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UNCONVENTIONAL TRADEMARK: AN UNPRECEDENTED APPROACH TO THE FUTURE

INTRODUCTION

When we talk about intellectual property, it is predominantly the most enchanting area in legal jurisprudence. Under the ambit of intellectual property comes trademark law which has faced numerous developments over time. A trademark can be defined as a mark capable of distinguishing a particular product, goods, or services in the marketplace. One of the key benefits of filing a trademark is that it safeguards the goods and services of a proprietor from illegal impersonation and safeguards the rights and interests of the end users associated with such products & services, removing unwanted confusion. Protection under a trademark is given to conventional marks such as logos, symbols, pictures, signs, names, etc. companies have transformed into more creative entities and using new non-traditional methods to advertise their products uniquely in the marketplace making them distinct from the others. Unconventional trademarks are generally those marks that are distinct from conventional marks and include smell, colour, shape, touch, texture, sound, taste etc. The Indian Trademarks act, 1999[1] has introduced some legal provisions regarding the filing of unconventional trademarks, but the law only identifies colours, the shape of goods and the sound of any product or advertisements, furthermore, the act also make it mandatory that a mark shall be graphically represented in a physical-paper format and must be distinct. However, from 1st October 2017, the European Union does not require a graphical representation of a mark for registration.[2] This article briefly seeks to provide some clarity on unconventional trademarks, the challenges and their growing importance with emerging trends.

WHAT ARE UNCONVENTIONAL TRADEMARKS?

Unconventional trademarks are a new category of trademarks which have a distinct appearance from traditional trademarks. Such trademarks have almost similar properties to traditional trademarks, but getting them registered is complicated due to their unusual distinction. In recent developments, the authorities have faced numerous challenges in registering certain kinds of trademarks that included shape, smell, texture, movement of the body, and even the world-famous Tarzan’s scream.[3] Unconventional trademarks raise a challenging problem of what other things can be incorporated under the scope of a trademark. Now if you look at the Indian scenario the laws are progressing. It has already been witnessed in the case of sound marks for Yahoo [4] and Allianz Aktiengesellschaft [5] which have already been registered by the Indian trademarks authorities. Moreover, a judgement has also been given by the Delhi High Court in favour of “zippo lighters” who were aggrieved of a trademark infringement regarding the shape of their products.[6]

WHAT DOES THE INDIAN LAW SAY?

The trademark rules which came into force on 6th march 2017 have paved a revolutionary era for the registration of unconventional trademarks. The new trademark rules have provided the mechanism for the registration of sound marks as mentioned in Rule 26(5)[7] of the Trade Marks Rules, 2017. Yahoo Inc’s three-note-yodel [8] and the commercial tinkle of ICICI bank[9] are considered the two best examples of sound marks in India till now. Even though a mark lacks intrinsic distinctiveness, brand owners are nevertheless permitted to file for a trademark if the mark has grown distinctive via extensive usage. Even though a mark lacks intrinsic distinctiveness, brand owners are nevertheless permitted to file for a trademark if the mark has grown distinctive via extensive usage. Usually, this is true of coloured markings. It is difficult to prove that a colour combination or a single hue is fundamentally distinctive. The applicant must offer proof during the application process that the colour or combination of colours is exclusively linked with the mark and designates their goods, and that the consumers or customers of the commodity connect the product with the trademark such as ‘The girl on the products of Amul’. The applicant must provide specific justification with regards to the trademarks, that the hue has developed distinctiveness or secondary meaning to such Trademark. The Trademark Act of 1999 is influenced by both US and UK trademark law[10]. The functioning theory is recognised in Indian trademark law as well. Similar to UK law, Indian law requires a graphical representation before a mark is registered.

CHALLENGES UNDER REGISTRATION

The procedure regarding registration of trademarks has largely viewed around a conventional theme, i.e; something that is representable in a visual form and includes words or illustrations. Registration of Non-traditional trademarks such as odour, colour, sound and shape is still capturing more recognition than ever.An applicant seeking to register an unusual mark faces certain challenges. Firstly how can a sound or smell be represented in a graphical format? The graphical representation of words and illustrative marks is straightforward. However, the lacunas arise when a smell or a melody needs to be recorded. However, recording colour marks becomes easy when the person can prove that such colour or combination has a distinct meaning and the applicant used it for so long that consumers associated the colour combination with the applicant. The goods, for example, Cadbury’s purple (Pantone 2865C) milk chocolate wrapping were registered on 1 October 2012 after a long court-driven hustle with Nestle[11]. Although it is possible to illustrate colours graphically by referencing them to some international colour standards such as Panton or RAL, it is rather complex or impossible that colour would be essentially distinguishable. Colour has also been recognised by the Indian judiciary as part of clothing marks and it has been secured in Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd[12]

Further, in the development of Unconventional trademark registration in the Indian judiciary, India simply borrowed the doctrine of Shield Mark for the registration of sound trademarks from the case of Shield Mark BV v Joost Kist.[13] Accordingly, it was held by the Hon’ble Court that, sound can also be registered as a Trademark, only if it can be represented graphically. Although the Indian Trademark industry has not explored a lot in the field of sound trademarks but does follow the doctrine of Shield Mark for registrations of trademarks related to sound.

CONCLUSION

Speaking of Unconventional trademarks in the current regime, the differences between the two i.e; Conventional and Unconventional trademarks are narrowed with time as per one of the philosophies of legal jurisprudence, ‘Law follows the society’. The Laws for trademarks are very dynamic and were made flexible keeping in mind the rapid changes in society. Although the necessary laws and amendments are present in the Indian Legal system, unconventional trademarks are still not easy to register because presenting sound, scent, motion etc. graphically on a piece of paper is a bit difficult.

Author(s) Name: Mohammad Omar Hashmi (Integral University)

References:

[1] The Trademarks Act, 1999

[2] https://euipo.europa.eu/ohimportal/en/elimination-of-graphical-representation-requirement accessed 6 March 2023

[3] Indian Perspective on Unconventional Trademarks “, (International Journal of Emerging Technologies and Innovative Research) (www.jetir.org), ISSN:2349-5162, Vol.8, Issue 8, page no.c988-c991, August-2021,

[4] “ Yahoo Awarded India’s First Sound Mark Nokia in queue”  (Live Mint  Aug. 22, 2008)

first sound trademark awarded to Yahoo Live mint accessed March  8, 2023

[5]  Prakruthi Gowda, “Yet another Sound Mark Granted” (Spicy IP July 30, 2019)

https://spicyip.com/2009/07/yet-another-sound-mark-granted.html accessed March 8,2023

[6] Zippo Manufacturing Company V.  Anil Moolchandani & Ors.,(Delhi High Court October 31, 2011

[7] Rule 26(5) of Trademark rules, 2017

[8]India’s first sound mark live mint accessed March 8, 2023

[9] ICICI secures rights for a corporate jingle, (The Indian Express March 12, 2011)

https://indianexpress.com/article/news-archive/web/icici-secures-rights-for-corporate-jingle/lite/ accessed March 8, 2023

[10]https://ipindia.gov.in/writereaddata/images/pdf/proposed-tm-manual-for-comments.pdf  available at clause 35, 40.9

[11] Loulla-Mae Eleftheriou-Smith, “Cadbury wins battle for colour purple against Nestlé” (Campaign 2 October 2012) Cadbury wins long legal battle with nestle over the colour purple accessed 8 March 2023

[12] Colgate Palmolive Company v. Anchor Health & Beauty Care [2015] SCC ONLINE DEL 13576

[13] C-283/01; European Court Reports 2003 I-14313. 27 November 2003