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UNCONVENTIONAL TRADEMARKS

INTRODUCTION

 Intellectual property right (IPR) is evolving at a fast rate all over the globe. But what is IPR? So basically IPR is the set of rights given to a person over the creations of his/her mind. They usually grant the creator an exclusive right to exploit his/her creation for a certain period of time which can be extended as per laws. PR are of different types like patent, and copyright, and one such type is Trademark. In this article, we will particularly understand what trademarks are, how trademarks originated, what are various types of trademarks, etc. 

Before understanding what is trademark we need to understand what a ‘mark’ is? Trademark Act 1999 (Hereafter referred to as “the Act”) states the definition of a “Mark which includes a device, heading, ticket, label brand, name, signature, word, numeral, letter, the shape of goods, packaging, or combination of colors or any combination” thereof under section 2(1)(m) of the Act. Further, section 2(zb) of the Act defines a “Trademark as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colors.”

ORIGIN

Trademark Laws in India Originated in 1940. Although there was no statutory law to govern Trademark laws however Principles of equity and Natural Justice prevented people from violating trademark rights. There was a need for a proper statute as there was only a moral obligation and not a legal one, so a proper statute was enacted named Trade and Merchandise Mark Rules, 1959. In 1991 there was the introduction of LPG i.e., liberalization, privatization, and globalization which gave a new dimension to India. As India started to evolve there was now a need for better Trademark laws in India. Therefore, the Act came into the picture. India follows World Intellectual Property Organization (WIPO)’s NICE classification. It is followed by 86 countries worldwide and hence makes it globally accepted. There is a total of 45 classes in the NICE classification out of which, classes 1 to 34 provide for goods or products, and classes 35-45 provide for services.

TYPES OF TRADEMARK

Trademarks are broadly of two types: Traditional Trademark& Unconventional trademarks. Traditional trademarks are markings that are unique to a product and have long been associated with its origin. Unconventional trademarks are a new sort of trademark that has developed over time. An unconventional trademark is a new type of trademark that has evolved with time. These marks require certain conditions that are needed to be fulfilled for them to be a trademark. They are difficult to register because of their unusual nature. It has been noted that unconventional trademarks were previously assumed to be un-registerable due to their peculiar features. However, the world is evolving, and with it, even non-traditional trademarks such as shape, color, sound, and fragrance are now being registered as trademarks. Now we will look at every unconventional trademark one by one.

SHAPE AS A TRADEMARK

It is quite an interesting thing that a shape mark can become a trademark. We all have seen the shape of the coco-cola bottle, it has a unique shape. This also differentiates itself from its competitors. This shape is a trademark done by the company to protect its uniqueness from others. A person without even reading the name of the brand can identify the product by just looking at it. As stated in section 9(3) of the Act, it is important to note that the shape of a good’s mark is not registrable if the shape results from the nature of the good itself or attains a technical result, or gives some substantial value to the product. There are various other examples of shape that has been used as a trademark. Some of them are Carlsberg beer bottle’3Dshape, exterior view of the Taj Mahal Hotel in Mumbai, Kenzo perfume bottles, Zippo lighter, etc.

COLOR AS A TRADEMARK

One might think about how color can become a trademark? Well, one of the unconventional trademarks includes color as a trademark. Though making color a trademark is not as easy as shape or sound. This is because it is easy to distinguish visual appearance or sound but not color. Therefore, it is not as popular as others. Trademarking one color is easier than a combination of colors. Examples of this unconventional trademark are, Tiffany & co. trademarked ‘blue’, UPS trademarks ‘Pullman brown’,and 3M claimed ‘canary yellow’ etc. Owens-Corning was the first company to trademark color in American history. At times conflict may arise between companies as to the use of a particular color for example Cadbury was claiming the use of purple color for dairy milk chocolates however they lost the battle against Nestle. In the case of Colgate Palmolive Company And v. Anchor Health And Beauty Care Pvt. 2003, the plaintiff sued the defendant for using a container that is white and red. The court held injunction orders against the defendant as their containers were similar to those of the plaintiff. Colgate successfully protected its color combination of red and white.

SCENT AS A TRADEMARK

For a scent to be registered as a trademark requires the chemical composition of the scent to be presented as a graphical representation. It is therefore the hardest to be registered as a trademark. The very first smell mark was registered by Sumitomo Rubber in the UK for its floral fragrance. There are not many examples of scent trademarks. Some of them are bubble gum scent for sandals, coconut smell in flip flop stores, strawberry and grape lubricants for combustion engines, etc. In the famous case of Société des Produits Nestlé SA – and – Cadbury UK Ltd Royal Courts of Justice Strand, London, Nestle wanted to get a trademark done for its four-fingered kit kat. However, Cadbury opposed it claiming that there is no distinctiveness in it, the court also favored Cadbury.

SOUND AS A TRADEMARK

A sound trademark is one of the popular unconventional trademarks. One of the essentials to registering a sound as a trademark is that the creator needs to produce a clip along with the musical notations which should not be more than 30 seconds. Some of the examples of sound as a trademark are the Nokia mobile phone’s ringtone, the Intel inside the bong, The Yahoo Yodel, the Airtel ringtone that is composed by A.R. Rahman, and the corporate jingle music of ICICI Bank, etc. India has released the Trade Marks Rules, 2017 which is adopted by EUIPO(European Union Intellectual Property Office). Section 26(5) states that the sound must be presented in MP3 format and it should not exceed more than 30 seconds.

MOTION AS A TRADEMARK

The constitution of motion as a trademark requires two things i.e., sound and movement. Movement without sound cannot be considered motion. The very first motion trademark in India was of Nokia Corporation for its connecting hands. A very famous example is of Microsoft windows logo. Rule 2(1)(k) of the Trade Mark Rules, 2017 states the definition of graphical representation as to the representation of a trademark for goods or services represented or capable of being represented in paper form and includes representation in digitized form. To date, not many companies can obtain a motion trademark because it requires a moving element to be represented on a paper.

CONCLUSION

The Act governs trademarks in India. With the emergence of a competitive market economy, manufacturers began to identify their products by certain symbols, marks, or devices to distinguish them from similar goods manufactured and marketed by others. As a result, new marks that have the potential to become trademarks have emerged. Trademarks preserve a company’s uniqueness, whether it’s in the form of logos, shapes, symbols, sounds, patterns, and so on. To avoid consumer deception or confusion, the obligation to give the validity of the mark by granting them exclusive rights is necessary. To protect their interests, they should secure trademarks for the things that set them apart from their competitors. This will benefit not just them as the owner of the trademark but also help to lift the country’s economy.

Author(s) Name: Bhumi Khandelwal (Guru Gobind Singh Indraprastha University, Delhi)