Trademarks is an important aspect of Intellectual Property Rights (hereinafter referred to as “IPR”) which are governed under Trade Marks Act, 1999 (hereinafter referred to as “Act”). A Trademark is a sign or symbol, word or phrase that helps identify or differentiate the business from others. Trademarks are defined under Article 15 of the Trade Related Aspect of Intellectual Property Rights (hereinafter referred to as “TRIPS”) Agreement. Generally, Trademarks is given to Traditional marks like logos, images, symbols captions, names, etc. But with the market and economy getting competitive in recent times, brands have come up with Non-Conventional and creative Trademarks for identification of their products and to get the factor of exclusivity.
Non-Conventional or Non-Traditional marks such as smell, touch, colour, shape, texture, sound, taste, etc. are not covered in the purview of traditional marks as Trademark protection is given to those marks which can be graphically represented. However, certain Non-Conventional marks are registered as they have the ability to create a particular sense of identification that set them apart from other products in the minds of the consumers.
Satisfying the obligations of the World Trade Organisation (hereinafter referred to as “WTO”) and following the provisions laid down in the TRIPS Agreement, Section 2(b) of the Act has broadly defined the concept of Trademarks in order to include Non-Conventional Trademarks. Graphical representation of the mark being one of the essential conditions for Trademark registration in India, poses certain obstacles in the registration of Non-Conventional Trademarks. The amended version of the Trademark Rules, 2017 (hereinafter referred to as “the Rules”) however, has permitted the digitalised graphical representation in order to ease the process of registration of Non-Conventional Trademarks. Therefore, with time, Non-Conventional Trademarks are slowly making their way into the Indian jurisprudence.
REGISTRATION OF NON-CONVENTIONAL TRADEMARKS
Registration can simply grant additional exclusive rights to the Trademark. The key factor for a mark to be considered a Trademark is widespread consumer recognition. Registering a Non-Conventional Trademark poses challenges due to the requirement of graphically representing the unconventional subject matter of Trademark application.
In Indian Legislation and TRIPS Agreement, there is limited mention of these diverse kinds of Trademarks. Therefore, reliance is placed on judicial precedents established over time.
According to Rule 2(1)(k) of the Rules, graphical representation refers to representation of a Trademark that can be represented in paper form or digitized form. The European Court of Justice (hereinafter referred to as “ECJ”), in the case of Sieckmann v. German Patent and Trademark Office [C-273/00], elaborates on the criteria for graphical representation and held that the representation should be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
World Intellectual Property Organization (hereinafter referred to as “WIPO”) suggests that a Non-Conventional Trademark application should always be accompanied by a declaration specifying the type of mark sought. The absence of such a declaration may raise questions about the type and character of the mark, whether it is Traditional or Non-Traditional.
TYPES OF NON-CONVENTIONAL TRADEMARKS AND THEIR LEGALITY IN INDIA
1. Sound Trademarks
Sound Trademarks are for any product, or service that is of auditory nature. Sound Trademarks are gaining popularity in many countries especially the United States which has the Sound Trademarks as the most registered Trademarks in comparison to other Non-Conventional Trademarks. Awareness of Sound as a Trademark in India is also rising quickly. A jingle, musical composition, or a sound has a significant influence in contributing towards brand recollection and facilitates in improving the brand valuation of the business. As Sound cannot be graphically represented, it cannot garner protection under Trademarks. However, if the Sound is represented graphically by a series of musical notes with or without words can perhaps claim protection under the Act. Some of the oldest Sound Trademarks in this regard include the sound of Harley Davidson, Nokia Tune, Tarzan Yell, etc.
Two of the best examples of Trademarks granted in India in the years 2008 and 2011 were Yahoo Inc’s three-note yodel and the ICICI Bank’s corporate jingle respectively. Other examples include Britannia Industries’ four-note bell Sound, Nokia mobile phone’s default ring tone, Metro-Goldwyn-Mayer film’s lion roar, Raymond: The Complete Man’s musical sequence, Edgar Rice Burroughs’ Tarzan yell, National Stock Exchange’s theme song, etc.
In order to register a Sound as a Trademark in India, the Office of Registrar of Trade Marks mandates the submission of an MP3 recording of the sound, which should not exceed a duration of 30 seconds, as stated in Section 26(5) of the Rules. Additionally, a graphical representation of the notations related to the Sound must also be included. It is important to note that as per the Draft Manual prepared by the Indian Trademark Office in 2015 of Trade Marks Practice and Procedure, the application should explicitly indicate the intention to seek Trademark protection for a Sound.
India has recently adopted the ‘Shield Mark Doctrine’ in its regime which drew its influence from the landmark judgement of Shield Mark BV v. Joost Kist [Case C-283/01; European Court Reports 2003 I-14313]. It gave guidance for filing a Trademark application for the registration of Sound marks. The judgement also clarified that the Sound must be distinct enough to qualify for registration. The Trademark of Sound, with the help of its solid legal basis, can be useful in the growth and building the image of the business.
2. Smell Trademarks
When a particular product has a particular smell which is distinct from other similar products in the market which can be graphically represented is eligible to be protected under Trademark. However, since then, registering Smell as a Trademark s are hard to come through as Smell is defined in a subjective manner and is open to interpretation. These difference of opinions in interpretations of Smell and its identification acts as a barrier to obtaining registration of Smell as a Trademark.
Although many jurisdictions in the world have accepted and recognised the registration of Smell as a Trademark, it is yet to be recognized in India. . The Smell Marks were first registered in the United Kingdom by a company called Sumitomo Rubber for a floral fragrance that was used in vehicle tires. In the case of Re Celia Clark [17 U.S.P.Q. 2d 1238 (1990)] another Trademark of Smell which was registered for threads in the US IN 1990 for a floral fragrance which was similar to Plumeria Blossoms. The Court in this case opined that the smell is not the intrinsic factor for its functioning but it passed the tests of non-functionality and uniqueness.
However, since then, Smell Trademark registrations are hard to come through as Smell is defined in a subjective manner and is open to interpretation. These difference of opinions in interpretations of smell and its identification acts as a barrier in obtaining registration of Smell as a Trademark. Surprisingly, in India, no Smell marks seem to have been registered till date.
3. Taste Trademarks
The exemplification of Taste Trademarks happens to be one of the most challenging of all other Non-Conventional Trademarks. However, some countries have included the registration of Taste Trademarks to identify the goods in markets. Just like Smell, Taste Trademarks also must possess a factor of distinctiveness from the inherent function that the product performs. The Taste mark can be illustrated by providing a written explanation of the taste which makes it different from other products in the market. However, it is difficult to fathom the exact taste as it may be ambiguous and confusing making it difficult to identify the taste that the product entails which it wishes to Trademark.
Moreover, the Draft Manual of Trademarks Practice and Procedure, 2015 doesn’t mention the process of registration for Taste Trademarks due to the difficulty in representing the mark graphically and recognising the distinctiveness of the mark. Another shortcoming of the mark is the Doctrine of Functionality which makes it difficult to create a factor of exclusivity which is inherent in obtaining the registration of Taste Trademarks.
4. Colour Trademarks
Colour is seen everywhere however it’s difficult to specifically distinguish between shades of a Colour which often creates confusion and ambiguity in the minds of consumers. Colour Marks are predominantly of two types- those having single colours and the ones having combination colours. The Colour Trademark is recognised for combination of Colour in Sections 2(1)(m), 2(1)(zb) and 10(1) of the Act. But the registration of a single Colour mark possesses certain issues due to its different shades.
The Section 9(1)(a) of the Act also states that Trademarks which do not have the quality of distinctiveness cannot be registered as Trademarks, hence, limiting the chances of Trademarking colours in India as single colours are easily found and commonly used. Another shortcoming of Trademarking Colours is that, they are limited in terms of number. There are only a certain number of colours and if they are Trademarked, it will end up in no one being able to use those colours in their business.
Yet, there are many companies that have Trademarked certain Colours such as Cadbury has protected its Royal Purple Colour, Barbie has its shade of pink and Canary yellow which is protected by 3M Company. In India, the law regarding is extremely ambiguous and the judiciary has been conferred discretionary power in this regard.
In Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd. [2003 VIII AD Delhi 228], the Hon’ble High Court of Delhi put restrictions on the defendant from using the colour combination of red and white of the plaintiff in the packaging of their products and also ruled that copying the colour of another product was equivalent to passing off. However, 4 years later, in the case of Cipla Ltd. v. MKI Pharmaceuticals [MIPR 2007 (3) 170, 2008 (36) PTC 166 Del], the plaintiff pled for an Interim Injunction restricting the defendant from making use of the colour orange in the production of their products. In this case, the Hon’ble High Court ruled that there cannot be a claim of monopoly over colours and replicating the use of colours made by another business would not amount to passing off.
Subsequently in cases of Dabur India Ltd. v. Shree Baidyanath Ayurved Bhawan Pvt. Ltd. [(2012) (51) PTC 441 (Delhi)] and Seven Towns Ltd. and Ors. V Kiddiland and Ors. [(2016) (68) PTC 308 (Delhi)], the Hon’ble High Court of Delhi reiterated the Colgate Palmolive Co. judgement (supra).
Thus, registering Colour as a Trademark is a very subjective matter and differs from case to case and requires judicial interference.
5. Shape Trademarks
The Shape of a product can also be protected under the Act if the Shape is of a particular kind that is distinct. The Act inculcates shapes as marks in their purview while defining Trademarks. However, its registration is also full of obstacles because of its inability to be represented graphically and its lack of showing distinctiveness. Some companies still gain protection under the Act including Toblerone for the shape of chocolates, the shape of zippo lighters, the shape of Coca-Cola bottles, etc. In the Act, Shape of goods are covered under Sections 2(1)(m), 2(1)(zb), and 9(3) provided the Shape is distinctive in nature and can be graphically represented.
Indian Courts have mostly been consistent in their judgements with regard to recognising Shape as a Trademark. In the case of Lilly ICOS LLC and Anr. v. Maiden Pharmaceuticals Ltd.[(2009) 39 PTC 666 (Delhi)], where it was alleged that the defendant had copied the almond shape of the plaintiff’s product. The Hon’ble Delhi High Court ruled its judgement favouring the plaintiff and issued an injunction against the defendants for the same.
Interestingly, Shape had been recognised by the Indian Judiciary as Trademark, prior to the enactment of the present Act. In the case of MRF Ltd. v. Metro Tyres Ltd. [(1990) PTC 101], in 1990, where the plaintiff pleaded for a permanent injunction restricting the defendant from engaging in the business of manufacturing and selling tyres with tread patterns, which were similar to the ones done by them. The Hon’ble Delhi High Court favoured the plaintiffs in their judgement and observed that identical patterns used in the business as in the instant case, would create confusion amongst consumers with regard to the origin of the product.
Trademarks aids customers in tracking the origin of the product and help recognise the goods or services in the market. In the competitive nature of economies, as it is in today’s times, Trademarks helps garner certain intangible advantages in business such as goodwill, brand image, reputation etc. which prove to be highly advantageous in the long run. Therefore, companies put extra efforts in building the uniqueness of their product and adding the exclusivity factor to distinguish their products from other competitors in the market and get them trademarked.
With advancement in technology and the furtherance of creativity and entrepreneurial skills come the possibilities of Trademarking Unconventional items that are perhaps intangible or are difficult to graphically represent. However, these Unconventional Trademarks aren’t fully explored in India, there still exists a dearth in the Indian legal jurisprudence in this regard.
– Team AMLEGALS assisted by Ms. Aayushi Udeshi (Intern)
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