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IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of Decision: 13^th July, 2022

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C.A. (COMM.IPD-TM) 110/2022

KNITPRO INTERNATIONAL

..... Appellant

Through:

Mr. Pankaj Kumar, Advocate (M-

9810438450) for

Mr.

Sudershan

Kumar Bansal, Advocate.

versus

EXAMINER OF TRADE MARKS THROUGH REGISTRAR OF

TRADE MARKS

..... Respondent

Through:

Mr. Harish Vaidyanathan Shankar,

ld. CGSC.

CORAM:

JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh, J. (Oral)

1. The present appeal challenges the impugned order dated 26^th

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.

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002631

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 Thus, on facts, the appeal is dismissed as withdrawn.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:

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:

ticket, name, signature, word, letter, numeral, shape of

goods, packaging or combination of colours or any

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

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002631

[CS(COMM) 657/2021 order dated 24^th March, 2022] has summed up the

evolution of trade marks in the following words:

loosely referred to as –

• Traditional Trademarks

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

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

acquired meaning is similar to the test of secondary

meaning applied to descriptive words. In McCarthy on

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002631

distinctiveness can be assumed.”

8. In McCarthy on Trademarks and Unfair Competition [4^th Ed § 8.4,

page 8-13], J. Thomas McCarthy is also of the view that the design and

shape of the product can be protected as part of ‘trade dress’. The relevant

excerpt is