Unconventional/Non-Traditional Trade Marks in India

Growth of Trade, Commerce and Industry in India has given an impetus to the need of protecting Trademarks over the years.

Growth of Trade, Commerce and Industry in India has given an impetus to the need of protecting Trademarks over the years. A ‘Trademark’ is a mark which is capable of being represented graphically and one which distinguishes the goods and services of one from that of others. The inclusive definition of trademark entails the possibility for getting anything not expressly excluded capable of being registered as trademark so long as it meets the requisites mentioned in the Trademarks Act.

In spite of being intangible, the intellectual property rights are the most important asset of any trade. Businesses can protect their trademarks in form of a “Word Mark”, “Label”, “Logo” and “Device Mark” and often face dilemma to whether register their logo or word mark as trademark or both.

Nevertheless, the global economic order has obligated India to adopt a liberal approach in the foreign trade policy, thus bringing in the complicated issues of recognition of a brand via jingles, songs or stories instead of logo or word marks, compelling it to make momentous changes to discover the new concept of “Unconventional Marks”. They are also known as “Non-traditional Marks” as against the traditional trademarks.

The TRIPS Agreement at the WTO introduced the concept of unconventional/non-traditional marks and in process of incorporation in domestic IPR regimes all over the globe. The TRIPS broadened the legal definition of trademark to incorporate “any sign capable of distinguishing the relevant goods or services of one undertaking from those of other undertakings”.

Unconventional marks are a novel concept and are unlike the traditional trademarks not restricted to letters, numerals, words, logos, pictures, symbols, or combinations of these but are based in appearance, shape, sound, smell, moving images, holograms, positions, scent, taste and texture. Accordingly, they may be visible as well as invisible signs.

SOUND MARKS

The Indian Trade Marks Act does not contain any provision that expressly allows registration of “Sound Mark” as a trademark. However, it has been unequivocally held that a trademark must be capable of distinguishing the applicant’s product/service and can be graphically represented. Accordingly, a sound is capable of graphical representation via a series of musical notes and can be registered as a trademark, with or without the words.
As per the Manual of Trademarks, Practice and Procedure, 2015, applications for a sound mark registration must be submitted in MP3 format and must not exceed 30 seconds in length, recorded on a medium permitting clear audible replay and accompanied with a graphical representation of the notations establishing the sound mark. Modern staff notations are usually accepted.

In India, Yahoo!’s yodel is the first sound mark to be registered and the corporate jingle of ICICI Bank is the first sound mark registered in name of an Indian company. The sound of ‘Hisamitsu’ crooned over certain musical notations on a proposed usage and the sequence of “Raymond: The Complete Man” have also been registered in India as sound marks.

SHAPE MARKS

Any distinctive shapes of goods, the packaging or 3D objects adept of graphical representation can be protected as trademark in India. The Act includes ‘shape of goods’ in the trademark’s definition but the following act as statutory bar to shape mark registration:
  • The shape of good must not result from the very nature of the goods themselves.
  • The shape of good must not be indispensable to attain a technical result (functionality).
  • The shape of good must not provide considerable value to the goods.
The shape of ‘Zippo’ lighters, bottles of John Distilleries Limited and bottles of the Coca-Cola Co. have been awarded shape marks in India.

SCENT/ OLFACTORY MARKS

These are the most difficult to register as trademarks as they lack the quality of meticulous graphical representation and precise description in written form and cannot be recorded in any form making it very subjective and puzzling. Although a scent can be graphically represented through its chemical formulae along with evidence to reproduce the particular fragrance.

Registration of a scent mark depends on the following:
  • The person to apply for registration must be the one and only to market the concerned product.
  • The scent must not be an inherent or natural characteristic of the product.
  • The olfactory mark must be advertised as such attribute of the product.
  • The consumers must recognise the product as the source of such scent.
MOTION MARK/ HOLOGRAM

The logo of Microsoft, which flutters like a flag, is one such example of a registered motion mark. A hologram or motion mark is a lively mark, portraying a sequence of movement of positioning of images, creating an illusion of movement, which can be represented graphically and achieves the standards to be registered as a trademark. In motion marks the motion and successive images are imperative.

The Nokia Hand-Shake motion mark has been awarded in India.

COLOUR MARKS

Colours are eligible to be registered as a trademark as they can be visually perceived and capable of distinguishing a product from that of others. A combination of colours can be distinguishing enough to be registered as a trademark.

However, single colour as trademark is a grey area in trademarks law regime as it is extremely difficult to prove distinctiveness via one colour only. Moreover, if the trademark is granted it may result in unnecessary multiple litigations opposing such grant as well as that of unjust competitive practice in form of creating a monopoly over a particular colour.

Therefore, colour marks need to be judged on the absolute principle of distinctiveness before being granted as trademarks.

The Indian trade mark law identifies the registration of a single colour mark in the Manual of Trademarks, Practice and Procedure, 2015, which provides that it shall be protected on strict evidence of acquired distinctiveness and protection so granted shall be strictly to the extent of that particular shade of colour only. An applicant needs to satisfy twofold essentials to establish his single colour mark as distinctive. Firstly, it is very unusual and peculiar in a business such that there is no connection between the product and the colour. Secondly, it is recognised by the consumers as a symbol of origin for particular goods.

It is extremely subjective that the colour forms identity of the product. However, if through usage the mark becomes a “Well- known Mark”, it makes the registration easier though.

In 2007, in Cipla Limited vs M.K. Pharmaceuticals, the High Court of Delhi denied trademark protection to a blister packaging of a distinguishing orange coloured, oval-shaped tablet.

The blue colour of Parachute Coconut-oil bottle has also been granted protection in India by the same court.
Moreover, Victorinox (brown colour label) and Telekom (magenta colour label) have been provided with trademark registration of single colour marks.

In Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd., the colour combination of Red and White was in question. The High Court of Delhi held that if a product with a distinctive colour combination, style, shape, and texture has been in the market for quite some time then it can be inferred that to have acquired secondary meaning on account of its reputation and goodwill.

In Britannia Industries Ltd. v. ITC Ltd., the High Court of Delhi held that Britannia could not be restrained from using the combination of yellow and blue colour combination in trade dress for its biscuits as ITC failed to establish that the same has become a badge of goodwill.

However, the High Court of Delhi in 2018 turned down the red shoe sole to Christian Louboutin as colour mark although it is a well-known brand known all over the world in luxury products.

Adoption of colour, sound, shape branding strategies go a long way in corporate branding in an exceedingly competitive markets to guarantee that only quality of the good/service do not bear the charm.

It can be safely concluded that there exists the concern for graphical representation in registration of unconventional trademarks in India but the criteria is not much different from that of traditional ones. There is a need to come up with suitable methods for representation of unconventional marks. Indian IPR law needs some change to become adept to such concepts and incorporate the provisions in the act itself to clarify the registration criteria for unconventional/non-traditional trademarks. Nonetheless, the present trends point towards the preparedness of the Indian courts to espouse a comprehensive approach for protecting unconventional marks.