Registration of Three Dimensional Trademark India

Rule 25(12) mandates the applicant to make a specific statement in the application that the mark sought for registration is a three dimensional trade mark. As and when the mark is accepted and advertised, suitable entry to that effect will be made below the mark in the journal publication and later in the registration certificate, when the mark is registered.  The requirement of distinctiveness for the three dimensional mark is the same as for other trade marks. However, besides distinctiveness, functionality aspect as per section 9(3) will also arise. See “Swizels case” 1999 RPC 879 where the Appellate court held “ it is essential for traders to be able to identify with clarity what the registered trade mark is. This is fundamental aspect of the law and it is for this reason that the graphical representation being the means by which the trade mark is defined, must be adequate to enable the public to determine precisely what the sign is that is the subject of registration. I cannot accept that the description as it stands on the form is sufficient to enable a trader to determine precisely what the sign is. The description must stand on its own to identify the trade mark”.  Bad faith objections can be overcome if permission to the registration of the mark is obtained from the individual or his/her legal representative.

Pictorial representations or names of well known buildings

It is NOT be generally necessary to take an objection under Section 18 read with 11(10) except in the case of applications to register the names or pictures of well known buildings in respect of films and videos, printed matter and photographs falling within Classes 9 and 16 and tourist services within Classes 35, 39 and 42 on the ground of lack of distinctiveness under section 9(1)(a), especially for goods in class 9 & 16.

Names of well known fictional stories/characters

The names of fictional characters/stories may be accepted prima facie for any goods/services provided that they are likely to be taken as a sign indicating the goods/services of one trader. See the Tarzan case 1970 RPC 450 for useful guidance. If the name in question is both long established and well known it may have passed into the language. In that case its primary signification is likely to be viewed as the name of the story/character concerned. In such instances, the name should be regarded as a sign which may serve in trade to designate a characteristic of goods/services featuring the story/character concerned and objection should be raised under Sections 9(1)(a) & (b) of the Act.  For example, SHERLOCK HOLMES is a name that has been used by many traders over the years in order to describe a story and a character who appears therein. As such it is non-distinctive for books, films etc. featuring that character. In other cases, such as SPIDERMAN, where the name appears to have been used by one party
as a trade mark for magazines, the name may be capable of identifying the goods
of one trader notwithstanding that it is also the name of a well known fictional character. The question who coined the name is not decisive if it has subsequently come to be seen purely as the name of a character/story. Similarly, the question whether the applicant has copyright or some other exclusive right to publish the printed material commonly associated with the title/character concerned is to be seen. The question is whether the sign is likely to be taken as a badge of origin. Where it appears that the fictional name applied for is unable to
distinguish the goods/services of one trader the application is likely to face objections under Section 9(1)(a) & (b) of the Act. Depending upon the nature of the mark in question, this objection may be taken in respect of printed matter; posters; photographs; figurines; films; videos; TV programs; organization of plays and shows; toys, badges and fancy dress costumes (this is not an exhaustive list).  In deciding whether a fictional character, is ‘well known and long established’ to the extent that it has entered the language, care should be taken to avoid taking into account the applicant’s own efforts to promote the name after the date of application. On the other hand, if the name in question had entered the language prior to the date of application, subsequent concerted promotional activity by the applicant should not benefit the applicant even if it has brought about a temporary high level of association with the applicant.

Representations of well known fictional characters

Similar considerations apply to representations of well known fictional characters. However, it should be borne in mind that (unlike with a name) there
are many ways of depicting the same character and a representation of even a widely used fictional character may be acceptable if it is shown to have acquired distinctiveness by reason of use.