Authors : Shreya Saxena, Student at Alliance University & Gunjan Maji, Student at Alliance University
In the modern era where trade takes place across borders leading to the formation of an international market, the trademark has come onto the light as an essential tool denote a company’s identity. A good trademark has its image, has a distinct personality which is attached to the goods and services. Thus, becoming the essence of competition. “The “modern industry” is trying to develop new items with a “typical” scent, “touch” quality and “easy tone” so that ‘ordinary consumers’ can find more “sensory” consumer goods.” These trademarks have not reached high acceptance in all legal systems; use of such marks is common in the contemporary market. In the modern market, non-traditional trademarks are developing through practice, and the case-law on this subject has increased, thus, forcing the judicial system took into it with great detail. The studies have shown that there is an increase in the demand from proprietors for registration of non-traditional trademarks in the international trade market. There is no uniform laws and regulations for the examination, registration or enforcement of such trademarks across the globe. Against, the first part of this research will deal with the analysis of unconventional trademarks in general. The second parts deal with the analysis of United States (U.S.), some extent European Union (E.U.), United Kingdom and India for its registration and enforcement. The third parts provide by the various recommendation and conclusion that we will come to from this assignment.
A trademark is a specific branch of intellectual property rights, and these include words, name, symbol, device or any combination of the above used or intended to be used. A trademark is generally used to identify and distinguish similar goods of one manufacturer made or sold from others. Sometimes the trademark becomes a sort of unique identification for particular items, e.g. Mercedes. Trademark after registration works like a weapon in the hands of the registered proprietor to shield other traders to use a similar or identical trademark to sell their goods. Under the act, the registration of the trademark gives proprietor the exclusive right to use it and obtain relief when its rights are infringed. The relief provided by this act are injunction, damages and accounts for profit. Recent years have left dynamic progress of the trademark protection laws accompanied with unprecedented technological growth which leads to the propagation of trademarks across borders, as the development of technology there has been a rise of different types of trademarks, not restricted by 2D representatives or a plain logo. The present trademarks recognize the sound, smell, taste, motion, etc.
A trademark means, ‘a mark capable of being graphically depicted that can differentiate between products or services of one person and those of another, including the ship with products, packaging and colours combined.’ As one can see this definition given by the act is quite broad, any mark may be a word, device, brand, heading, letter, numerical, etc. There are some marks, such as smell and single colours that are not mentioned in the act. There are two different types of trademarks, and they are:
(1) Conventional Trademark.
(2) Unconventional Trademark.
And we will be dealing with the second type of trademarks. An unconventional/non-conventional trademark, this is a new genre of the trademark which is different from the traditional ones.
Some features that make it different are:
- They have a unique identification on the products or services they have been applied to.
- These marks are in the form of 3D structures, sound, smell, taste and texture. Non-conventional trademarks thus can be both:
(a) Tangible signs: Colours, shapes, moving images, holograms, positions
(b) Intangible signs: Sounds, scent, taste, texture
Examples of Non- Conventional Trademarks
India’s recognitions few of these unconventional trademarks in intellectual property regime of our country. Some example of Non- Conventional trademarks are:
(1) Yahoo!’s non-conventional sound mark – Yodel.
(2) The shape of the Coca-Cola bottle
(3) Pillsbury Doughboy’s childlike giggle.
(4) The roar of the M.G.M. lion.
Registrability of non-traditional trademarks:
The trademarks are eligible for protections and enforcement if they comply with certain statutory requirements of the states. These certain requirements may differ from one country to another country depending on its municipal laws or national legislations. Such flexibility in laws of registration and enforcement is provided by the TRIPS Agreement and other international treaties such as the Paris Convention,
Madrid System, Trademark Law Treaty, Singapore Law Treaty, etc. thought these treaties had given flexibility; they also try to provide a sense of uniformity in International Law. There is generally a difficulty in obtaining registration for unconventional trademarks than for conventional trademarks. Many countries provide some form of protection to non-traditional trademarks. Some countries like India, their legislation is silent in regards to few unconventional trademarks like motion trademark, taste trademark, etc. while in other countries, it is either vague or has newly formed Regulation to protect them and their registrability, like a conventional trademark, under article 15 of the TRIPS, unconventional trademarks are to meet the basic pre-requisites: (1) distinctiveness,(2) visual perception or graphical representation. It must consist of a distinctive sign that is capable of serving as a source identifier and not cause confusion to the public and must not deceive the public.
ANALYSIS OF UNCONVENTIONAL TRADEMARKS IN UNITED STATES OF AMERICA.
The Trademark Act, 1946 grant protection to unconventional trademarks. Granting protection has been significantly easy in the U.S. as trademarks have been defined broadly as those marks which are completely non-visual and would only require a detailed verbal description or any graphical representation of the mark, are equally capable of getting registered under this act, any mark that is non-visual in nature would only require a detailed verbal description for it to be considered for registration. In the United States, trademarks are governed by The Lanham Act, 1946. There are certain requirements of Standard registration of non-traditional trademarks; there must be acquired distinctiveness and functionality; these two are common issues faced.
The oldest unconventional mark registered is the National Broadcasting Company (N.B.C.), ‘jingle’ which received protection under the category of Sensory Marks by the U.S. in 1970. Jingle, with a description of notes and not accompanied by a notation sheet. Further, unconventional trademarks such as singular colours, smell or olfactory marks also acquired trademarks, when they do not perform any function in the relevant industry and have acquired distinctiveness.
Thus, Sound Marks became the centre of evolution in trademark laws. This lead to the inclusion of sensory and other unconventional trademarks. These unconventional marks need to satisfy the following criteria, they are:
(a) Acquired secondary meaning,
(b) Functionality Test, an
(c) Likelihood of confusion in the absence of protection; apart from other procedural requisites.
Secondary meaning or acquired distinctiveness of a mark is a must for registration of any trademark. In Inwood Laboratories case, it was observed that “The manufacturer should show, to create secondary meaning, that the primary value of a function or word in the public minds is to describe a product’s source, not the product itself.”. The acquired distinctiveness of a trademark is also termed as its factual distinctiveness. This factual distinctiveness differs from inherent distinctiveness in the sense that while inherently distinctive marks are distinctive from the very inception, a mark will be considered to have acquired distinctiveness if it can be shown that irrespective of its primary meaning the mark now conveys to the consumer’s information as to the “badge of origin” of the product.
Therefore in order to prove the acquired distinctiveness of a trademark, it has to be proved that the mark has acquired a new meaning in the mind of the purchasing public which was initially lacking distinctiveness and has displaced the primarily non-distinctive meaning of the mark.
The functionality test envisages refusal to grant T.M. protection when the feature is essential to the genre of goods to which it is being applied, or when a grant of such protection makes the production cost-prohibitive, examples of which have been discussed above. The criteria though not easily met leaves much scope for speculation in the absence of mandatory representation.
in the U.S., office supplies like a folder, hanging files, paper expanding files, etc. had a distinct ‘vanilla’ smell or fragrance and were registered as their trademark.
For an example of the touchmark registered in the name of American Wholesale Wine & Spirits, Inc. of Glenview, Illinois for a velvet-textured covering on the surface of a bottle of wine, for wines in Class 33.
ANALYSIS OF UNCONVENTIONAL TRADEMARKS IN UNITED KINGDOMS.
The U.K. Trademark Act defines a trademark as ‘any sign capable of being represented graphically and distinguishing goods and services of one undertaking from that of other undertakings. A trademark may in particular consist of words, designs, letters, numerals or shape of their goods or packaging’
The graphical representation is mandatory in the U.K. to get the registration of a trademark. A trademark may be a sign that is not capable of being perceived visually, i.e. it can be represented graphically. The U.K. court laid down the following criteria for graphical representation of a trademark in Sieckman vs Deutsches Patent-und Markenamt, The Court held that the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
- Requirements for Registration of a Trademark:- According to Article 2 of the European Directive And as per the U.K. Trademarks Act, 1994, there are three main requirements for being registered as a trademark in the U.K. They are as follows:-
(a) The trademark should be a sign or anything that can convey information.
(b) The sign should be capable of distinguishing products or services of one undertaking from that of another. This is clearly a requirement of the distinctiveness of trademarks.
(c) The trademark is capable of graphical representation.
TRADEMARK LAWS IN INDIA.
Trademarks are the tools that help us distinguish products of one trader from that of another. They help us with creating the brand image and having a unique trademark like that of sound, smell or colour makes the advertisement of the said product easier. The Indian Law is trying to catch up with the new techniques which allow us to register unconventional trademarks.
There has been an improvement concerning the Law regarding trademark in Intellectual Property Laws. The Agreement which was made on Trade-Related aspects of Intellectual Property Rights (TRIPS Agreement) recognizes different types of trademarks which does include the unconventional trademarks. And India is a member of such an agreement. An unconventional trademark as said are distinctive in nature and ignoring it would be ignoring an entire part of trademarks. According to research, ignoring such trademark would ignore the needs of a section of society these unconventional trademarks help like “to those for whom visual perception often becomes difficult or even impossible: the visually impaired and illiterate.” This helps not only the consumers but also the companies as it leads to the easier advertisement, newer market, increasing in benefits and a new segment of purchasers. Some people say that if the unconventional trademark were to receive protection, then registration laws of the trademark would be exposed to a large number of the prospect. As long as the mark is not functional and is unique, there should not be an issue in registering even an unconventional trademark.
Vast improvement can be seen in the trademark laws of India in the past ten years. This is because there has been a need to meet the obligations laid down under the Paris Conventions and the TRIPS Agreement. The Trademarks Act, 1999, deals with the definition of the trademark, which includes shapes, packaging and combination of colours. It not only includes “marks as long as they are capable of being graphically represented and distinguishing goods and services of one from that of another” but also stated that unconventional trademarks require special consideration for the process of registration.
The unconventional trademarks need not be graphically represented as long as it has a clear description along with the proper definition, precise and easily accessible. But in accordance with the Indian Laws, the legislature has explicitly mentioned that such trademarks need to be graphically represented.
“ It is conditional that a mark is graphically represented when:
- A graphical representation of a trademark can promptly decide what the sign is;
- The graphical representation of a trademark can substitute the mark because it represents that sign and no other;
- It is reasonably practicable and easy to understand what a trademark while inspecting the register, reading the Trademark Journal and understanding what the trademark is, for a person.”
Thus, let us know that India has taken up graphical representation in case of sound marks and applied the doctrine of Shield Mark.
ANALYSIS OF UNCONVENTIONAL TRADEMARKS IN INDIAN STRUCTURE AND RECENT DEVELOPMENT IN SUCH LAWS.
There are various unconventional trademarks, and only a few of them are applicable in India. They are as follows:
An audio clip or a sound clip is a form of the non-conventional trademark which exclusively identify the particular product. Only a few countries have a particular set of standards or requirements to take sound as a trademark. These standards were not originally incorporated in all of these countries. Some of them included them due to the large and widespread technological development, and others evolved their laws due to cases of prosecuted.
Development of Unconventional Trademark: Sound.
There has been a new update in the trademark laws in India, and it is called The Trade Mark Rules, 2017 (“The Rules”). Legitimization of sound under this set of rules says that any sound can be registered as long as they are “graphically represented”. “Graphically Represented” is to ensure the preservation of the traditional approach of the trademarks.
Yahoo’s Yodel was the first sound trademark to get registered in India. The Yodel was represented graphically with musical notes. Then there is a sound mark registered by a German company called Allianz Aktiengesellschaft. The latest trademark was registered by I.C.I.C.I. Bank in 2011 which is it’s corporate jingle “Dhin Chik din Chik”.
When colour is combined with other factors like words, symbols, logos and other such unique features, then it is said to be a good trademark but colour never alone has received much attention in the past years. The question is whether colour alone can be a distinguishing factor and how is one to differentiate between the various shades of colours. The main problem is that if the colour were registered, then the suits would be lengthy due “shades” of that particular colour is registered or not and if there is an infringement or not. This would slow down the process of registration of trademarks.
Under this doctrine, if the feature for which the registration is asked for is useful or in any way affects the quality or cost of the product, such feature should not be registered as a trademark as it would be a great disadvantage to the competitors.
Development of Unconventional Trademark: Colour.
The trademark rule, 2017 has added an important clause which promotes colours as a sole requirement for trademark. It says colours can be registered as a trademark as long as they are distinctive in nature, and the applicant of the trademark can reproduce them as they are.
Due to the recent development in laws relating to trademark, the courts also have decided to take a liberal approach. The Delhi High Court has in favour of the plaintiff Christian Louboutin ordered an ex parte permanent injunction. Plaintiff has a famous shoe brand with distinctive red soles. The courts came to the conclusion that the red soles are a very particular shade of red and have acquired distinctiveness along with it having a well-known status in Indian Market. “The Plaintiff’s trademark ‘RED SOLE’ wherein a specific tone of the colour red (pantone no.18.1663TP) is used to the outsole of a shoe, it is pretty unique and came in the wast world of fashion only after it was introduced by the plaintiff herein.”
Smell or Olfactory Trademarks are less in number in comparison to Sound or colour trademarks. This is because these trademarks are rare and also very difficult to be graphically represented. The graphical representation of scent has only been verbal. The only way one can graphically represent scent is giving its chemical formula, which in itself is not an easy task. Another problem with this trademark is that it’s challenging to differentiate one smell from another. There is no fail-proof method for the identification of this sort of trademark.
The smell can only be registered if it meets the needs of the functionality doctrine. Any smell of a product that has a functional use which can lead the consumers to recognize the product that is the smell is descriptive in nature of the product; then such a smell cannot be registered as a trademark. Another reason may be that smell would cause a significant disadvantage to the competitors. However, there is no straight forward definition for functionality. An example can be taken; like lemons in garbage plastic bags, although the smell is distinctive, it is functional in nature because, with the lemon-like fragrance, it can mask the smell of waste and garbage. There is a utility to the smell. Thus, it cannot be used as a trademark.
There are a few smell trademark registered all over the world. A European Registered trademark is the smell of freshly cut grass for tennis balls, in the U.K. for dart flights the smell of bitter ale and smell of roses for ties. Even in the U.S., office supplies like a folder, hanging files, paper expanding files, etc. had a distinct smell or fragrance and was registered as their trademark. All these smell do not have any form of utility towards the items they are being emitted from. Thus, passing the function test.
Film clips, video, animation, logos, moving images are also qualified as motion trademarks and are registered in some counties. Motion trademarks are also known as animated marks, moving marks, or movement marks. Each motion or movement of such marks is to be explained in details in a step by step format so that trademark is understood. Such trademarks are not registered in India.
Hologram trademarks are registered by the U.S. and few European countries. The hologram should be distinctive in nature that uniquely identifies itself and the products and services against which they are to be registered. But India has not identified the registration of holograms as trademarks. The problem arises when the mark is to have a graphical representation as holograms are multiple images clubbed together with various colours. It is perceived differently from different angles. Thus, making it difficult to be published in a paper. Therefore, not adopted by India.
Touch trademarks are the sensation one feels when they hold a product with a very particular packaging or quality that distinguishes them from their competitors. Like tissues or napkins may be particularly soft or moist or products with very good grip that is products which can be held comfortably. Some products have braille applied to them. The touch trademark should not be functional in nature and should be graphically represented. They should be distinctive in nature, and there should be evidence of distinctiveness acquired through use. An example of a touch trademark- “A velvet-textured covering on the surface of a bottle of wine”, registered in the name of American Wholesale Wine & Spirits, Inc. of Glenview, Illinois, U.S. Registration No. 3155702, for wines in Class 33.”
This trademark is not present in India.
Trademark of taste is very difficult to distinguish as there is the natural flavour of the product, and there is the recipe from which the good is manufactured. It is also very difficult to distinguish the taste from those of the competitors. The manufacturers consider the taste of their drinks to be unique, and these recipes are closely guarded secrets. The taste itself is very subjective as and therefore, it is challenging to define well as compare. What may be a spice for one can be bland for another.
This type of trademark is not present in India.
The Indian Trademark regime has concentrated its focus on the idea of graphical representation for the trademarks. According to India trademark act, 1999, it puts an obligation on the trademarks which are to be registered to be graphically represented that is in a sheet of paper with ink. Thus, making unconventional trademark registration the hardest in India. There has been development in trademark laws in India which has allowed us to register sound trademarks, colour trademarks as well as a 3D trademark but for the registration of the 3D trademarks, there has to be at least graphical representation of eight sides and a specimen. The New Trademark Rules Manual leaves with very unsatisfactory Regulation with respect to smell which “theoretically” said to be graphically represented. Thus, only leaving a slight possibility for application. Eliminating the graphical representation would be cost-effective and would help in the easier representation of such trademarks accompanied by its distinctive feature. As India’s a developing country, the registration of unconventional trademarks is more expensive, and often the parties have not enough money to acquire the graphical representation of such trademarks.
In a most concrete sense, this can be said that the Indian Trademark laws have been trying to catch up to the modern marketing and the manual has looked into several issues that have been causing the structure to lag behind in comparison to those of the developed countries. Thus, providing strong and powerfully built and structure which will slowly evolve and be at power with the present structure of Intellectual Property Laws of those developed nations. India has been a very active member in the community Intellectual Property Laws and thus, should be able to protect the businesses of numerous makers and also the goodwill of the consumers and also to make the necessary changes.
With respect to TRIPS and other related worldwide trademark regulatory instruments, there is a serious need for minimizing the conflicts arising from trademark systems worldwide. Hence, it is necessary to protect non-traditional trademarks in the interest of international trade.
“There are two significant issues:
- The arrangement of criteria for the registration of these trademarks, and whether the trademark registry which deals with the matters concerning registration could apply to them by analogy the same criteria it applied to traditional marks.
- The harmonization of modalities for registration, especially what would be considered an appropriate representation of the sign. It should be made perfectly clear that whether the registry should apply the same criteria of the distinctiveness of trademark than for more traditional marks and what all criteria would be for graphical representation, particularly of non-visible signs.”
Uniform guidelines for the graphical representation of non-traditional trademarks should be made by WIPO. The Standing Committee on Information Technologies (S.C.I.T.) of WIPO should provide proper guidelines for the description, representation and the application of trademark principles to non-traditional trademarks. There are still areas in this regard, which are:
- The potential economic relevance of these trademarks for less developed markets.
- The possibility of overlapping protection of trademark.
The marks which have acquired distinctive character and same can be proved, should not be barred from getting registered on the basis of graphical representation. In the global market, where international trading id did, there should be uniformity among the laws and policies among the TRIPS member states concerning the registration of non-conventional trademarks and conventional trademarks. Where there are more jurisdictions involved with a relaxed and liberal interpretation of trademark and with the inconsistencies existing in some countries surrounding the interpretation of graphical representation makes it difficult for the proprietors selling goods in international markets under non-traditional trademarks. Hence, this reminds the international market a need to develop a uniform policy and new laws concerning the registration and protection of non-traditional trademarks.
 Non-Tradition Trademark by Lisa P. Lukoes (Abstract)
 Harsimran Kalra, Unconventional trademarks: the emergent need for a change, Indian Law journal,2007 available at- http://www.indialawjournal.org/archives/volume4/issue_1/article_by_harsimran.html
 Inwood laboratories Incorporation v Ives Laboratories Incorporation, 456 U.S. 844 (1982)
 Registration No. 72349496
 Registration No. 75332744
 Registration No. 74629287
 Registration No. 3143735
 RLR Volume IV Issue I (Registration No. 3155702)
 Trademarks act the U.K., 1994, section 1(1)
 Sieckmann v. Deutsches Patent-und Markenamt(C-273/00)  E.T.M.R. 37
 The Directive requires European Union Member States to adopt or ‘harmonize’ their respective trademark laws to comply with the Directive’s provisions. The Regulation instituted a unitary trademark system in which a single registration of a Community Trade Mark grants exclusive protection and rights to the trademark holder in all European Union countries simultaneously.
 Torremans Paul Carl Leo, Trademark law: Is Europe moving towards an unduly wide approach for anyone to follow the example?, Journal of Intellectual Property Rights, 10 (2) (2005) 128, 131.
 David Vaver, ‘Unconventional and Well-Known Trademarks’ (2005) 1 Singapore Journal of Legal Studies 8
 Section 2(1)(zb) of the Trademark Act, 1999.
 as per section 26(5) of The Trademarks Rules, 2017, “where a trademark application for the registration consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format accompanied with a graphical representation of its notations”.
 Peter Ollier, 183 MANAGING INTELLECTUAL PROPERTY 14 (2008); Shamnad Basheer, India’s first “Sound Mark” Registered.
 As per section 26 (2) of the Rules, colours can be accepted for trademark registration if the applicant “wishes to claim the combination of colours as a distinctive feature of the trademark, the application shall be accompanied with the reproduction of the trademark in that combination of colours”.
 Christian Louboutin S.A.S. v Ashish Bansal & Another
 RLR IV Issue I (Registration No. 3143735)
 RLR IV Issue I
 E. Lilly and Co., Trade Mark Application No. 1452853, Case R 120/2001-2 (OHIM Second Board of Appeal Aug. 4, 2003).
 Taste (or flavour) marks can be registered. In order to register a flavour as a trademark, an application can be made which requires a substantial showing of acquired distinctiveness. (In re N.V. Organon, 2006).) There are no registrations as such for taste or flavour. It has been observed by T.T.A.B. that “how a flavour could function as a source indicator is not exactly clear because prior to the purchase a consumer has no access to product’s flavour or taste generally and it also performs a utilitarian function”.
 Lisa Lukose, ‘Non-Traditional Trademarks: A Critique’ (2015) Journal of the Indian Law Institute, Vol. 57 Issue 2