The Shape Exclusions

In one line

Three shapes can never be trade marks, however distinctive they become, because each of them is really the business of some other branch of law.

In the wording a student can write in an exam: section 9(3) provides that a mark shall not be registered as a trade mark if it consists exclusively of (a) the shape of goods which results from the nature of the goods themselves; or (b) the shape of goods which is necessary to obtain a technical result; or (c) the shape which gives substantial value to the goods; and the proviso to section 9(1) does not reach sub-section (3), so no amount of use cures a shape caught by it.

Why the Act excludes shapes at all

Because a shape mark is potentially perpetual. A registration lasts ten years and is renewable for ever under section 25. A design under the Designs Act, 2000 lasts ten years extendable to fifteen. A patent lasts twenty years from filing. If a shape that is really a design or an invention could be registered as a trade mark, a limited monopoly would become an unlimited one by choosing the right register.

And because some shapes belong to everybody. A competitor who must make a product of a certain shape in order to make the product at all cannot be excluded from that shape without being excluded from the trade.

So section 9(3) is a boundary provision. It marks the edge between trade mark law and the law of designs and patents, and chapter 70 sets the neighbours side by side.

Clause (a): the shape resulting from the nature of the goods

The shape is dictated by what the goods are. A ball for a football; a plain rectangular brick for a brick; the ordinary shape of a banana for a banana.

The test. Would a person asked to make these goods, with no design intention at all, arrive at this shape? If so, the shape results from the nature of the goods.

Its limit. The clause does not exclude every shape a product might take. Where a product can take many shapes, the one chosen is not dictated by the nature of the goods. A bottle can be almost any shape, so a distinctive bottle is outside clause (a), though it may fall under (c).

Clause (b): the shape necessary to obtain a technical result

The shape does a job. The three lobes of a screw head that grip the driver; the fluting on a heat sink that moves air; the shape of a razor head that holds the blade at an angle.

The test. Are the essential features of the shape attributable only to the technical result? If they are, clause (b) applies.