizing the Nature of Designs: Unlike trademarks, which serve primarily to identify the source of goods or services, designs are aesthetic creations that enhance the appearance of products. Their protection is more akin to copyright or patent protection, which are similarly time-limited.
• International Harmonization: The 15-year maximum protection period aligns with international standards, including the Hague Agreement Concerning the International Registration of Industrial Designs, though India is not yet a member.

The registration requirements under the Designs Act focus on novelty and originality rather than distinctiveness or source identification. A design must be new or original, not previously published in India, and significantly distinguishable from known designs or combinations of known designs. Unlike trademark law, design protection does not require proof of consumer recognition or acquired distinctiveness.

Overlapping IP Rights: The Contradiction Between Trademark and Design Protection:

The concept of a Design under the Designs Act could be of any shape or composition as long as it has visual appeal and is capable of application to 2d or 3d articles through an industrial process barring any Trademark as defined under Section 2 (1) (zb) of the Trademark Act. However, this definition leaves a lot of gaps and holes in its structure when scrutinized. As per the definition of a Trademark as given under Section 2(1) (zb), a Trademark is a mark capable of graphical representation and distinguishing the goods of a proprietor. The conundrum is that any shape or composition of colors or lines having visual appeal capable of being applied to an article can be graphically represented bringing it under the definition of a Trademark as long as it is capable of distinguishing a person’s goods. The AP High Court had clarified and opined in Ampro Food Products Vs. Ashoka Biscuit Works and Ors. (26.09.1972 – APHC)[2]: A design is necessarily part and parcel of the article manufactured, while a trademark is necessarily not so. Thus, the label to be put on a carton to be used as a container for the goods can never amount to design within the meaning of Section 2(5) of the Designs Act,1911.

Even though the Hon’ble High Court’s clarification resolves the conflict/overlap to some extent but in hindsight this conundrum is further exacerbated by the shifting dynamics of Trademark law, Trademark conceptually, in the new age has expanded much further than the Traditional concept of it, that was prevalent 30 years ago. The concept of a Trademark now effectively encapsulates not just the Label or the brand name, it comprises of the packaging, the shape of the product, the shape of the package or the color combination thereof. Therein arises another conundrum which is, the prima-facie exclusion of Trademarks from the definition of Design pokes further holes in the confounding legislative attempt at distinguishing the two through the said definition. If Trademarks as they are defined under Section 2(1)(zb) are defined as marks capable of graphical representation and distinguishing one’s goods then that would contradict the rest of the definition provided under 2(d) of the Designs Act. As any features of shape or composition of lines and colors can be graphically represented, and any shape or composition of colors can acquire distinguishing capacity through persistent usage in trade. Since the language of the Act leaves the pertinent questions arising out of the same unanswered, the only recourse left is to draw the obvious inference that any shape or pattern or ornament or composition of lines and colors if used or registered as a Trademark, cannot be protected under the Designs Act. Upon the perusal of the aforesaid conclusion, yet another pertinent question arises which is, if a Trademark in use or registered, is barred from registration under the Designs Act, then would the same bar apply to a situation in reverse? The answer being – No. There is no provision or ruling barring the registration of an already registered Design as a Trademark as long as it is capable of Graphical representation and distinguishing a person’s goods. That is the sum and substance of the overlap between the two regimes that forms the crux of this particular discussion.

The issue of overlapping IP rights creates a significant contradiction in Indian intellectual property law. The same product shape can potentially receive protection under both the Designs Act and the Trademarks Act, despite the fundamental differences in the purpose, requirements, and duration of these protection regimes.

The Doctrine of Election could be evoked to counter dual registrations and parallel protection, however, if an applicant must elect then the prudent course of action would be to register it as a design first, exhaust the 15-year monopoly benefit and then proceed to secure a Trademark registration. The 15-year period naturally would be adequate for the registered shape to acquire distinction in the market and accrue market use which would translate to prior use under the Trademarks Act. In the unlikely event of future Judicial pronouncements barring the subsequent registration of a shape as Trademark after it has enjoyed protection as a Design initially. It would just make it more prudent for Proprietors to elect to secure a Trademark registration rather than a Design registration since despite a weaker and a narrower protection, it does provide protection in perpetuity.

The inherent issue with the above notion being the ethical dilemma it poses. If a product shape or packaging shape is granted protection in perpetuity, then in the likely scenario of that shape having any functional utility regardless of how little the utility is, it could stifle innovation. It is widely accepted that Designs cannot be primarily functional or utilitarian in nature but minor functionality or some amount of substantial functionality provided that the primary purpose remains the visual appeal of the same would still be permissible. Considering the same, to exemplify the complication outlined previously, the scenario in which the Design/shape of a shoe which is visually appealing is granted protection in perpetuity, if the shape/contour of this particular shoe, if it bears some functionality or utility to the sole of it which aids running or walking would effectively monopolize the entire market in perpetuity.

The stark contrast in IP protection duration between these regimes creates a potential peculiarity in the intellectual property system. While the Designs Act deliberately limits protection to a maximum of 15 years, reflecting the legislative intent to balance monopoly rights with public access, trademark law potentially allows perpetual protection through renewals, as its purpose is to prevent consumer confusion rather than reward innovation.

Examples of Iconic Products with Functional Shapes:

• Coca-Cola Bottle

The iconic contour bottle of Coca-Cola is a classic example. While its shape is distinctive and serves as a brand identifier (trade dress), it also has functional aspects, such as being easy to grip. This duality makes it difficult to determine whether the shape is purely ornamental (design) or serves as a source identifier (trade dress). Even though it can be argued that the Coca-Cola bottle design is primarily visual, mimicking the contours and shape of a cocoa bean, the fact that is indeed functional cannot be disputed. (The contoured design with the slimmer bottle waist makes it extremely grippy even if the bottle is wet)

• Toblerone Chocolate Bar

The triangular prism shape of Toblerone is distinctive and recognizable, qualifying it for trade dress protection. However, the shape also has functional elements, such as facilitating easy breaking of individual pieces, which complicates its classification as a purely ornamental design.

• LEGO Bricks

LEGO bricks are protected as trade dress due to their distinctive design. However, their shape is inherently functional, as it allows the bricks to interlock. This functionality often disqualifies them from design protection, highlighting the overlap and conflict between the two regimes.

• Zippo Lighters

The rectangular shape of Zippo lighters is iconic and serves as a trade dress. However, the shape also has functional aspects, such as fitting comfortably in a pocket and being easy to operate, which complicates its classification under design law.

Why Differentiating Trade Dress from Design is Challenging:

• Overlap in Purpose

Both trade dress and design aim to protect the visual aspects of a product. However, trade dress focuses on source identification, while design law emphasizes aesthetic appeal. When a product’s shape serves both purposes, it becomes difficult to classify.

• Functionality Doctrine

Trade dress protection does not discern functional features, while design law can protect ornamental aspects even if they have some functional utility. Determining whether a shape is primarily functional or minimally functional while being majorly ornamental often requires subjective judgment, leading to inconsistencies. The major repercussion of it being that the minimal or slight bit of functionality permissible for designs can work in detriment of public and consumer interest if allowed to be monopolized for perpetuity.

• Secondary Meaning

For trade dress protection, a shape must acquire secondary meaning, signifying the product’s source to consumers. This requirement adds complexity, as it involves assessing consumer perception, which is not a factor in design protection.

• Judicial Interpretations

Courts often struggle to apply consistent standards when evaluating the functionality and distinctiveness of a shape. For example, in Wal-Mart Stores, Inc. v. Samara Bros., Inc., the U.S. Supreme Court emphasized the importance of secondary meaning for trade dress protection, while in Crocs Inc USA v. Aqualite India Ltd, Indian courts highlighted the limitations of design law in addressing source identification.

Comparative Analysis of Product Appearance Protection Regimes:

The product appearance protection regimes in India and internationally reveal interesting approaches to this overlap. Some jurisdictions have attempted to address the issue through explicit statutory provisions or judicial doctrines.

In the European Union, for example, Article 4(1)(e) of the EU Trade Mark Regulation (2017/1001) excludes the registration of signs that consist exclusively of “the shape, or another characteristic, which results from the nature of the goods themselves,” “the shape, or another characteristic, of goods which is necessary to obtain a technical result,” or “the shape, or another characteristic, which gives substantial value to the goods.” These exclusions are similar to those in Indian law.

However, the EU has gone further in addressing the overlap between design and trademark protection. In the landmark case of Hauck GmbH & Co. KG v. Stokke A/S (Case C-205/13), the Court of Justice of the European Union held that the “substantial value” exclusion can apply where the shape has previously been protected as a design. This approach directly addresses the potential for using trademark law to extend expired design rights.           

Foreign Court Judgments and Their Interpretation

• United States Jurisprudence
• Two Pesos, Inc. v. Taco Cabana, Inc.,[3]: The U.S. Supreme Court held that trade dress protection is available for inherently distinctive designs, provided they are non-functional. This decision underlines the necessity that aesthetic novelty alone does not suffice if the design fulfills a functional requirement.
• Wal-Mart Stores, Inc. v. Samara Bros., Inc.,[4]: The Court reiterated that functionality precludes trademark protection, thereby protecting competitors from monopolistic control over utilitarian designs.
• Qualitex Co. v. Jacobson Products Co.,[5]: This case tackled non-traditional marks, establishing that even aesthetic features, if functional, may not merit trademark protection.
• European Jurisprudence
• Painer v. Standard VerlagsGmbH[6]: The European Court of Justice clarified that non-typical signs may only receive trademark protection if they have distinctiveness beyond functionality.
• Louboutin v. Van Haren Schoenen NV[7]: European courts have scrutinized the intersection of aesthetics and functionality, illustrating that even iconic design elements must pass rigorous functionality tests to qualify for trademark protection.

            In contrast, Indian law does not explicitly address the relationship between expired design rights and subsequent trademark protection for the same shape. This gap creates uncertainty and potential for strategic manipulation of the intellectual property system.

Design Protection Extension Through Shape Marks: Analyzing the Potential for Misuse:

The potential for design protection extension through shape marks represents a significant concern for the integrity of the intellectual property system. Companies might attempt design monopoly extension by seeking trademark protection as design rights approach expiration, effectively circumventing the temporal limitations deliberately imposed by the Designs Act. The scenario however controversial is still of relevance since this is a peculiar situation that only arises if the Design protection intended to be extended is of a ‘Design’ that has that small but pithy bit of intrinsic functional utility which might result in an unfair monopoly. Any Design that does not carry the risk of market monopoly due to intrinsic functionality owing to the extended protection if opted by the Proprietor/Author is by every stretch of the imagination fair and permissible.

The Issue of Perpetual Trademark Protection for Functional Product Shapes

The availability of perpetual trademark protection for functional shapes could undermine the carefully calibrated temporal limitations of design law. A company might initially register a product shape under the Designs Act to benefit from the relatively straightforward registration process. As the design protection approaches expiration, the company could then seek trademark registration for the same shape, arguing that it has acquired distinctiveness through use in the market.        

            If successful, this strategy would effectively circumvent the temporal limitations of design law, potentially securing indefinite protection for a product shape that the legislature intended to enter the public domain after 15 years. This approach raises several concerns:

• Undermining Legislative Intent: The deliberate limitation of design protection to 15 years reflects a legislative balance that could be circumvented through strategic use of trademark law.
• Market Competition: Perpetual protection of product shapes could hinder competition and innovation in the market, preventing other manufacturers from using shapes that should be available in the public domain.
• Consumer Welfare: Extended monopolies may result in higher prices and reduced product variety for consumers, as competitors are prevented from offering similar products.
• Regulatory Consistency: Allowing such strategies creates inconsistency in the intellectual property system, undermining the distinct purposes of different protection regimes. 

Moral and Ethical dilemma in Extension of Protection to Functional Shapes

Judicial pronouncements such as Crocs Inc USA v. Aqualite India Ltd and Ors[8] and Mohan Lal v. Sona Paint & Hardwares[9] underscore the legislative gaps in the Designs Act, 2000. These rulings highlight that while the Act focuses on ornamentation, it fails to address the functional aspects of designs—an oversight that amplifies the conflict with trademark law.

The potential for shape mark misuse to extend design monopoly raises significant concerns for competition and innovation. This is particularly true in industries where product appearance is a key competitive factor, such as furniture, fashion, and consumer electronics. In these sectors, the ability to use and build upon existing designs is crucial for innovation and market development.

Complexity in Judicial Interpretation

Indian courts have rendered a spectrum of opinions on these issues. In Crocs Inc USA v. Aqualite India Ltd and Ors[10], the Delhi High Court refused an interim injunction on the basis of design infringement and dismissed passing off claims, noting that a registered design does not confer passing off rights. Similarly, in Carlsberg Breweries v. Som Distilleries[11] and Mohan Lal v. Sona Paint & Hardwares[12], the courts emphasized that trademarks must involve an “extra” element beyond mere design features to denote origin. These judgments illustrate the difficulty of separating functional utility from aesthetic appeal.          

Judicial Interpretation of IP Rights India: Case Law Analysis

Indian courts have begun to address the complex issues arising from overlapping IP rights India in recent judgments, though they have yet to directly confront the specific issue of trademark protection being used to extend expired design rights.

In Mohan Lal v. Sona Paint & Hardwares (2013)[13], the Delhi High Court recognized the possibility of concurrent protection through design registration and passing off actions (based on unregistered trademark rights). The court held that design registration does not preclude an action for passing off, as the two protect different aspects of the product: design registration protects the novel appearance, while passing off protects goodwill and reputation.

Similarly, in Carlsberg Breweries v. Som Distilleries and Breweries Ltd. (2018)[14]: The Delhi High Court permitted combined actions for design infringement and passing off, acknowledging the potential for overlapping protection. The court noted that “the remedy of passing off is an independent remedy and has nothing to do with the remedy of design infringement.”

However, these cases primarily addressed the procedural question of whether different causes of action could be combined in a single suit, rather than the substantive question of whether trademark protection should be available for shapes after design protection expires.

In Gorbatschow Wodka K.G. vs. John Distilleries Limited (02.05.2011 – BOMHC)[15]: The Intellectual Property Appellate Board (IPAB) considered an application to register a bottle shape as a trademark. While the IPAB did not directly address the relationship with design protection, it applied a stringent test for distinctiveness, requiring clear evidence that consumers identified the shape as indicating the product’s commercial origin.

The current status of 3D trademark India registration and enforcement reflects a cautious approach by the Indian Trademark Registry and courts. While shape marks are theoretically registrable, the high threshold for distinctiveness and the exclusions for functional or value-adding shapes create significant barriers to registration. This cautious approach may indirectly help prevent the misuse of shape marks to extend design monopolies.

When future cases directly addressing the issue of trademark protection for shapes after design protection expires come before Indian courts, they will need to carefully balance several competing considerations:

• Statutory Interpretation: The relationship between the Trademarks Act and the Designs Act must be interpreted in a way that gives effect to both statutes without undermining either.
• Consumer Protection: The core purpose of trademark law—preventing consumer confusion must be weighed against the risk of extended monopolies.
• Public Domain Interests: The public interest in designs entering the public domain after their statutory protection period must be considered.
• International Approaches: Guidance may be drawn from jurisdictions like the EU, where courts have addressed similar issues.
• Addressing IP Law Contradictions: Policy Considerations and Public Interest

Resolving IP law contradictions requires a multi-faceted approach involving legislative reform, judicial interpretation, and administrative practices. The current tension between trademark and design protection reflects broader policy questions about the appropriate balance between private rights and public access in intellectual property law.

Cautious strategy – preventative medicinal approach rather than curative procedural approach:

This attempt to extend protection to one’s Design through strategic Shape mark registration should be done strategically and cautiously under the advice of an informed IP counsel. There are quite a few caveats to be kept in mind for authors and proprietors alike in the realm of IP protection. It is the IP Counsels duty to inform the Applicant that:

• Design protection although robust, is not a pill of invincibility. It can be challenged and effectively revoked under Section 19 of the Designs Act, 2000. In the peculiar scenario that this article is focused on i.e., a Product Shape seeking Trade-Dress or Shape mark protection under the Trademarks Act,1999 could very well be challenged through Section 19 (d).
• Any use of one’s Design as a Trademark before the expiry of Design rights might put the Design at risk of revocation as stated above. The bar enshrined under Designs Act is not restricted to Registered Trademarks, it includes any marks in use as a Trademark.
• The pertinent fact that once the Design is converted and used/registered as a Trademark, it will become publicly disclosed and the protection offered by the Trademark Act won’t be all exclusive like the Designs Act and only protect in the specific segment or goods dealt in by the Proprietor.

Conclusion:

The goal should not be to prevent legitimate shape mark protection where a product shape genuinely serves as a source identifier. Rather, the aim should be to prevent strategic manipulation of the intellectual property system in ways that undermine its fundamental balances and purposes by purposive extension of functional design protection to deliberately establish a market monopoly on the heels of the said functionality. For law firms and counsels alike, the approach should be to strategically advice clients to secure their designs through the Design registration at first instance and then opt for Trademark registration post the expiry of the Design rights informing them of the pitfalls of ill-informed/ill-strategized IP protection for their product designs.[i]

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[1] MANU/DE/4130/2011

[2] MANU/AP/0060/1973

[3] 505 U.S. 763 (1992)

[4] 529 U.S. 205 (2000)

[5] 514 U.S. 159 (1995)

[6] (C-145/10)

[7] (Case C 163/16)

[8] MANU/DE/0828/2019

[9] MANU/DE/1254/2013

[10] MANU/DE/0828/2019

[11] MANU/DE/1201/2017

[12] MANU/DE/1254/2013

[13] MANU/DE/1254/2013

[14] MANU/DE/1201/2017

[15] MANU/MH/0630/2011

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[i] Authored by – Shubham Mathew George with advisory inputs from Mr. N. Surya Senthil, Ms. T.G. Niranjana and Ms. Satyanarayana Oveya

Appreciative gratitude to everyone who helped with the research and review of the subject matter.