Innovation and technology go hand-in-hand in shaping the identity of goods and services in the present age. From the roaring sound of a motorbike to the scent of a perfume, let us explore the legality of non-traditional trademarks…
Trade mark is a communication tool, and as such, may be perceived by at least one of the five senses. The trade mark should be capable of being represented graphically and should also be capable of distinguishing the goods or services of one person from those of others.
Apart from the traditional trademarks, there is a new category of modern marks, which are protected only in some countries. These marks include three-dimensional marks, such as the shape of goods or their packaging; colours per se, sound marks, motion marks, position marks, hologram marks, slogans, smell marks, feel marks, and taste marks. Graphical representation of some of the modern marks is a serious problem.
Rahul Chaudhary, Partner, Lall, Lahiri & Salhotra, adds, “The Indian Trade Marks Act, 1999 (the Act) was enacted to keep the substantive law in India in harmony with the TRIPs Agreement. The definition of trade mark under the relevant provisions of the Act gives a comprehensive definition to include trade dress, which involve the total image of a product including features such as size, colour, shape and graphics and
Smell is said to be one of the most potent types of human memory. The manufacturers are adding pleasant scent to their products. To obtain registration of a smell mark, the applicants must be able to visually represent the product’s scent and must show its distinctiveness from the product itself. However, how does one represent a smell in a visual way?
Writing down the chemical formula for a smell is deemed to represent the substance rather than the smell of that substance. Any written description of a smell must be so precise that particular smell would not be confused with any other. Further, smells, which can be defined in terms of chemical components by chromatographical analysis or even by reference to elements in the product which cause them, may be registrable.
It is noteworthy that smell must not result from the nature of the goods itself. An application by Chanel to register its wellknown No.5 fragrance as a smell mark in the United Kingdom was unsuccessful on that count – the scent of the perfume being very essence of the product. However, some smell mark descriptions have met the distinctiveness test and been successfully registered, such as a Dutch company’s tennis balls with the scent of newly mown grass; and UK registrations for tyre with “a floral fragrance or smell reminiscent of roses” and darts with “the strong smell of bitter beer”.
The United States of America opened the way by allowing protection of a sound trade mark – the three-note chimes of the National Broadcasting Corporation (NBC) in 1951. Advertising jingles written in musical notation, non-musical sounds, etc. may be registrable, as they are distinctive and capable of being represented graphically. Alternative methods have emerged for the visual representation of sound marks: depictions by oscillogram, spectrum, spectrogram and sonogram are now being accepted.
For the representation of taste mark graphically, the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) reports that “The graphical representation requirement was satisfied by using a written description of the taste and an indication that it concerns a taste mark”. The test of distinctiveness, however, is harder to satisfy.
Office for Harmonisation in the Internal Market (OHIM) rejected the pharmaceutical company Eli Lilly’s attempt to register the taste of artificial strawberries noting “Any manufacturer is entitled to add the flavour of strawberries to those products for the purpose of disguising any unpleasant taste that they might otherwise have or simply for the purpose of making them pleasant to taste. Moreover, the taste is unlikely to be perceived by consumers as a trade mark; they are far more likely to assume that it is intended to disguise the unpleasant taste of the product”. United States Patent and Trademark Office (USPTO) rejected the attempt by N.V. Organon to register an orange flavour for pharmaceuticals.
Single colour or shades of colours have attracted a lot of attention in the contemporary times. Colour is a powerful and effective tool for creating brand identification. It is noteworthy that Pepsi-Cola spent more than US $ 500 million in a
Manish Saurastri Partner, Krishna & Saurastri Associates, Mumbai
There are many unconventional marks, which are gaining acceptance, recognition and importance gradually in today’s time of fierce competition and over crowded products in the consumer dominated market place. In this cutting edge arena, every manufacturer attempts to present his goods or services with some distinctive expression, mark or symbol. These are no longer limited to words and the same could be in the form of a shape, (e.g. shape of coco-cola bottle), smell, sound, touch, motion, etc.
As the distinctiveness of these unconventional marks, being a litmus test, is required to be passed, it is rather difficult to get the recognition and protection of them, inspite of provision for statutory protection. Courts are rather reluctant to recognise these marks. Perhaps, with the passage of time and change in the surroundings, the forums responsible for enforcement of rights are expected to feel the need for such recognition and protection.
The manufacturers and owners of conventional marks are required to go a long way in establishing their marks such as shape of goods, smell, sound, etc, unique and not descriptive or functional in relation to their goods.We feel that unconventional marks are like Pandora’s Box, which opens a whole lot of options for brand owners to choose from. However, the task of enforcing forums will become difficult with increasing claims relating to them. The voluminous evidence will be required to prove distinctiveness of the same so as to secure the rights relating to them and to protect them from being copied. Although it is an uphill task yet not impossible. It is time and efforts consuming and rather expensive.
The knowledge and awareness about the conventional marks have already begun to set in the world over and it is expected to gain momentum in future.
worldwide marketing campaign called, “Project Blue” to strengthen and personalise the diffusion of the blue colour as Pepsi identifier. Colours per se are normally registered as trade marks in exceptional cases only and that too when they are used extensively for many years and have become distinctive.
Multimedia production has opened the way for even more non-traditional trade marks: holograms, gestures and motion or moving image marks. Their registration usually requires the use of a sequence of pictures or drawings to depict how the trade mark functions. The best approach to represent motion mark graphically, therefore, would be to make a detailed written description of the overall sequence of motion, and to file drawings showing key stills from the sequence.
The product shape and packaging qualify for the registration under the category of three-dimensional trade marks. In order to register a 3D trade mark, it is mandatory to qualify the distinctiveness test. The transparent bottle used by Contrex for its mineral water was held to be distinctive due to a combination of factors. Its overall aesthetic look was deemed appealing and consumers easily distinguished its shape from other similar goods thus, making it truly specific. The Coca- Cola Company obtained 3D registration of the Coca-Cola bottle in Japan. In another case, the court allowed the registration of Bang & Olufsen loudspeaker for its unusual shape, striking design quality and the ease with which consumers could recognise its shape, which could not be considered to be altogether common.
Modern marks are also being protected in India. The first sound mark in India was registered on August 18, 2009. The mark was registered in favour of California-based Internet firm, Yahoo Inc.’s for its three-note Yahoo Yodel. Rahul Chaudhary, informs “The Trade Marks Registry has recently allowed registration of yet another sound mark in India, this time to Allianz Aktiengesellschaft of Germany. After the Yahoo yodel, the registration of the distinctive Allianz melody is welcome news for others who are soon expected to follow – Nokia’s sound mark application is expected to be granted registration very soon. With the Yahoo yodel and subsequent trademark applications, the Indian Trademarks Registry has, in accordance with the practice in a number of jurisdictions, accepted the musical notes of the melody or sound, along with a description of the sound as being sufficient to satisfy the criteria of graphical representation and capable of inherently distinguishing the product with the mark. It is believed that this can pave way for trademark protection to some of the most recognisable sounds.”
“With the Yahoo yodel and subsequent trademark applications, the Indian Trademarks Registry has, in accordance with the practice in a number of jurisdictions, accepted the musical notes of the melody or sound, along with a description of the sound as being sufficient to satisfy the criteria of graphical representation and capable of inherently distinguishing the product with the mark. It is believed that this can pave way for trademark protection to some of the most recognisable sounds.”
Praveen Anand Managing Partner, Anand & Anand
The rasion d’etre of a trademark is the competency to discern goods and services of one person from those of others. The list of non-traditional trademarks, which are acceptable in India, is endless with the sound mark registration for the Yahoo! Yoodle to registration for the EPI pattern on an LVMH bag; the era of non-traditional trademark is here. Indian Trademarks Registry is in step with international countries in recognising the following as unconventional or non-traditional trademarks:
To conclude, non-traditional marks are a fast developing and challenging area of Trademarks Law with tremendous potential.
The “shape of goods” and “their packaging” has been included in the definition of trade mark for the first time by the Trade Marks Act, 1999, which came into force in 2003. It is also noteworthy that design, in respect of an article, is registrable under the Designs Act, 2000.
The technology has made it possible to adopt non-traditional marks for goods and services. The manufacturers, companies and service providers are securing registrations of non-traditional trademarks in several countries. At international level also, Singapore Treaty on the Law of Trademarks was adopted in 2006, which came into force in March 2009. Without necessarily creating an international obligation for the registration and protection of non-traditional marks, the Treaty sets out a multilateral framework for the definition of criteria concerning the reproduction of hologram, motion, colour and position marks and of marks consisting of non-visible signs on trademark applications and in trademark registers.
In India also, the first sound mark has been registered. The shape of goods is included in the definition of trademark. Though the definition of trademark, which is an inclusive one, does not specifically incorporate other non-traditional marks; it is possible that they may also be considered in India for registration since they are distinctive and capable of being represented graphically.
www.grandmasters.in | 8 Years & Counting
www.rcls.in | 8 Years & Counting
www.itlegalsummit.com | 8 Years & Counting
www.bfls.in | 8 Years & Counting
www.maels.in | 8 Years & Counting
www.plcs.co.in | 8 Years & Counting
Copyright © 2020 Lex Witness - India's 1st Magazine on Legal & Corporate Affairs Rights of Admission Reserved
