Design or trademark? Choosing protection for a product shape

A founder puts a bottle on the table and asks you to "protect the shape". There are three possible answers under Indian law, they overlap badly, and picking the wrong one first can close off the right one. This is how to think it through in the meeting, before anyone files anything.

The three options, and what each protects

Registered design. The Designs Act protects features of shape, configuration, pattern or ornament applied to an article, judged by the eye. It must be new or original, not previously published anywhere, and not dictated solely by function. Protection runs ten years from registration, extendable by five. It is fast, cheap, and the strongest option in the early life of a product.

Shape trademark. The Trade Marks Act includes the shape of goods in the definition of a mark. But Section 9(3) refuses registration of a shape that results from the nature of the goods, is necessary to obtain a technical result, or gives substantial value to the goods. On top of that, a shape has to be distinctive, and consumers do not usually read shapes as brands. In practice, a shape mark is earned by years of use and evidence, not granted on filing. Once earned, it lasts as long as it is renewed.

Copyright. An original drawing of the bottle is an artistic work. But Section 15(2) of the Copyright Act strips copyright from a design capable of registration under the Designs Act once the article has been reproduced more than fifty times by an industrial process. For a product that will be mass-produced, copyright is not the answer and should not be sold as one.

The question that decides it

Ask the client one thing: has this shape been shown to anyone outside the company?

If the answer is no, a design registration is available and should be filed before any launch, catalogue, trade fair, investor deck or social post. Prior publication anywhere in the world, including by the applicant, destroys novelty. The number of design applications that die because the founder posted a prototype on LinkedIn is not small.

If the answer is yes, and it was more than a trivial disclosure, the design route is likely closed. The conversation moves to whether the shape has been used enough, and distinctively enough, to support a shape mark application with evidence of acquired distinctiveness. For most young products it has not, and the honest advice is to file for the word and logo marks now, build the shape's reputation deliberately, and revisit in three years.

The order that works

For a new product that has not been disclosed, the sequence is usually:

1. File the design application immediately. Representations from the required views, Locarno class, statement of novelty tied to the specific features that are new.
2. File word and device trademark applications for the brand as normal.
3. Use the shape consistently and prominently, and keep the evidence: advertising that features the shape alone, packaging, press that refers to the shape.
4. Before the design's ten-year term ends, assess whether the shape has acquired distinctiveness and file the shape mark with the evidence.

The design buys time. The trademark is what you are building toward. Telling the client that in the first meeting sets the budget and the behaviour for the next decade.

Two traps

Functional shapes. If the shape is the way it is because that is how the thing works, neither route is open. A design dictated solely by function is excluded; a shape necessary to obtain a technical result is refused as a mark. Ask what would happen if the shape changed. If the product would stop working, stop here.

Claiming too much in the design. Representations that show the whole bottle with the label, the cap and the embossed logo claim all of it, and a competitor who copies the bottle without the label may escape. Decide which features are the design, show those, and disclaim the rest.

The Copyright and Design Registration course has a full design application exercise and a decision tree for product shape that you can take into the meeting.