Introduction
With the advancement of society, the concept of property has also simultaneously evolved. It is not restricted to the corporeal, tangible, movable or land assets anymore. The dimension of incorporeal properties, derived out of the owner’s intellect are also well within the modern-day definition of property, which is the Intellectual Property.
One of the most relevant and noticeable form of the Intellectual Property is the Trademark. Trademarks have served a crucial role in aiding the purposes of globalization of the world community. Trademarks are the identifiers of a product or a manufacturer in the market to enable the consumer to distinguish one from the other. Traditionally, they were confined to symbols, logos, letters, words or combination of words etc. However, with the advent of technology, newer, more unconventional representations have been made possible to be used as trademarks.
The most notable of these forms are: sounds, smells, colours, and others, such as, motions, taste, touch, etc.
The technological development was supported by simultaneous legal development. The adoption of the Trade Related aspects of Intellectual Property rights (TRIPs) Agreement has enabled the expansion of the definition of trademark in the legal regimes world-wide[1]. This scope development has facilitated manufacturers to produce more non-conventional trademarks.
However, these forms of trademarks come at a significant disadvantage of being difficult to register. In this article we will discuss broadly four forms of non-conventional trademarks and the difficulties that arise with their success as potential trademarks. The position of non-conventional trademarks will further be evaluated on the Indian standards and foreign standards, particularly, the US, the EU and the UK.
Common issues with Non-Conventional Trademarks
Before we delve into the various forms of non-conventional trademarks, it is important to understand certain broad and common difficulties that arise for such proposed trademarks to be successfully registered as such. These are:
- Legal provisions for Non-Conventional Trademarks: While Trademark in the essence of wider usage is a new concept, but the variety of trademarks have developed faster than the legal provisions for the same. Hence, there is a general paucity of the legal provisions for non-conventional trademarks. It is also difficult to include them within the definitions of conventional trademarks, because they do not fulfill the requirements of the same (graphical presentation, distinctiveness etc.)
- Establish distinctiveness: Non-conventional trademarks are no wonder unique, but mostly in their presentation and execution. However, they usually fail to establish a determinate distinction amongst the consumers. They take longer and are expensive to prove distinctiveness. They are often subjective, from consumer to consumer. It is not convenient for the IP registration authorities to maintain such vast data of descriptive nature. Resultantly, it becomes much more difficult to secure them with IP protection[2].
- Overlapping with other forms of IP: Another general challenge associated with the non-conventional trademark protection is the overlapping with other IP protections. For example: Patent protection may be extended to a smell trademark or a digitized form of trademark; Design protection may be awarded to a shape trademark[3]; or Copyright protection offered to the program code of a motion trademark etc. Therefore, it is challenging to determine which protection is most ideal.
- Uniformity under different IP law regimes: There is a general lack of uniformity amongst the IP laws of various countries despite there being an internationally-adopted document such as TRIPS. This nonuniformity leads to challenges towards the maintainability of the IP protection afforded to a brand in one country, when the same brand reaches another country. This also serves as an obstruction to the manufacturers to supply their products internationally[4].
Forms of Non-Conventional Trademarks
- Smell/Olfactory Trademarks: Smell is one of the most powerful senses amongst all others, which has the ability to recollect past experiences[5]. However, the greatest challenge associated with smell trademarks is with their graphical representation. Any reasonable person would propose that the chemical composition of that smell must be presented, or a description of the same be recorded. But, the chemical formula of such trademark will be of the product, not exactly the same, and experiential descriptions are largely prone to subjectivity. The storage of a sample of such trademark is not viable since: (i) it is not a graphical representation (ii) the smell may fade away with time (iii) the smell may change at different temperatures etc.
In the case of Ralf Seickman v. German Patent Office[6], the registration of a smell mark was rejected because the graphical representation criterion was not fulfilled. The court held that graphical representation is not sufficient and it needs to be clear and precise to clear the right of exclusivity and also it must be considered intelligible to those persons who have interest in inspecting registers[7].
- Colour Trademarks: Colour is yet another visual sense that consumers come to associate with a particular brand or product. For example: A yellow packing with a red logo on it is associated with the Nestlé brand’s Maggi noodles; or a blue background with yellow letters is associated with the Swedish furniture and fixtures chain: Ikea.
Another observation deduced from these examples is the success of colour trademarks as a combination of colours. Colour combinations are much easier to register as trademarks than a single colour as the latter may create confusion[8]. This was observed in the famous case of Cadbury UK Limited v. The Comptroller General of Patents Designs and Trademarks & Société des Produits Nestlé S.A.[9] Cadbury failed to register their Patone 2685C shade as a colour trademark. Another issue with registering a colour trademark is its record-keeping. A sample of the colour may fade over time due to many natural causes[10].
- Sound/Audio Trademarks: The strength of the sense of hearing is reflected in the common phrase: “ring a bell”. There are certain sounds, voices, recordings, words spoken in a particular manner, etc. that become distinguishably unique to a certain entity or product. For example: the twin-heartbeats in an Audi advertisement, or the “tudum” of Netflix. Thus, there are certain sound trademarks too. Again, there is the question of graphical representation of a sound. The foremost answer is the musical notations and keys. However, musical notes provide a description of the music but not the music itself. An apparent solution will be to deposit a digital recording of the sound with the registrar, but this has been rejected by the INTA as:
- sound cannot be published by the trademark authority, and people have to go to the authority to hear it;
- it will be difficult for the authority to store so many sound samples[11].
In the case of Shielf Mark BV v. Joost Kist h.o.d.n. Memex[12], the ECJ held that the requirement of graphical representation was not satisfied when the sound is represented graphically by means of description using written language. When sound is shown as a stave divided into measures, musical notes, etc. then graphical representations are said to be accepted.
- Others (motion, taste, touch etc.): In addition to the aforementioned forms of trademarks, there are other forms of sensory, visual, non-visual forms of trademarks. A few examples can be: Taste trademark, Touch/Texture trademark, Hologram Trademark, Motion Trademark, Shape marks, Domain names, etc. Domain names are inherently become the part of the already established trademark. However, rest of these trademarks are the most difficult forms to qualify for registration. Most of these trademarks are only graphically represented by the written word of description. It is a worth-of-mouth, or hearsay as it is. The complex computation and formation code may work for a few, like the Shape marks with detailed measurements and structure input. Or, it works for hologram trademarks, because the computer code for their formation can be noted along with the device so required. But, for the remaining others, it is mostly the experiential description that appears to be the most ideal means to graphically represent the trademark.
Position in India
Lately, the position of non-conventional trademarks in India remains rather clear. It is a strict position that India has adopted, coupled with a stringent compliance with the provisions related to the conventional trademarks. The definition to non-conventional mark in India is illustrative: it includes words such as shape of goods, packaging etc[13].
In terms of most visual non-conventional trademarks, like colours, the position is mostly relaxed, because it is easier for them to be graphically represented. Rule 26(2) of the Trade Marks Rules, 2017, states that colour trademarks can be applied for by submitting a reproduction of that combination of colours. The burden will be on the applicant to prove the colour has acquired distinctiveness or secondary meaning due to continuous bonafide use.
This is perfectly summarized by the case of G.M Pens International v. Cello Plastic Products, 2005, where it was held single colour cannot be inherently distinctive and self-sufficient. It was further revaluated by the case of Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd.,[14] which emphasized on using combination of colours to denote the brand identity of a company.
However, the registration of non-visual marks is close to impossible in most cases. Graphical representation of a mark is considered to be a sine qua non in order to be registered in India[15].
The very concept of non-conventional trademarks is in its infancy in India. This is reflected in the fewer numbers of Indian-registered non-conventional trademarks. The most notable of non-visual marks are the sound marks. India has adopted the Shield Mark Doctrine for the determination of graphical representation of sound marks. Rule 26(5) of the Trade Mark Rules of 2017 provide for the registrability of sound marks.
As per the aforementioned provision, sound trademarks can be registered by submitting a sound clip along with the musical notations, given the length of the clip does not exceed 30 seconds.
A Draft Manual was prepared by the Indian trademark office in 2015 stating graphical representation requirements for different kinds of non-conventional trademarks. However, the Draft Manual has not yet been officially brought into force[16].
Position Abroad
The irregularity of acceptance of different forms of non-conventional trademarks in different countries is a major hurdle in achieving a uniform trademark recognition framework across the world. This was reflected well in the age before iPhones, when Nokia was at the pinnacle of its operations worldwide. But, something as popular as Nokia also was not accepted uniformly, when its ringtone was successfully registered in US, Australia, but rejected in Hong Kong[17].
Most common law and European countries have a strict approach, evolving from the interpretation of the Ralf Sieckman case. However, the requirement of graphical representation has now been removed under the EU Trademark Directive 2015/2436 and EU Trademark Regulation 2015/2424. This shift has allowed for the registration of unconventional trademarks to become much easier[18].
The US adopts a much liberal approach, influenced by the Qualitex case[19]. In this case it was held that almost anything at all that is capable of carrying a meaning can function as a trademark[20].
Due to a comparatively liberal outlook of jurisdictions abroad, it has allowed for creators to come up with better, more innovative ideas. Many such non-conventional trademarks have been successfully registered outside India. For example: The scent of fresh cut grass for tennis balls- Vennootschap onder Firma Senta Aromatic Marketing of Holland[21].
There have been notable developments in other sensory trademarks, such as: Taste. Some jurisdictions also accept registration for taste marks by providing a descriptive explanation of the taste. However, a common problem that arises in context of smell or taste trademarks, irrespective of the jurisdiction is that of “being a functional feature of the associated product”.
Further, here are touch/texture marks as well. They work as a reference of the product’s experience to the consumers, so they remember it. That is how the association with the brand is intended to be formed. The touch/texture mark is a mark which is distinctive to the consumers being a characteristic feature of the trade dress/packaging of the product which can be felt and not just seen by a bare eye. For example: Leather texture of a Louis Vuitton bag, or the embossed leather of a Gucci product[22].
Finally, the most common and easily registered non-conventional trademark: colour trademark. The position on this form of non-conventional trademark is almost identical worldwide. The UK Trademark Registry accepts these universal colour codes along with a written description as an adequate graphical representation. However, the Indian Draft Manual mentioned above does not recognize these universal codes, but at the same time, does not even provide for a statutory alternative[23].
Conclusion
Novel ideas are difficult to incorporate into the mainstream initially, not because these ideas are flawed, but the existing framework stands absolutely obsolete before them. The challenge remains on the legal side of the matter, that requires updation. As Prof. McCarthy very accurately remarked, “until properties have exhausted all avenues of IPR, they cannot be supposed free[24].”
The challenges associated with non-conventional trademarks are much the same, making a paradigm shift in the existing IP laws around. They have the potential to channel in a whole new segment of consumers in the markets.
To overcome these challenges, there are many ways that can be worked with. For example: an odour matrix (like universal colour code) can be developed to register smell/odour trademarks. Smells are made of different odourant molecules, and each odourant molecule engages a few olfactory receptors, forming an odourant pattern[25].
The purpose of trademark should not be overlooked amidst the strict and stringent provisions of registration. The purpose of trademark is to create an association with consumers, an identity, and safeguard from unfair trade practices. These non-conventional trademarks fulfill all these purposes perfectly, and in a sense, better than the traditional trademarks. The replication of these trademarks is highly strenuous, and near impossible.
[1] Article 15 of the TRIPS Agreement
[2] Muskan Sethi, Non-Conventional Trademarks and The Difficulties in Extending IP Protection to Them, Legal Service India: E-journal, (September 26, 2021, 11:50 AM). Accessed at: https://www.legalserviceindia.com/legal/article-6330-non-conventional-trademarks-and-the-difficulties-in-extending-ip-protection-to-them.html
[3] Ibid
[4] Lisa Lukose, Non-Traditional Trademarks: A Critique, Journal of the Indian Law Institute, (2015) Vol. 57
[5] Rachna R. Kurup & Nimita Aksa Pradeep, NON-CONVENTIONAL TRADEMARKS IN INDIA: THE WHAT, THE WHY AND THE HOW, E- Journal of Academic Innovation and Research in Intellectual Property Assets (E-JAIRIPA), Vol. 1 (01), Dec 2020, pp. 136.
[6] Case No. C-273/00) [2003] E.T.M.R. 37, 43-45 (European Court of Justice)
[7] Manuraj Singh Parmar, India: Non-Conventional Trademarks: A Legal Analysis, Khurana and Khurana Advocates and IP Attorneys, Mondaq (May 01, 2019). Accessed at: https://www.mondaq.com/india/trademark/801902/non-conventional-trademarks-a-legal-analysis
[8] M M S Kharki, Non-Traditional Areas of Intellectual Property Protection: Colour, Sound, Taste, Smell, Shape, Slogan and Trade Dress, 10 Journal of Intellectual Property Rights 499, 499-506 (2005)
[9] Case No: A3/2016/3082
[10] Liberal Group BV v Benelux Trade Mark Office, Case No. C-104/01 (ECJ)
[11] Shilpi Chatterjee, Role of Graphical Representation in TM Regime in India, Journal of Legal Studies and Research Intellectual Property Rights Law Review, (June, 2017), Volume 3 Issue 3
[12] Case No. C-283/01 (ECJ)
[13] Section 2(1)(zb) of the Indian Trade Marks Act, 1999
[14] 2005(31) PTC 583 Del
[15] Supra 7
[16] Diganth Raj Sehgal, Non-conventional trademarks and the procedural requirements for their registration, Registration & Procedural Requirements, Graphical Representation of Non-Conventional Trademark under Registration Process, iPleaders: Intelligent Legal Solutions. (April 27, 2021). Accessed at: https://blog.ipleaders.in/non-conventional-trademarks-procedural-requirements-registration/
[17] .Priyadharshini and Neetika Yadav, Nokia’s Triumph in 2007 – Registrability of Sound Marks and Areas of Concern, India Law Journal (ILJ), Vol 1, Issue 3. Accessed at: https://www.indialawjournal.org/archives/volume1/issue_3/article_by_priyadharshini.html
[18] Tanisha Ranjan, India: Protection of Non-Conventional Trademarks, Fast forward Justice’s Law Journal (April 18, 2020), Vol. II, Issue IV. Accessed at: https://fastforwardjustice.com/india-protection-of-non-conventional-trademarks/
[19] Qualitex Co. v. Jacobson Prods., 514 U.S. 159, 162 (1995)
[20] Supra 2
[21] Dr. Supreet Gill, Stick to the Syllabus: Lectures on IPR- Part 2. Kindle Edition
[22] Dipak Rao, Sana Singh, The Contemporary Issue of the Non – Conventional Trademarks, Singhania and Partners LLP Blog, (06-May-2020). Accessed at: https://singhania.in/blog/the-contemporary-issue-of-the-non-conventional-trademarks
[23] Supra 16
[24] J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (II) (4th ed. 2000)
[25] Reshmaa B., NON-CONVENTIONAL TRADEMARKS AND ITS ISSUES RELATED TO REGISTRATION IN INDIA, International Journal of Research and Analytical Reviews (IJRAR), VOLUME 6 I ISSUE 1 I JAN.– MARCH 2019] (February 26, 2019). Accessed at: http://ijrar.com/upload_issue/ijrar_issue_20543081.pdf
YLCC would like to thank Tanmay Dhiman for his valuable insights in this article.
