The main legal point established in the judgment is the requirement for a shape to have acquired secondary meaning to be protectable under trade mark law.

JUDGMENT

Prathiba M. Singh, J. (Oral)

1. The present appeal challenges the impugned order dated 26th September, 2019 passed by the Senior Examiner of Trade Marks by which the trademark application of the Appellant bearing no. 2735618 for the registration of shape of a knitting needle in Class 26 in respect of `knitting needles and crochet hooks' was rejected. The image of the knitting needle sought to be registered is extracted below:

2. The application of the Appellant was found to be objectionable under Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999 (hereinafter `Act') and the mark was found to be devoid of any distinctive character by the Senior Examiner.

3. Ld. counsel for the Appellant submits that the shape of the knitting needle sought to be registered by the Appellant is very distinctive and has acquired secondary meaning. Mr. Harish V Shankar accepts notice.

4. The court has put to the ld. Counsel, as to what are the distinctive elements in the above needle that entitle it to a shape trade mark protection. Ld. Counsel after seeking instructions submits that he wishes to withdraw the present appeal. Thus, on facts, the appeal is dismissed as withdrawn.

5. This Court, however, for the purposes of recording the legal position on shape trademarks, notices that the erstwhile Trade and Merchandise Marks Act, 1958 defined the word `mark' under section 2(1)(j) as under:

(j) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral, or any combination thereof;

6. The Trade Marks Act, 1999 expanded the definition of `mark' and provides an illustrative definition of the word `mark' in section 2(1)(m) in the following manner:

(m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;

7. On juxtaposing definitions of the word `mark' under the old and the new trade mark laws, it can be inferred that the scope and meaning of the word `mark' has expanded over time and is no longer limited to what are commonly referred to as traditional trademarks. The law now extends trade mark protection to features such as shape of goods, packaging, sound, smell, and combination of colours amongst others, as long as they fulfil the quintessential function of trademark- `source identification'. This Court in Levi Strauss and Co. v. Imperial Online Services Private Limited, CS(COMM) 657/2021 order dated 24th March, 2022 has summed up the evolution of trade marks in the following words:

"14. Under the law of trade marks, the definition of `mark' has evolved over time. Traditionally, trademarks included names, words, devices, logo, label/packaging, letters, numerals etc. However, this list of trademarks has expanded over the years to include colour, combination of colours, shape of goods, patterns of products, smell, and sound marks etc. These broad two categories of marks are loosely referred to as -

15. The present case relates to a stitching pattern which is not a product design i.e., the design of a product, but a pattern which is incorporated on Plaintiff's jeans products. The question in such a case would be as to whether mere appearance of the said stitching pattern would perform a trademark function i.e., associate the jeans with the Plaintiff. If the answer to this question is in the affirmative then the pattern would be construed as a trademark deserving protection. There may be a large number of stitching patterns which may be merely for aesthetic or visual appeal. However, when a trademark owner's stitching pattern per se identifies the jeans, even without a name or a logo, then the intention of the proprietor is for the pattern to perform the function of a trademark. In such a case, the Court would have to examine as to whether the stitching pattern has an `acquired meaning', or is distinctive per se. The test of acqu