Can You Trademark Product Packaging Shape or Design Separately From the Brand Name?

Yes. The Trade Marks Act, 1999 lets you register the shape of goods, packaging and colour combinations as trademarks, separately from your brand name, if they are distinctive enough to identify your business as the source. A shape or packaging that is merely functional, ordinary or decorative will not qualify. A purely visual design can be protected under the Designs Act, 2000 instead, and unregistered packaging can still be defended through passing off.

Trademark registration is highly important for safeguarding the identity, goodwill, and business interests of an organisation. It serves the purpose of differentiating between the products or services offered by a company and those of its competitors and prevents the infringement of the registered trademarks. The Trade Marks Act, 1999 is responsible for regulating trademark registration in India. Organisations can apply for the registration of their unique brand names, logos, taglines, emblems, packaging, colour combinations, and even product shapes. There are certain criteria that must be fulfilled before a trademark can be registered.

What is a Trademark?

A trademark is a special sign or symbol that sets a company’s products or services apart from those of another. The Trade Marks Act of 1999 helps to direct the registration, defence, and control of trademarks in India.

Once it satisfies all applicable legal criteria, the trademark allows a commercial entity to advertise its brand name or identification and guards against any improper use of either the precise or strikingly similar mark. The mark can be the product’s brand name, slogan, logo, colour scheme, packaging, or unique forms.

Before the Indian Trade Mark Registry, one can submit a trademark application. Most of the time, registration grants a company entity a unique right to utilise the mark only on the specific registered items or services, as well as the right to file proceedings in case of infringement.

Can Product Packaging, Shape or Design be Trademarked Separately from the Brand Name?

Yes, Indian trademark legislation allows for goods packaging, form, and some design features to be protected in addition to a brand name as long as they satisfy the legal criteria. These safeguards let businesses set their goods apart from rivals’ and stop illegal use of distinctive brand qualities.

1. If product packaging has a unique overall appearance that helps consumers identify the commercial source of the goods, it could be eligible for trademark protection. There may be a special mix of hues, pictures, patterns, or packaging designs here. However, commonplace packaging or industry-standard elements might not be sufficient.
2. Section 2(1)(m) of the Trade Marks Act of 1999 says that the shape of goods, packaging and combinations of colours can be marks. Section 2(1)(zb) says a mark has to be capable of being represented graphically and able to set one person’s goods or services apart from those of others. Hence, subject to legal restrictions, a unique product form can be registered independent of its trademark name. See trademark registration for the shape of goods.
3. If they function as source identifiers, some aesthetic components, such as distinguishing patterns or ornamental features, may qualify for trademark protection. A design only meant to make a product appealing, though, does not automatically qualify as a trademark.
4. Section 9(3) of the Trade Marks Act 1999 prohibits the registration of shapes which result from the nature of the goods themselves, are necessary to achieve a technical result, or give substantial value to the goods. The restrictions prevent trademark law from being used to secure exclusive rights over functional or valuable product forms. Read how Section 9 and Section 11 objections differ.
5. The design of a product may also fall under the Designs Act 2000 for protection. The design protection usually involves protection of the new or novel visual aspect of the products, including shape, configuration, pattern, and ornamentation. In the case of trademark protection, the object is to provide distinction of source. It depends upon the nature and purpose of the object for protection. A feature that is used as a trademark cannot be registered as a design, so a logo or brand name on the pack stays under trademark law.
6. Businesses can file an application for an appropriate shape mark or packaging mark with the Indian Trade Marks Registry, even if the word mark is registered separately. They have to submit a distinct representation of the mark along with specifications of the concerned goods. It will go through the process of review, objection, opposition, and legislated requirements.
7. It is recommended that prior to registering the trademark, one conducts legal research in order to determine distinctiveness, existing rights, and chances of design registration. Registration of a trademark name does not necessarily mean that the product’s package or its appearance can be protected under trademark law.

Trademark registration in India allows registration of a product’s package design and appearance separately. However, registration of an element or not depends on distinctiveness, regulations, and the type of IP protection required.

Which Protection Suits Which Part Of Your Product?

What you want to protect	Best-fit protection	Key point
Brand name, slogan	Word mark	Registered separately from the pack
Label or pack with logo and wording	Label or device mark	Protected as a whole, and descriptive words may need a disclaimer
Container, bottle or product shape	3D (shape) mark, and also a design if it is new	Must pass Section 9(3) and show distinctiveness
Pattern or ornament on the product	Design registration	Must be new, and cannot be a trademark
Colour combination on the pack	Colour mark	Usually needs proof of distinctiveness through use
Artwork on the label	Copyright	Arises automatically, with limits when reproduced industrially

When Does a Shape or Packaging Get Registered?

Registries are cautious about shapes and packaging because consumers do not usually treat them like brand names. A mark that lacks distinctiveness can still be registered if it has acquired a distinctive character through use before the date of application. Keep dated evidence such as sales figures, years of use, advertising spend, photographs of the pack in the market, invoices and customer or trade statements. A shape that is common to the trade, or dictated by function, is unlikely to be accepted, whatever the evidence.

Trademark of Product Packaging, Shape or Design – Process

Trademark registration for distinct product shapes, packages, forms, and certain features other than the trademark itself can be separately obtained by businesses in India. The registration procedure is regulated by the Trade Marks Act, 1999 and the Trade Marks Rules, 2017.

1. Identify the feature which you want to register

• The first step will help you understand what you are registering: a product shape, package, distinctive colour scheme, or other visual feature.
• The feature should be identifiable and distinctive enough to distinguish products of the company from competing products.

2. Trademark Search

• Search the list of registered trademarks in the Indian Trade Marks Registry database for any identical or similar marks.
• Look through registered and applied trademarks for similar packaging, product shapes and products.

3. Distinctiveness and Eligibility Considerations

• Determine whether the feature indicates the source of the product.
• Ordinary packaging, ordinary shapes and decorative features cannot qualify for registration.
• Special statutory limitations apply to functional shapes and shapes that increase the value of commodities.

4. Choosing the appropriate Trademark Classification

• An appropriate classification should be selected based on the feature. A shape or packaging mark is classified by the goods it is used on.
• Application for a 3D Trademark may suit the case where the trademark is the shape of the product/packaging, whereas Colour Trademark or Device trademark should be considered in other cases.

5. Prepare the application and documents

• Form TM-A should be prepared for submission together with all information regarding the applicant, representation of the trademark, goods and any other supporting document. For a shape, give clear images showing the different views, and for a colour mark, state the colours claimed.
• If there is a case of prior use, it means that documents of use and an affidavit of the user will be needed.

6. Submission of the application

• Submitting the application will require logging in to the official website of IP India and paying the relevant government fees. The fee is charged per mark and per class: Rs. 4,500 for individuals, startups and small enterprises, and Rs. 9,000 for others, for e-filing.
• Applications can be submitted separately if different trademarks or different features require separate protection.

7. Handling objections during examination

• The registry will examine the application for statutory compliance and the distinction in respect of existing trademarks.
• Objections will have to be responded to appropriately, and a hearing might even be required.

8. Publication and Opposition

• Once approved, the application is published in the Trademarks Journal.
• The third party has the right to contest the registration within a period of four months.
• It is necessary for the applicant to respond to the opposition and proceed accordingly.

9. Registration and Continuous Protection

• Upon successful registration, the trademark is registered. You can check the trademark registration status on the IP India portal.
• It is essential for the owner to monitor the misuse of the same and provide proof of usage along with trademark renewal where required.

10. Separate Design Registration

In case the purpose of registration is not to protect the economic source of the product but to protect its ornamental appearance, it is advisable to opt for design registration according to the Designs Act, 2000. A design must be new, so apply before you launch or publish the product. Disclosing the design first can make it unregistrable.

A company needs to opt for intellectual property protection depending upon what it wants to protect in its property. This can be known through a trademark search and evaluation.

What If You Have Not Registered The Packaging?

Unregistered packaging and get-up, often called trade dress, can still be defended through a passing off action if you can show goodwill, that the copier has misled buyers, and resulting damage. Registration makes enforcement easier because you rely on a statutory right and do not have to prove reputation from scratch. For a new product, the practical route is to register what you can before launch and keep evidence of use for the rest.

Design vs Trademark vs Brand

Brand name, trademark, and design are various forms of intellectual property which help companies to protect their identities, products and presence in the Indian market.

1. Definition:
   • The brand name is a name by which a firm, goods or services are known.
   • The trademark is a legally recognised symbol which distinguishes the products/services of one company from the other.
   • The shape, configuration, pattern or decoration of a product constitutes its design.
2. Purpose:
   • The brand name aids in identifying the products/services for consumers.
   • The trademark protects the distinguishing signs such as names, symbols, and qualified packaging.
   • The design helps to protect the visual appearance of articles.
3. Legal Protection:
   • The trademark is governed by the Trade Marks Act, 1999, and design is regulated by the Designs Act, 2000.
   • The fact that a company uses a brand name does not mean that the brand name is protected under law.
4. Registration: A brand name can be registered as a trademark provided that the required conditions are fulfilled, whereas designs have to be applied for separately as designs and meet the conditions set out for them. Indian law permits an overlap, so the same bottle can be both a registered design and, later, a shape mark.
5. Duration: Trademarks, in India, can be registered for ten years from the date of application, which can then be renewed again and again in ten-year periods; designs, generally, can be registered for ten years, extendable to five more years.
6. As an illustration, for a perfume, the name can be registered as a trademark, its logo can be trademarked, and its bottle shape can be designed or even shape-trademarked. The label artwork is protected by copyright, and a pattern on the carton can be a design if it is new and not used as a mark.

How Packaging Artwork is Protected by Copyright

Original label or carton artwork is protected by copyright as soon as it is created, and registration is optional. There is a catch for products made in volume. Copyright in a design applied to an article generally ceases once the article has been reproduced more than 50 times by an industrial process, unless the design is registered under the Designs Act. For mass-produced packaging, this is another reason to register.

Cost and Common Mistakes

Each mark is a separate application and is charged per class. Filing the word mark, the logo, the label and a shape mark means separate applications, so decide which ones matter most. Common mistakes include:

• Assuming the brand registration covers the pack or the shape.
• Launching the product before filing a design application.
• Filing a shape mark for a functional shape.
• Putting a logo into a design application.
• Skipping the search and the evidence of use.

Conclusion

Moreover, the product’s package, form, and other special attributes can be registered as IP in India, subject to fulfilment of some specific legal conditions. Businesses have to see if their products require trademark registration or design registration. Finding out the trademark, making sure that it is unique, and registering it will help protect the identity of the business and avoid any misuse, as well as increase its value. Right guidance can help you formulate your strategy.

Frequently Asked Questions

1. Is it possible to trademark packaging independent of the brand name?

Yes, distinctive product packaging may be trademarked in India in the absence of a brand name, as long as the packaging helps consumers identify the origin of the product and all legal requisites are fulfilled. However, ordinary or non-distinctive packaging might not be trademarkable.

2. Is it possible to trademark a product shape in India?

Yes, a distinctive product shape may be trademarkable if the same helps distinguish one manufacturer’s products from other companies’ products. However, the statutory restrictions on product shapes, which result from the nature of the goods, are necessary for a technical result, or add considerable value to goods, apply to India’s trademark legislation.

3. What is the difference between design and trademark protection?

Generally, trademark protection concerns the identification of economic origin, while design protection involves protecting the visual features of the product that qualify. Trademark legislation in India consists of the Trade Marks Act of 1999, while the Designs Act of 2000 governs industrial designs.

4. Is it possible to have separate registration of packaging and brand name?

Yes, it is possible for organisations to get individual registration of trademarks, logos, or unique packaging according to eligibility. Individual trademarks provide individual protection and enable organisations to act against any kind of misuse of the same by other competitors.

5. What is the duration of protection of a trademark in India?

Ten years from the date of application, and it can be renewed for further ten-year periods. The period of protection of design registration in India is ten years and can further be extended for five years.

6. Can I register a colour as a trademark?

A combination of colours can be registered, and a single colour is harder. Either generally needs proof that buyers recognise it as your brand.

7. Can the same bottle be both a design and a trademark?

Yes, Indian law permits an overlap. A common strategy is to register the design first, then a shape mark once the shape has become distinctive through use.

8. Should I file a design or a trademark first?

File the design before you launch, because it needs novelty. The trademark can follow, with evidence of use.

9. Is unregistered packaging protected?

It can be, through passing off, if you prove goodwill, misrepresentation and damage.

10. Can I register the logo on my packaging as a design?

No. A trademark cannot be a design. Protect the logo as a trademark.

11. How long does a shape or packaging trademark take?

It depends on objections and opposition. Shape marks often face objections, so allow longer than a plain word mark.

Protect Your Intellectual Property Rights With Kanakkupillai

Your brand, inventions and intellectual property will be protected by KANAKKUPILLAI. Be it trademark registration, design registration or even packaging of products, our team of professionals can help you address such issues effectively. If you are in Tamil Nadu, see trademark registration in Tamil Nadu. Rely on KANAKKUPILLAI to provide you with dependable assistance with regard to your intellectual property and business personality.