CAN THE PACKAGING OF A PRODUCT BE TRADEMARKED?

Distinctive packaging to allure the consumer to purchase or even inspect goods in the market, has become sort of the newest trend. But some of these packaging revelations are not just trendy. They are unique in keeping traction of their audience. For starters, ever wondered how no other chocolate has packaging like that of the Toblerone chocolates? Its not for the lack of trying to copy the coolest new marketing strategy, but because the product’s shape or the product’s 3D packaging is protected by trademark law.

In India, Section 2(1)(m) of the Trademarks Act, 1999 defines a markas one which includes a brand, device, label, heading, name, signature, ticket, letter, numeral, word, packaging, the shape of goods, or combination of either colours or any other combination. The scope of this definition has been widened to include non-conventional trademarks like 3-Dimensional trademarks. A three-dimensional trademark is an unconventional trademark that makes use of a 3D (three-dimensional) shape of a product or its container or package to achieve a distinct position in the growing marketplace full of advertisements trying to embed themselves in the consumers’ minds. It is non-conventional in the sense that it does not comprise 2D (two-dimensional) elements of mere words, numerals, or figures.

On the other hand, the things that cannot be registered as a trademark in India has been provided under Section 9(3) of the Trademark Act. Considering the overlap of generic and descriptive values of a mark, there are three conditions under which a trademark would not be qualified for a 3D trademark registration:

1. Where the shape of goods is resulting from the nature of the goods themselves.
2. Where the shape of goods is such that it is necessary to obtain a technical result.
3. Where the goods are given a substantial value due to their shape.

The fundamental purpose of this section is to prevent a situation creating a monopoly of the common shape of goods and ensure that such goods are free for public usage. The Contour of a Coca-Cola bottle, the 3D shape of the Super Cub Scooter of Honda, and the shape of the Zippo Lighter are some famous examples of acceptable 3D trademarks.

Section 2(1)(zg) gives the definition of a “well-known trademark”. According to this section, a well-known trademark is a mark (in relation to goods or services) that has become a considerable segment of the public which uses such goods or receives such services. The substantiality is judged by the fact that if another proprietor uses such mark in relation to their goods or services, then the public would be likely to take that mark as indicative of a connection in furtherance of trade or service, along with a person using the mark in relation to the first-mentioned goods or services.

For example, just assume Coco-Cola’s bottles are newly launched without any markings, in India. Coca-Cola packaging is in such a way that it is recognised by the shape of its glass bottle. If any other company makes a bottle of similar shape and consumers start identifying and relating it to Coca-Cola’s bottle, then in that situation Coca-Cola would feel the need to protect the bottle’s shape under trademark law and such a shape would come under the definition of a “well-known trademark,” as it qualifies the requirement of becoming a substantial segment of the public.

Under the trademark law, the trade dress encompasses the visual aspect of a product and it comprises several distinctive features with respect to the shape, size, packaging, colour combination, textures, graphics etc. Even though there is no separate provision which specifically deals with 'Trade Dress', in the Indian Trademark Act, 1999, it is offered protection under the common law of passing off which includes the aspect of packaging, shape of goods, colour combination etc. For the purposes of qualifying under the common law of passing off, the packaging and the design of the product should have some kind of inherent distinctiveness or the product could also have acquired a distinctive character from its presence in the market over a considerable amount of time.

The main objective behind providing protection to trade dress is to prevent the untrained eyes of the customers from getting deceived who might purchase the deceptively similar product with a similar packaging instead of the original product. Therefore, along with the fulfilment of requirements under Section 2(1)(zb), the Manual of Trademarks, Practice and Procedure of 2015 is there to aid the applicants which list down the requirements of graphical representation which have to be adhered to by the applicant in cases of unconventional trademarks. These are also applicable to other unconventional marks, including smell marks, sound marks, colour marks, etc as:

A trade mark must have the ability to be graphically represented for the purpose of registration.

A trade mark that has colours, shape, or packaging should be along with a concise and accurate description of the trade mark.

Such a description is required to be entered as an endorsement which would be taken along with the graphical representation and that will help to define the scope of the registration. It is also to be noted that the onus to provide a suitable representation of the trade mark is on the applicant.

Taking the Coca-Cola bottle’s shape example again, the graphical representation of shape should be in a form of perspective drawing, showing all features and should have an accurate description of the shape.

Above all, the elements in a product that can ensure a 3D packaging trademark protection are: Consumer recognition; Acquired distinctiveness; Goodwill; Extensive proof of usage; Higher burden of proof by applicant.

Blog Resource : https://lexprotector.com/blog/trademark-protection-for-product-packaging/

Unregistered Trademarks and their IP Protection

 

Introduction

Registration of a trademark under the Indian Trade Marks Act, 1999, is not mandatory. As a result, both registered and unregistered trademarks are defendable in India through a passing off or infringement lawsuit in a court of law.

India, a common law nation, upholds both codified law and common law principles, and as a result, it offers both infringements and passing off actions for trademark infringement. In India, rights to a trademark can be obtained by earlier adoption as well as through extensive, continuous, honest, legitimate, and uninterrupted use of the mark. Both passing off and trademark infringement are recognized under Section 135 of the Trade Marks Act.

What are Registered and Unregistered marks?

A trademark that has been registered under the Trademark Act of 1999 grants its owner exclusive rights. His ownership of such a trademark after registration becomes the initial piece of proof.

As we previously noted, the Act does not require that a trademark be registered, therefore unregistered trademarks are those that are not registered. However, compared to the legal protection provided to registered trademarks, the protection they receive is quite limited.

What is passing off?

Passing off is a common law tort, which can be used to enforce unregistered trademark rights. In the case of Perry v Truefitt (1842) for the first time the principle of passing off was introduced, i.e. “Nobody has the right to represent his goods as the goods of somebody else”.

Criteria for a passing off action

The primary purpose of India's passing off statute, which is actionable under common law, is to safeguard the goodwill associated with unregistered trademarks. The fundamental rule of law states that one should not profit from another person's labor. The following are the criteria for a passing-off action.

• Reputation

It is crucial to prove in court that an unregistered trademark has a reputation in the market and can be easily differentiated under the class of goods, businesses, or services for which it is used. An unregistered trademark must have some goodwill and reputation in the market which means, people should recognize such a mark.

• Prior user

Unregistered trademarks are given statutory protection under Sections 34 and 35 of the Trademark Act, 1999. These clauses essentially state that a prior user of a trademark will have priority over later users notwithstanding being registered in order to protect the interests of an unregistered trademark.

• Misrepresentation

The party instituting an action against passing off needs to prove that such passing off by a third party has caused him actual damage in business and profit due to the misrepresentation.

Finding & Conclusion

An unregistered trademark owner has some rights and remedies according to the Trademark Act of 1999 and common law remedies, but it also puts a burden on him. The unregistered trademark owner may believe that taking legal action to prevent passing off provides adequate protection, but there are still requirements that must be completed. A trademark serves as a brand's and a product's identification. The rights derived from such a brand must be very carefully considered and understood. It is advised for such a person to register his trademark in order to take advantage of the range of rights offered by the Trademarks Act, of 1999.

Blog Resource : https://lexprotector.com/blog/unregistered-trademarks-and-ip-protection/

Infringement of Copyright on Tattoos in India | Copyright Infringement

Tattoos have always been a part of self-expression, but the legal quandary regarding who owns the expression and where the right to sue lies, is still a very nascent subject in the Indian jurisdiction. This post aims at seeking, what the Indian position is on the subject.

Tattoos have been defined as “a picture or design that is marked permanently on a person’s skin by making small holes in the skin with a needle and filling them with coloured ink.” This renders a tattoo as an engraving on a medium, this leads the tattoo to fall within the purview of an artistic work. Copyright as a medium of protection subsists for artistic work therefore making an original tattoo work protected by Copyright.

The ownership of such Copyright is retained by the creator of such work. i.e. in the present case it will be the tattoo artist, since, the author in relation to the artistic work has been defined as the artist itself. In addition to the copyright protection given to the artists, they are also conferred with moral rights by the virtue of this Act.

Moral rights are targeted at protecting the personality of the author enunciating that author’s special right that any author even after assignment can claim ownership of his work, claim damages regarding distortion, mutilation, modification, or such act that might act prejudicial to the honor of the artist.

Copyright Infringement on Tattoos within Indian jurisdiction

Although the Indian jurisdiction has not seen a particular case where the rights ensuing from copyrightability of tattoos is dealt with, but here we attempt to discern what the current legal positions allow.

This leads us to the question of what will constitute an infringement of copyright as held by the artist. There stand three scenarios where copyright infringement on tattoo is dealt with:

• First, being when the person on whose body the tattoo is, decides to modify or remove the tattoo;
• Second, when the tattoo is adapted or copied by other artists or any other unauthorized use is done of the tattoo design;
• And lastly, when the tattoo on famous personalities is used by third parties.

The First Scenario

Deals with the personality rights of an Individual and the statutory rights of an artist. The scale is clearly tipping in favour of the personality rights. Placing reliance on the Puttuswamy judgement, it has clearly been established that the fundamental right of personality enshrined in the constitution, will accede over the statutory rights. The same has been derived from the Doctrine of Basic Structure.

The Delhi High Court in the case of Raj Rewal, put forth some clear markers of what entails the moral right of an author. In the said case, the copyrighted work was a building, which obviously was on a piece of land and the conflict was whether the moral rights of the architect will subsist over the property rights of the land owner. The stance court took was that property right is enshrined in the constitution and will concurrently have precedence over the moral right of the architect.

Applying the same principle in case of tattoos being removed or modified by an individual will not be stepping over the moral rights of the author since the former is an extension of his personality rights i.e., a Fundamental Right.

The aforementioned case, further clears the doubt regarding publicity rights of a tattoo. The person possessing the tattoo can per his discretion display such tattoo without stepping on the rights of the artist, owing to the fact that the tattoo is an extension of his person.

In the Second Scenario

we see that when tattoos that are completely original works of the artist on somebody, and that particular commissioned design is unauthorizedly copied by another entity, then the same will amount to infringement. The Indian legal system has yet to deal with the issue and therefore no case and opinions are available to rely upon. However, in a first step towards accepting copyrights on tattoo was the Indian Copyright office that provided copyright protection to Shahrukh Khan for his tattoo ‘D’. 

Going by the statutory provisions, we see that like any infringement case, a copyrighted tattoo by an artist if copied, the artist can sue for copyright infringement under the provisions of the Copyright Act, like in any other case, as long as such claim is not stepping upon the personality rights of the person sporting the tattoo.

In the Last Case Scenario

we see celebrities or public figure sporting tattoos, this has been dealt with by the courts in the American legal system. Primarily, we ensure that while the personality rights of the famous person are intact and the tattoo artist does not have a supremacy over them, there might be instances of infringement that are not done by the person sporting the tattoo.  Here, the use of the tattoo can be identified in two main methods - first use is when reference is being made to the person who is sporting such tattoo, it may be in the form of fan art, parody, characters in video games, doodles etc.

Secondly, it may in the form of when the design of the tattoo is being used in merchandise or other methods to commercialize the same. In the former case, it has been referred to as incidental infringement where such use is not rendered as infringement since it is being used to refer that person and the tattoo has become a part of their person. Within the Indian legal system this claim is based on the provisions of the act which state that an exception to infringement is when,

• the inclusion in a cinematograph film of
  1. any artistic work permanently situate in a public place or any premises to which the public has access; or
  2. any other artistic work, if such inclusion is only by way of background or is otherwise
     
     Incidental to the principal matters represented in the film

Conclusion

Thus, in a scenario where the tattoo of a player is being depicted on the body of his character only acts in supplementing authenticity of the character rather than stepping upon the rights of the tattoo artist. Moreover, such depiction has been decreed as an incidental action where the motive was centrally not to show such tattoo. In the latter case, where the tattoo is purely being commercialized, where original tattoos that took mental consideration is being designed, are used on merchandise like t-shirts or posters, it is well within the right of the artist to claim copyright infringement since the economic advantage of such design is being reaped by an unauthorized entity.

Further, in this case we place reliance on the Mike Tyson Tattoo, where the artists had sued Warner Brothers production company for unauthorized copying of the famous tattoo on Mike Tyson’s face, on a character in the movie Hangover, although the matter was settled out of court, the judge had opined that instances where the tattoo is being taken from the face of the famous personality and is being used elsewhere, it will render infringement on the artist’s design.

Blog Resource : https://lexprotector.com/blog/copyright-infringement-on-tattoos-in-india/