Unconventional Trademarks

Introduction to Unconventional Trademarks

Whenever we are talking about trademarks, whether conventional or unconventional trademarks, the concept of Intellectual Property Rights (IPR) comes in. Trademark, like copyrights and patents, is one of the parts of IPR laws, and its function is to protect the “mark” of the product or the service. So, a trademark can be defined as any mark which can be represented which can be represented in some form and can distinguish the product or service which it is representing. A trademark can be any particular color, any particular shape, name, shape, signature, sound, etc.

A trademark is defined as “a mark capable of being represented graphically and which is capable of differentiating the goods or services of one person from those of others and may include shape of items, their packaging, and combination of colours” in accordance with Section 2(1)(zb) of the Trademarks Act. Any mark that can differentiate the goods and services of one person from those of another, including words, devices, brands, headings, letters, and numbers, may be registered as a trademark. Even while all the aforementioned are included in the definition of a mark, the Act makes no mention of some marks, like fragrance and single colours.

Particularly with relation to trademarks, the field of IPR has experienced significant growth recently. Different types of trademarks are recognised by the TRIPS agreement. India has also changed its legislation as needed to comply with the TRIPS agreement’s requirements. There are specific types of unusual trademarks that fall beyond the present framework of trademark regulations, both internationally and locally. It is crucial to understand how these unusual trademarks are identified.

It is notable that India’s trademark regulations have always kept up with how quickly things are changing. The third version of India’s trademark legislation is currently in effect, and it complies with all applicable international norms. The legislature has been working nonstop to enact laws that adhere to the TRIPS Agreement, which is widely recognised.

The Trade and Merchandise Act of 1958 was India’s first piece of legislation governing trademarks. Later, it was replaced by the Trademarks Act, 1999, which modified and consolidated the law relating to trademarks. The legislature deemed the adoption of the new Act vital in order for India to fulfil its obligations as a member of the World Trade Organization and to comply with the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement. According to the previous statute, atypical trademarks, such as a specific tone of voice, colour scheme, etc., could not be registered.

Both international agreements and domestic legislation seek to give the term “trademark” a broad scope. Article 15 (1) of TRIPS states that a trademark is any indication or group of signs that can help consumers differentiate one product from another. For instance, sound is frequently registered as a trademark in the US and several European nations.

The situation in India is not yet established because the Indian Legislature and Judiciary have adopted a progressive approach to the Trade Mark legislation. In order to create its laws, the Indian judiciary refers to precedents where the issue has already been resolved.

What is an Unconventional Trademarks?

Meaning of Unconventional Trademarks: – The term ‘Unconventional trademarks‘ is broadly inclusive as it consists of the marks, which don’t belong to the conventional set of marks – for instance, those comprising numerals, symbols, logos, letters, words, pictures or combinations of these elements – and therefore consists of marks based on shape, color, appearance, smell, sound, texture, and taste. A unconventional or non-conventional trademark must possess the communicative ability to differentiate the products and services of one company or individual from those of others. It can either be a visible sign like shape, color, moving image, position, and hologram or a non-visible sign like texture, taste, sound, and scent.

 

Traditionally, a trademark is any mark that is specific to a product and was used to identify the product’s origin. These marks typically take the form of words, devices, numerals, etc. Unconventional Trademarks, also widely referred to as non-traditional or non-conventional trademarks, are a new type of trademarks, which don’t fall into the category of pre-existing conventional trademarks. Unconventional trademarks typically take the form of sounds, smells, shapes, or colours. An unusual mark must have the communication power to distinguish between the products and services of different people. The mark must show source in order to set the goods or services apart from competing ones; it should have the ability to be distinctive.

Due to the large quantity of trademarks submitted for registration in recent years, the registering authorities have encountered numerous difficulties. These unorthodox trademarks included Tarzan’s cry as well as texture, form, fragrance, contour, and bodily movement. The increase in unusual trademarks can be due to the vague legal definition of a trademark that is now in place. On the one hand, trademark regulations place a strong emphasis on the term’s flexibility and give the mark’s intended use top priority. Any mark that successfully distinguishes the aforementioned product from competing goods on the market is eligible for trademark registration. On the other hand, classic and conventional marks have received more preference as the legislation dealing to trademarks has evolved.

For an Unconventional Trademarks to be registered, certain requirements must be met: –

1. The mark must have inherent distinctiveness.
2. The product in question should be distinguishable from other products.
3. The mark ought to be able to be represented graphically.

What exactly falls under the purview of a trademark raises an intriguing question in the wake of these kinds of unusual trademarks. The laws are evolving with respect to the Indian situation. It was claimed that the Indian Trade Mark Registry had registered the sound marks for Yahoo! and Allianz Aktiengesellschaft. In a separate judgement, the Delhi High Court upheld its rejection of a trade mark infringement claim brought by “Zippo Lighters” to defend the design of their products.

What are the different types of Unconventional Trademarks?

The different types of Unconventional Trademarks are as follows: –

1. Smell Trademarks: –
   • One of the strongest senses in the human body, smell allows people to recall their prior experiences with ease;
   • Despite the fact that numerous nations now recognise the registration and protection of product smells as trademarks, the registration process is still challenging because it cannot be graphically depicted and requires a superhuman effort to demonstrate how the fragrance differs from the product. 
   • The smell should be distinct and it cannot per se be qualified to be registered as a trademark, without the required reference with the product.
   • In addition, to register the smell mark, the smell should not be a naturally derived scent originating from the product and be a mere result of the properties of the product.
   • Numerous times, the chemical formula of the drug has been written down to illustrate the smell. However, some businesses successfully passed all the necessary examinations and registered smell as their trademark.
   • Examples of well-known smell trademarks include the perfume of roses from a UK tyre company and the smell of beer from a London-based company’s dart flights and a Dutch company registered the scent of freshly mown grass for its tennis ball.

2. Taste Trademarks: –
   • When compared to other non-conventional trademarks, the illustration of taste is one of the most demanding and difficult, although some nations have allowed the registration of flavour as a trademark to distinguish goods on the market.
   • Usually, a written description of the taste is included to illustrate the taste mark.
   • The most significant legal criterion for registering a trademark is to show that the product/service is different and not deceptive, generic, descriptive, or similar to another brand.
   • The taste mark must, like the smell mark, be different from the fundamental function that the product performs. However, there are several arguments and disputes surrounding the registration of taste as a service mark.
   • Another important question is whether taste marks if granted protection under trademark law, will it conflict with the functionality doctrine?
   • For instance, the taste of a mango in a mango juice cannot be granted taste protection under trademark law as it does the same function which is inherent to it, i.e., the flavor of mango.
   • So, a product which is there for human consumption is disqualified for protection of trademark under taste category by applying the functionality doctrine.

3. Trademarks for Motion/Movement Trademark: –
   • A motion mark is a moving logo, a symbol, a video, or a name that is used by the company or the person who owns the product or service to attract consumer attention to their products and services. The creation of a motion mark is aided by computer programmes and animation software.
   • Only a small number of nations permit the trademark registration of moving images, videos, cinematography, video excerpts from documentaries or other movies, etc.
   • Famous motion picture trademarks include Columbia Pictures, 20th Century Fox Films, and the Windows logo that displays when we launch a Windows desktop, among others.
   • Due to the presence of numerous major film studios in India, the registration of motion marks is becoming more and more popular as compared to other non-conventional marks.
   • Registration of motion marks under trademark law is uncommon in India due to the high level of examination required for registration.
4. Touch Trademarks or Texture Trademarks: –
   • Touch mark, also known as texture mark, is the least asserted non-conventional trademark because it is not used as frequently as other trademarks.
   • Touch is one of a person’s five senses. The texture of a product can be exploited as a marketing approach to attract customers.
   • Touch markings are one of these non-traditional marks, and in order to be registered under trademark law, they must be distinguishable to typical consumers and capable of graphical depiction.
   • Texture mark is another name for touch mark. The touch mark should not just be a decoration or packaging for a product or service; it should also meet the requirements of a normal trade mark.
   • It is crucial for a touch mark to have purpose and not just serve as aesthetic packaging for goods or services in order to be registered. Examples of touch as a trademark include the velvet touch on Khvanchkara wine bottles and the leather-like substance on brandy or grappa packaging.
   • Because it is difficult to graphically portray the feel of the product texture in many countries, including India, claims for protection under trademark law for touch markings are uncommon when compared to other non-conventional marks.
   • Because touch markings are the least desired mark for registration due to the intricacy of the graphical representation, no such touch marks have been claimed for registration before the Controller General of Patents, Designs and Trademarks, Ministry of Commerce and Industry, Government of India.

3. Holograms Trademarks: –
   • Hologram marks are non-conventional trademarks that combine colours and images that are only visible from a specific angle.
   • The ‘Hologram mark,’ which uses a hologram to identify the origin of items or services, is another non-traditional trademark.
   • The hologram brand will have many hues that may be seen from various angles.
   • As a result, it is very challenging to depict the trademark on paper because it will not be able to catch all of the mark’s motion.
   • Companies mostly employ these types of marks to prevent undesired counterfeit copying of goods and services.
   • The application for registration should contain a written specification describing the varying images of the hologram when it is viewed from different angles which is difficult to express in written form.
   • One of the most well-known uses of the holographic mark is on the toothpaste produced by Glaxo Groups.

4. Colour Trademarks: –
   • Any sign which gives a meaning or message and can also be distinguished by our senses can be trademarked.
   •  The colour can be perceived by our visual senses, which can be interpreted to give distinct meaning. Therefore it becomes eligible to be registered as a trademark.
   • The colour trademark is recognised for colour combinations, but registration of a single colour mark remains ambiguous since it lacks the inherent potential to be unique and because there are numerous shades of a single colour.
   • Another issue with registering a single colour is that because there are so few colours available, allowing trademark registration for a single colour will result in conflicts with competing front-runners and prevent anyone from using the colour.
   • The combination of colours can make the mark look distinct and recognizable. For instance, the purple wrapper of Cadbury has been in use since a long period of time. Hence it has developed a secondary meaning now. This is the feature by which people can now differentiate Cadbury from other brand chocolates.

5. Shape Trademarks: –
   • The shape of a product can also be protected, just as colours, textures, and other non-traditional trademarks, if the customer associates that specific shape with the product.
   • Shapes are considered marks under the Trade Mark Act of 1999 and the UK Trade Mark Act of 1994.
   • However, because shape marks cannot be graphically depicted and are difficult to distinguish from other non-traditional trademarks, registration of them is fraught with difficulties.
   • However, many businesses have been successful in preserving the design of their products, such as the Toblerone chocolate bar, Zippo lighters, Coco-Cola bottles, etc.

6. Sound Trademark: –
   • Anything that is auditory in nature can be a sound mark or an auditory mark.
   • Sound mark is the most protected and registered non-conventional trademark when compared to others, and it is becoming increasingly popular worldwide, notably in the US.
   • The purpose of a sound mark is to assist customers in easily and unmistakably identifying a specific product on the commercial market.
   • Sound markings, in contrast to other non-traditional trademarks, can be graphically represented using a succession of musical notes, with or without the use of words.
   • However, registering a sound mark requires demonstrating distinctiveness and demonstrating that average consumers would associate the product or service with the sound mark.
   • The sound of Harley Davidson, Nokia melody, Tarzan Yell, the corporate jingle “Dhin Chik Dhin Chik” of ICICI Bank is a sound mark which is protected under trademark law and other well-known registered trademarks are some of the oldest and most recognisable in this regard.

Non-Conventional Trademarks Protection under Various Jurisdictions

Since the previous ten years, India’s trademark law has significantly advanced. The Trademarks Act, 1999 was passed in order for the country to fulfil its commitment under the TRIPS Agreement and the Paris Convention for the Protection of Industrial Property (in force since 2003). Many new developments were made after the Act was passed, such as the computerised submission of trademark applications.

Trademarks Act clauses 2 (1) (zb) and 2 (1) (m) must be read together. The interpretation of these two sections reveals that the term “trademark” encompasses packaging, forms, colours, and other elements. Despite these rules, more attention should be used when registering trademarks for things like colour, sound, shape, etc.

Non-conventional trademarks or Unconventional trademarks can still be used to characterise a product as long as they clearly define it, even if they cannot always be defined and depicted graphically.

In recognition of this idea of “acquired distinctiveness,” the Trade Marks Act of 1999’s proviso to section 9 (1) states, among other things, “a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it.” In a similar vein, Section 32 of the Act provides that a mark that was improperly registered (due to a lack of inherent distinctiveness) shall not be declared invalid if the mark has acquired distinctiveness after registration and prior to the start of any legal proceedings challenging the validity of such registration.

It is important to note that sound marks have received the most support from some of the trademark Registries in India out of all the other unusual Trademarks. For instance, in the past two years, India has registered the sound marks for Yahoo and Allianz Aktiengesellschaf. Although it has not been decided whether sonograms would be considered the type of graphical representation intended by the 1999 Act, the argument that both types of representation require an expert opinion is still valid, supporting the use of sonograms. According to reports, Yahoo actually submitted a notational reproduction of the sound along with its digital copy. If this practise were to be adopted, it would be a positive step toward effective trademark protection, provided the recordings are made available on the websites of the trademark registry to give the public a positive notice of the protection.

The need for pictorial representation is emphasised by the 2002 Rules as well. The 2002 Rules allow for the registration of 3D marks using a graphical representation of up to eight perspectives and a specimen, but they are quiet still silent on other non-conventional TMs. The emergence of unconventional trademarks that make distinctiveness a requirement for registration has been welcomed by the Revised Trade Mark Manual (hereafter “the Manual”). It has been made clear that, while non-traditional marks like colour and sound fall under categories that can be registered as trademarks, registration may only be given in circumstances where the use of the mark is unusual and has come to symbolise something else.

The principle of representation imposes the greater obstacle to the registration of scent marks and, similarly, taste markings, even though graphical representation and secondary meaning linked with non-traditional trademarks are sine qua non. Regarding smell markings, the Manual leaves a lot up in the air and only mentions the potential ailment. If a workable and affordable technology is developed that removes the barrier to graphical representation, olfactory markers will be registrable and visibly supported by distinctiveness. The TM forms now do not clearly indicate the type of mark that is supposed to be protected because traditional and non-traditional TMs must adhere to different standards. Even though the shape feature categories like colour combinations and 3D marks, the unusual marks are noticeably absent from such categorization.

The Indian system has undoubtedly learned a lot from the experiences of the European Union and the US, and while its decision to not grant trademark-ability status to olfactory and gustatory marks is based on current practical obstacles, the same may be subject to change in light of the expanding commercial and advertising trends as well as the technological advancements that are occurring.

INDIA’S POSITION

Except for sound markings, which are listed in Rule 26(5) of the Trade Mark Rules, the Indian Trademark Law does not have any particular rules dealing to Unconventional trademarks.

Unconventional trademarks are not defined in the Indian Trademark Law, and there are no processes for registering them. As a result, there are no provisions in place for such unusual marks, which must be addressed. The requirement of graphical representation for trademark registration in India is proving to be a difficulty for the registration of atypical trademarks.

The legal prospects of recognising smell and taste as legitimate trademarks in India have yet to be recognised and explored, since the challenges related with their graphical depiction must be studied and handled. Furthermore, because India is likely to take the same stance as the EU – and, to a lesser extent, the US (which is more liberal) – odours and aromas that are inherent or crucial to the product would be exempt from registration. There is a potential that smell and taste marks will not be given registration on the basis of intrinsic distinctiveness until India develops more jurisprudence on the topic.

In order to prove acquired distinctiveness, there may be a significant burden to show that the smell or taste has come to be associated exclusively with the applicant.

Adoption of colour branding methods, sound and form marks, and unconventional trademarks can play a key part in corporate branding, ensuring that the purpose and quality of products/services are not the only factors that retain their attractiveness in increasingly competitive markets. While we wait for more jurisprudence in this area, the existing trend indicates that Indian courts/tribunals are willing to use a broad approach in order to preserve atypical marks.