Registrability of Unconventional Trademarks ... - lawleague.in · numerals, figurative elements and combination of colours as well as combination of signs.”3 The rationale behind

Registrability of Unconventional Trademarks

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REGISTRABILITY OF UNCONVENTIONAL TRADEMARKS - Deepmala Dutta and TarunaJakhar1

INTRODUCTION

Intellectual Property Rights (IP) has gained huge popularity in the last 2 decades.

Businessmen and inventors are so protective of their rights against the product they have

invented. With the intrusion of upcoming IP laws in the world, it has given certain

confidence to the people to explore more and think unique with anticipation of full

protection. Trademarks are one of the kind of IPs which give recognition the unique mark

or identity of any brand, company, association, business etc. It can fulfill various

functions. By its nature, it serves to distinguish one product from another, so that the

producer and the consumer both have a legal defense against fraud; by the same token it

can be a guarantee of quality.2 For example, to distinguish Pepsi bottle and Coca Cola

bottle, the companies have put on their own unique logo or trademark which makes easier

for consumers to distinguish.

Under the purview of trademarks, there are various trademarks which cover goods and

services and easy to make a difference by seeing their size, drawing, numbers etc. these

are categorized under conventional trademarks. In India, they are being covered under

Section 2(1)(zb) of the Trade Marks Act, 1999 which explains it to be depicted in a

graphical form and by their shape, packaging and combination of colours. But with the

upcoming awareness and a variety of businesses running in the world, there are different

categories of trademarks called unconventional trademarks which include uniqueness of

smell, sound, taste, holograms,shape or colour. There is no precise definition given for

unconventional trademarks, so it has been derived from various case laws and

interpretations of provisions. For the conventional ones, mostly all jurisdictions have

established laws, but for the unconventional ones, there need to be an explicit law which

could explain the essential requirements and criteria of protecting it.

1The authors are students at National Law University, Jodhpur. 2O'Brien, Peter. Trademarks in Developing CountriesThe Journal of Modern African Studies, vol. 14, no. 2, 1976, pp. 297–309. JSTOR, JSTOR, www.jstor.org/stable/160061.


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REGISTRATION OF UNCONVENTIONAL TRADE MARKS

TRIPS Art. 15 Clause 1 of the TRIPS agreement requires that “any sign or combination of sign”

is capable of being registered as trademark although visual perceptibility may also be an

essential requirement. This functional definition includes the distinctiveness as a function.

Art. 15 Clause 1 includes an inclusive list of subject matters that are considered as

trademarks such as “signs, in particular words, including personal names, letters,

numerals, figurative elements and combination of colours as well as combination of

signs.”3 The rationale behind inclusion of an inclusive list of subject matters was the

inability to reach a concrete definite scope of list of marks to be recognized as trademarks.

Art. 15 Clause 1 further provides discretion to the member states, stating‘may’ to either

limit the scope of trademarks to visually perceptible marks or not.4 Therefore, each

member nation is not under an obligation to protect only conventional trademarks which

are visually perceptible.

Unconventional trademarks enjoy the trademark protection as long as they possess a

distinctive character and are used as a trademark, as provided in the definition under Art.

15 Clause 1 of TRIPS. Protection to unconventional trademarks can be justified under the

unfair competition laws. TRIPS recognize “combination of colours to be eligible for

registration as a trademark provided the said combination of colour has acquired

distinctiveness through use and member nations may also require as a condition for

registration that the combination of colour mark be visually perceptible.5 The agreement is

silent on recognition and registration of a single colour as trademark, yet countries like US

and UK have granted trademark protection even to a single colour. The definition neither

expressly includes nor excludes smell, sound and shape marks from its ambit. So if a

liberal interpretation rule is to be applied, then the above are covered under the ambit of

TRIPS.

3Agreement On Trade-related Aspects of Intellectual Property Rights article 15(1), 1994 4Mishra Neha, Registration of Non-Traditional Trademarks, Journal Of Intellectual Property Rights. Vol. 13, 43-50 (2008) 5 Agreement On Trade-related Aspects of Intellectual Property Rights article 15(1), 1994


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COMPARATIVE ANALYSIS OF US, UK AND INDIA

Colour Marks

Earlier US courts were reluctant in recognizing colour or combination of colours as a TM,

though the colourper se would form an integral part of the TM itself. “Sometimes a

colour, taken in connection with other characteristics, may serve to distinguish one’s

goods, and thus be protected by the courts..; but as a rule, a colour cannot be monopolized

to distinguish a product.”6 The reason for not recognizing colour or combination of

colours protectable under TM law regime was because court was of the view that if colour

were to be recognized then colours available to traders would be exhausted, in other words

which is known as the “colour depletion rule.”

Lanham Act, 1946 wherein TM has been defined to include “any word, symbol, or device

of any combination thereof, which a trader or a manufacturer uses to identify and

distinguish his goods from those manufactured or sold by another..”7 The definition

neither expressly excluded nor included colour, but a wide interpretation of the section

suggests that colour are not to be excluded from the ambit of TM protection, so single

colour or combination of colours is protectable under LA in US.8

US supreme court while clarifying the eligibility of a single colour registration said that “it

is the source-distinguishing ability of a mark – not its ontological status as color, shape,

fragrance, word or sign – that permits it to serve basic purposes” of a trademark.9

In U.K The prerequisite condition for registration of colour marks is that the colour must

have acquired distinctiveness by way of prior use and if in case the colour seeking

protection is the colour of the product itself then it has to be proved that the colour serves

no other purpose than a TM. Even unregistered colour marks are protected in the UK so as

to protect the unfair competition in the market by way of applying the doctrine of passing 6Diamond Match Co. v. Saginaw Match Co., 142 F. 727, 729 (6th Cir. 1906) 7 The Lanham’s Act, Section 45, 1946 8ShambartaMarilenaCan Non-Traditional Signs, Such as Colours, Scents and Sounds be Protected Under Trade mark Law? If Not, What are the Alternatives to Do So? A Comparative Analysis Between Europe and United States of America, (May 25, 2015), http://www.mslawyers.eu/images/publication_documents/Can_nontraditional_signs,_such_as_colours,_scents_and_sounds_be_protected_under_Trade_Mark_Law.pdf 9Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164, 34 USPQ2d 1161, 1163 (1995)


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off. It has been established by the court that colour protection shall be granted “however, it

was found that even if the given GR was said to be insufficient for the purpose of

identification of the mark, it was nonetheless considered to be in theory capable of being

represented graphically.”10 Case laws and the TM registry have made it a mandatory

provision that a colour TM shall be granted only when “very strong evidence of acquired

distinctiveness” shall be given.11

In India, according tosection 10 of Trade Mark Act, a trade mark may be limited wholly or

in part to any combination of colours. Any such limitation is to be taken into consideration

by the tribunal while deciding the distinctive character of the TM. So far as a TM is

registered without limitation of colour, it is deemed to have been registered for all

colours.12The Delhi high court stated that “in case evidence produced shows that that the

claimant relies wholly or mainly on his trade name or business name, protection cannot be

granted over a particular get-up or colour combination.” An order of colour mark

registration can be given only in case where the colour combination has inherently become

distinctive for a person’s product per se.13

“If a particular colour of packaging has become distinctive, in fact, as indicating the goods

of a particular trader, there is no reason why it should not be protected by registration. A

single colour may be capable of registration as a trade mark if it is very unusual and

peculiar in a trade and is recognized by traders and consumers alike that it serves as a

badge of origin for that class of goods.”14Deutsche Telekom AG has been granted single

color TM protection for its magenta color similarly Victorinox AG for the brown color.

Sound Marks

Sound marks can be included under the category of symbol and device.15 US has always

recognized sound marks16 and provided registration to the same under TM law as service

10Ty Nant Spring Water Limited’s Application, E.T.M.R.974 (1999) 11Holah,M 'The boundaries of trademark protection in the United Kingdom, (2000) TW 35, 37. 12Ahuja V.K., Law Relating to Intellectual Property Rights, Lexis Nexis. 3rdEdn., pp. 295-296 (2017). 13Britania industries Ltd. vs. ITC ltd, FAO(OS) (Comm) No. 77 of 2016. 14Trade Mark Draft Manual Chapter II at 3.2.4. 15Supra note 12. 16David Kitchin, David Llewelyn..,Kerly’s Law of Trade Marks and Trade Names, 14thedn., Thomson Reuters pp.18.


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marks if they meet the distinctiveness criteria, but in case they are not inherently

distinctive then also protection can be granted to them if a secondary meaning is proved.

The sound marks registered with the US patent and Trademark office are “Intel tones and

ESPN’s six-tone jingle.” Registration of musical tones is also recognized and prevalent in

USA.

The Sound marks, registration process are the same as that for conventional TM’s. A

Description of the mark is to be provided only the drawing procedure has been exempted

from the procedural aspect. The registration application has to be filed on “intent to use”

basis. Regulation 37 C.F.R. 2.58(b) (1995) specifically provides that “in case the service

marks are not used in printed or written form, three audio cassette tape recording will be

accepted.”17 The US TM office itself suggests that the affliction requirement for

registration of TM in US is a hurdle in registration of sound marks.

In the UK for a TM to be registered must be graphically represented as stated in section

1(1) of the TM Act,18 so it depends upon the person applying for registration to represent

his sound mark in the best possible way so that it conveys the essence of the sound. In

addition to the above requirements to be fulfilled on mandatory basis the registry of TM

also encourages the applicants to also support their application with the evidence from

trade that their sound mark is serving as a TM. ECJ19 laid that “graphical representation

requirements are satisfied where the sound is represented as a stave divided into

measures and showing in particular a clef, musical notes and rests whose form indicates

the relative value and where necessary accidentals.”

Hence graphical representation is an essential requirement of registration as a TM.

In India sounds marks have been expressly granted protection under the Trade Mark rules

2017. Now for registration an MP3 audio file not exceeding time limit of 30 seconds,

which is clear and audible along with graphical representation of its notation is to be

17 U.S. Trademark Law: Rules and Practice Statutes, Pub. U.S. Patent and Trademark Office. (2018) 18 In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging. 19Shield Mark BV v. Joost Kist h.o.d.n. Memex, C- 283/01 (2004)


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submitted. Therefore in addition to the requisites mentioned in section 2(1)(m) other

requirements mentioned in rules is also to be fulfilled.20Sound marks registered in India

are ‘Theme song of National Stock Exchage, corporate Jingle of ICICI Bank, four note

bell sound of Britannia Industries, Cisco, Edgar Rice Burroughs Tarzan yells, Nokia

Guitar tunes on switching on the phone, Yahoo yodel.’

Smell Marks

US Supreme Court held that “Trade dress may entail size, shape, color or color

combinations, texture, graphics, or even particular sales techniques within its.” Here, it is

relevant to state that trade dress includes sensory marks such as smell.21 The step forward

was taken in the case of In re Clarke22the petitioners had claimed scent mark for its yarn

product which had the smell of plumeria blossoms, T.T.A.B. held that the petitioner’s yarn

product was the only scented one in the market and was capable of being distinguished

from other yarn products in the market. The scent was capable of enabling the customers

to know the origin of the product. In the above said reasoning scent mark was granted to

the petitioner. T.T.A.B. laid the test for smell marks, i.e., the scent must distinguish goods

of one manufacturer from that of another, whether scent is an inherent attribute of the

goods, has the scent been used by the manufacturer in advertising of the product and

whether customers associate the scent to the applicant’s product.

Trade Mark manual of examining procedure states that an applicant is not required to

submit a drawing of a mark if the mark consists of solely non-visual mark such as scent or

sound, instead should submit a detailed description which clearly describes the non-visual

mark.

Sieckmann case23 in the UK wherein “the smell of balsamically fruity with a slight hint of

cinnamon” was rejected protection on the ground of non-obvious to the average customer.

In the case the chemical formulas, written description, electronic sensory analysis and

graphical profiles were ruled out a means of identification of distinct smell. The court also 20ChouhanRuchika, Critical Analysis of Sound Mark: Indian Prespective, International Journal of Law and Management studies. Vol. 10 Issue 1 (2018) 21Two Pesos Inc. v Taco Cabana Inc., 505 U.S. 763. 22In re Clarke, 17 U.S.P.Q.2d 1238, 1239 (T.T.A.B. 1990). 23Sieckmann v Deutsches Patent-und Markenamt,C-273/00, 2003 E.T.M.R. 37.


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held that the product may contain marks which may not inherently be visually perceptible

but are capable of being graphically represented, and the graphical representation must be

“clear, precise, self-contained, easily accessible, intelligible, durable and objective.”24

“The court ruled that in respect of an olfactory sign, the requirements of graphical

represent ability are not satisfied by a chemical formula, by a description in written

words. Chemical formula depicting the scent does not represent the odor of a substance,

since it is not sufficiently intelligible, clear and precise. Moreover, a formula does not

represent the odor, but the substance itself. A deposit of an odor sample does not

constitute a graphic representation. Odor samples are not sufficiently stable and

durable.” Smell of roses for tires by Sumitomo Rubber Co., and smell of beer for dart

flights by Unicorn Products have been registered as trademarks in the UK.

In India the draft Manual for trade mark states that unless a mark is capable of graphical

representation it will not be considered to constitute a trade mark. A smell mark can be

protected in India if it is proved that it is used as a trademark, it has acquired

distinctiveness, it is capable of being graphically represented and the smell is not an

inherent part or a natural characteristic of the product itself rather has been added by the

person applying for registration so as to enable the smell as a distinctive characteristic of

his product.

The limitation in Indian law with regard to registration of smell is that of graphical

representation as it becomes inherently difficult to represent a smell with its chemical

composition being described in a written format. Smell marks as single TM have not yet

seen their road.

Shape Mark

In present scenario, the need for Non- Conventional mark is comparativelymeek in India,

in spite its gaining momentum in the country, and this points towards the future growth

area, as makers and promotersattempt to imbibe some innovative, uncommon market

24Lukose, Supra note 7


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approach. For instance, the specific triangular shape of Toblerone Chocolate25 which has

acquired trade mark implications over time. This flexible approach is visibly evident

through the Act of 1999. A trade mark, defined under section 2(1) (zb) as:

“ trade mark’ means 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 shape of goods, their packaging and combination of colors.”

The two concluding points with respect to Unconventional marks:

1. Mentionnon-conventional mark on the application form for registration, which can

direct the registrar to apply special rules, such application must indicate the kind of

unconventional mark it is, which can attract The Trade Mark Rules and Manual. Any

sketch or drawing of a 3D mark should not be treated as a simple device mark, or a

diagram of 2-Dmark for the application of registration, as this then, doesn’t permit the

applicant to skip stricter scrutiny of shape marks.

2. Trade Mark Examiners are entitled to ask for further and better particulars, including a

written description of the trade mark being applied for.26 While the written description

requirement is not compulsory, for suspected non-conventional marks this should be

liberally used to request additional information so the sign being applied for can be

defined appropriately.27 These procedures highlight the difference of registration for

unconventional marks.

3D Marks

For registration of Shapes, for a comparative perspective, two broad issues are concluded.

The first refers to the establishment of “distinctiveness for shapes”, and the second 25T. Helbling, Shapes as Trade Marks? The Struggle to Register Three-Dimensional Signs: A Comparative Study of United Kingdom and Swiss Law, I.P.Q. 413, (1997Toblerone/Harrods Gold Bar, Brussels Court of Appeal, Jun. 2, 2004 (Unreported); Mars v. Kraft The Hague, Court of Appeal, Jan 3, 2008 (Unreported). 26 Trade Mark Rule 29(3)(ii) “Where, however, the registrar considers that the reproduction of the mark furnished by the applicants does not sufficiently show the particulars of the 3D mark, he may call upon the applicant t furnish… a description by words of the mark”. 27Trade Mark Rule: 25(12)


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means“functionality based objections to the registration of certain types of shapes”. For

the first issue, i.e. “distinctiveness”, the Trade Mark Registry of India adopted the

European Union’s situation that the distinctiveness criteria in parameteria to section 9(1)

of the Trade Marks Act, 1999 to be applied to all shape marks. The establishment of

acquired distinctiveness for shapes and 3-D marks isa quite an affordable task as given

under Proviso of s.9 of the Act.

For the purpose of evidences for the same the factors as mentioned in Windsurfing case

are applied, like market share under the applicant’s purview, geographical spread etc.

however, one of the fundamental requirements is that the shape must have been used as a

trade mark.28 The evidence of general advertisements and customers recognizing the mark

with the product are not enough rather it must be shown that the relevant sector of market

trusts the shape of that particular product to indicate the commercial origin of the

product.

When the question comes of inherent distinctiveness of the shape mark, it’s quite difficult

to establish inherent distinctiveness. Therefore, in the EU, unsuccessful arguments to

lower this inherent distinctiveness threshold have included suggestions that:

a) The 3Dimensional shape is simply analternative of a common shape.

b) The distinctive criterion as a threshold is qualified in case a 3-D sign is novel.

c) If its constituting apparatuses like geometric shape orcolour, though separately

common, combine together in a non-obvious way.

d) There existsadequatedissimilarityamongst the features of the shape or 3D design and

that of products that is not accredited to any technical reason.

e) The relative public is sensitive to minimalalterations.

f) Where 3D mark is used for routinecustomer merchandise.

Thus, the mandate for inherent distinctiveness comes down to the following:

a) Deviates significantly from the established prevalent norm and thus indicates origin;

28SheetalTiwari, Trademark Attorney at Khurana and Khurana, Shape Marks 3D Trade MarksMay 21, 2014 – 9:26 amhttps://iiprd.wordpress.com/


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b) It is applied to those goods for which customers are remarkably sensitive to this

difference.

Hence, there exists a profoundness that trade mark law of Indiapaces through modern

marketing techniques. The Trade Mark Manual embarks on various issues and gives a

tough structure, which paves a way for slow and gradual development of the principles.

Non-conventionalare not generally used with an additional word or any figurative word

along with the mark. No manufacturer of mineral water is likely to do away with the

company name or brand and rely solely on the shape of the bottle when selling the

product. Such marks should therefore be given a cautious reception.”29

The Precedential Development of Shape mark The delineations for protection of shape marks are, though, quite unclear, as statutory

protection from shape of goods was introduced in 2003, with coming into effect of act.

Case prior to commencement of the Act, which stipulated the trend for development of

jurisprudence for the protection of shape mark in India30, was based on the judgment of

the case of Reckitt & Coleman Products Ltd. v. Borden Inc.31 Also, only on the lines of

this case Zippo lighter was granted a shape mark, denying defendants to use the mark.

In Corning Inc. v. Raj Kumar Garg32 the Court settled the overlapping protection between

design and trade mark and clarified the fundamental distinction between a trade mark and

a design that:

“A ‘trade mark’ signals to the mind, the source or identity of the

producers/manufacturer of the article, whereas a ‘design’ appeals to the eye and attracts

the consumer/purchaser. A ‘trade mark’ may also be attractive and appealing to the eye,

but it should be directly relatable to the producer/manufacturer of the goods, whereas the

29 Supra note 25 30Abhishek Malhotra ,Protection of Shapes as Trade marks(2008) PL (IP) Mar 27

31 1990 RPC 341 32 (2004) 28 PTC 257


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‘design’ may be merely appealing or attractive to the eye and need not give any indication

to the consumer/purchaser about the identity of the manufacturer or producer of the

article.”

Hence, it is a settled principle that a design protects the features of shape and

configuration and the trade mark law protects the shape of goods.

With respect to distinctiveness33, there isn’t settled precedent concerning precisely to

shape marks. Although, it has been consistently held that get-up or product

packaging/configuration or trade dress cannot be inherently distinctive and while passing

off is available, even in respect of an unregistered design,34 “the plaintiff claiming passing

off has to prove that the trade dress has acquired a secondary meaning/goodwill/reputation

in the market in relation to the trade dress. Such reputation may not be on account of use

in India alone and may also be trans-border reputation which has travelled in India. Such

cases have also indicated that the amount of evidence that is required to establish

secondary meaning in relation to a shape mark is likely to be more than that which is

required to demonstrate goodwill/reputation of a word mark.”35

The conclusive determination for protection of shape mark is yet to be consolidated but

non-exhaustive basic principles existing for such protection are:

a. “Shapes are protected under the trade mark law in India;

b. Shapes are not likely to be considered inherently distinctive;

c. The amount of evidence required to establish the reputation of a shape mark is likely to

be more than is required in the case of a word mark;

33Glynn Lunney, Cases and Materials on Trademark Law, Thomson Reuters, pp.140 ISBN:978-0-314-90702-8 (2010) 34SmithKline Beecham Consumer Healthcare GmbH v. G.D. Rathore, (2002) 25 PTC 243 (Del) 35Ibid.


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d. In order to prove likelihood of confusion or passing off, the entire get-up of the

competing products, including word marks used in relation thereto is likely to be given

weightage.36

CONCLUSION

Trade Marks are used to differentiate between goods and services of one competitor from

that of other by consumers which possess average intelligence and imperfect recollection.

The said differentiation can be made via conventional and unconventional trademarks.

Unconventional trademarks have been recognized in various jurisdictions by the trade

mark registry and judicial precedents to serve the purpose which was originally assigned

to traditional trademarks, but still have found not express place in the definition of

trademark laws of the said countries. This raises the issue of registration process

requirements for the said marks. As these marks are unconventional in nature and lack

visual perceptibility, they are dependent on the recollecting senses of the end consumer.

Recently in India unconventional marks have found a place in TM rules 2017. The

Graphical representation requirement requirement has been kept intact for colour, sound

and smell marks. The only addition that has been made is with regard to the sound mark

that is an audio MP3 recording is also to be submitted along with graphical representation

of the musical notes. Same is the case with the UK, but in US they have relaxed the said

registration requirement and an audio recording alone would serve the purpose.

UK is a bit stringent in recognizing unconventional trademarks and for registration of the

same the essential requirement is to prove that applied mark has acquired secondary

meaning in the mark, which leads us to infer that these marks would only be registered if

they have been used by the applicant for the said class of products in advance of the

registration application and have acquired a distinctiveness/secondary meaning in the eyes

of the consumers. Due to the above laid reason there can be a dicey situation, whether to

accord these marks a well known status or provide for express registration.

36Abhishek Malhotra, Protection of Shapes as Trade marks (2008) PL (IP) Mar 27


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USA and India have been on the same page with regard to recognition of unconventional

trademarks. The difference lies on one aspect that is with regard to registration

requirements. US has relaxed its graphical representation requirement for unconventional

trademarks, whereas in case of India one would find a combination of the registration

requirements of US and that of U.K. That is to say liberal on one hand and strict on the

other.

Documents

Registrability of Unconventional Trademarks ... - lawleague.in · numerals, figurative elements and combination of colours as well as combination of signs.”3 The rationale behind