Prior to the enactment of Trademarks Act, 1999, the Law did not permit even non-functional shape of a good under the trade marks law. Now it is possible to obtain trade mark registration for goods that have a special shape which does not have any bearing on the functionality.
The Trademarks Act does not insists novelty as a requirement for registration. So we are of the opinion that it is possible for an Applicant to obtain Design registration first and when the design registration is about to expire, apply for a trade mark registration claiming prior use from the date of design registration and convert the design registration into a trade mark registration. By this method, the Applicant can protect his novel design in perpetuity.
However, before adopting this course of action consult your attorney.