A research study on the non conventional trademarks forming part of the intellectual property in today’s world.
Symbiosis Law School, NOIDA
A trademark is a distinctive sign, which identifies certain goods or services as those produced or provided by a specific person or enterprise. Its origin dates back to ancient times, when craftsmen reproduced their signatures, or “marks” on their artistic or utilitarian products. Over the years these marks evolved into today’s system of trademark registration and protection. The system helps consumers identify and purchase a product or service because its nature and quality, indicated by its unique trademark, meets their needs. A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. The period of protection varies, but a trademark can be renewed indefinitely beyond the time limit on payment of additional fees. Trademark protection is enforced by the courts, which in most systems have the authority to block trademark infringement. In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade. Trademarks constantly influence the purchasing decisions of consumers. A trademark is often referred to as a brand or a brand name and is used by businesses as an identification sign to distinguish their goods or services from those of their competitors. A trademark is defined in the Trademarks Act 2002 as “any sign capable of being represented graphically and distinguishing the goods of one person from those of another…” and can be a name, picture, signature, colour, word, shape, sound, smell or any combination of these so long as it is distinctive. Trademark Holders are the individuals or entities and their designees (such as licensees or assignees) that have, or desire to have, their eligible trademark rights included in the Clearinghouse. A Trademark Holder can submit a Trademark Record on its own behalf or can submit a Trademark Record through a Trademark Agent.
Trademarks serve as source identifiers by distinguishing the goods and services of one person or company from those of another. However, what constitutes a trademark may differ from one jurisdiction to another. Traditionally, trademarks have consisted of a word, a logo or a combination of both. The mark may consist of word or words that are invented or that do not describe the goods or services that are the subject of the trademark application. A mark may also include letters, numerals or combinations of both. A logo may be an abstract design, a stylization or a simple reproduction of everyday objects or images. Over time, other elements besides words, logos and graphic designs have come to serve as identifiers of the source of goods or services, thus serving the function of marks. These are called non-traditional marks. The level of protection such marks receive varies among jurisdictions; what is considered a protectable “nontraditional” mark in one jurisdiction may not be granted any protection in another.
Smell is said to be one of the most potent types of human memory, and businesses show increasing interest in pairing pleasant scents with their products. To obtain registration of a smell mark applicants must be able to visually represent the product’s scent and must show it is distinctive from the product itself. A bottled sample of the smell for example would decay over time and could therefore not be kept on a trademark register. But how does one represent a smell in a visual way? Writing down the chemical formula for a smell is problematic as it is deemed to represent the substance rather than the smell of that substance. Any written description of a smell must be so precise that that particular smell would not be confused with any other.
An additional obstacle to smell mark registration is that the smell must not result from the nature of the good itself.
For example, an application by Chanel to register its well-known No. 5 fragrance as a smell mark in the United Kingdom was unsuccessful on that count – the scent of the perfume being the 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 tires with “a floral fragrance/smell reminiscent of roses” and darts with “the strong smell of bitter beer.” The Office for Harmonization in the Internal Market (OHIM), however, does not agree with the granting of the two UK registrations.
Why should my business register its trademarks? 
Many businesses have distinctive brands or signs but for whatever reason do not take the effort to protect their right to the exclusive use of that name or sign. The reason for this may be that some in the business community believe that by incorporating a company under a particular name or registering a domain name they have exclusive rights to use that name and the ability to prevent others from doing so. This is untrue. Registration of a company name or domain name does not of itself allow the owner of the registered name to take action if a competitor starts using the same or a similar name. The ability of a business to prevent someone else from using a similar or even identical company name or domain name is largely dependent on the reputation and goodwill connected to the name, that is, how well known it is, and whether the name is a registered trademark. The business’s reputation in the market place determines the extent to which the business will be able to enforce their rights under the Fair Trading Act 1986 or a common law action in passing off. However, these actions are often complex, can result in costly legal bills and require the plaintiff to precisely identify and prove the damage suffered as a result of the other trader’s conduct. Additionally, if you operate locally as opposed to nationally and have a strong local reputation, other businesses may be able to establish themselves in a different area of the country using your brand name. As you do not have a reputation in that area of the country, and common law rights such as passing off rely heavily on nationwide reputation, you will be powerless to stop the new business using your brand name. The best protection is obtained by registering the brand as a trademark under the Trade Marks Act 2002.
If you register your brand name as a trademark you will receive a statutory right to protection of that name throughout the whole country regardless of your reputation. This right can be evidenced by the use of ® to indicate to consumers and other traders the trademark is registered. Trademarks are valuable business assets in that they can be sold or licensed. If a competitor starts to use the same or a similar name, trademark registration gives the owner of the trademark a quicker, easier and cheaper way to prevent that competitor from using that name than relying on the Fair Trading Act 1986 or an action in passing off.
Traditionally, trademarks have consisted of a word, a logo or a combination of both. The mark may consist of word or words that are invented or that do not describe the goods or services that are the subject of the trademark application. A mark may also include letters, numerals or combinations of both. A logo may be an abstract design, a stylization or a simple reproduction of everyday objects or images. Over time, other elements besides words, logos and graphic designs have come to serve as identifiers of the source of goods or services, thus serving the function of marks. These are called nontraditional marks. The level of protection such marks receive varies among jurisdictions; what is considered a protectable “nontraditional” mark in one jurisdiction may not be granted any protection in another. A non-conventional trademark, also known as a nontraditional trademark, is any new type of trademark which does not belong to a pre-existing, conventional category of trade mark, and which is often difficult to register, but which may nevertheless fulfill the essential trademark function of uniquely identifying the commercial origin of products or services. Non-conventional trademarks may therefore be visible signs (e.g. colors, shapes, moving images, holograms, positions), or non-visible signs (e.g. sounds, scents, tastes, textures).
What are the main types of nontraditional trademarks?
- Appearance: Depending on the jurisdiction, this type of mark may include the color or combination of colors applied to the products themselves or to the packaging in which they are sold. In the case of services, it could include the visual appearance, externally or internally, of a store or restaurant or, for instance, the design of a menu. The appearance of products, packaging or services is frequently referred to as trade dress.
- Moving images, holograms and gestures: This type of mark includes moving images, which can combine colors, sounds and aspects of product designs. In certain jurisdictions, the motion of the “Lamborghini car door” has been given protections as a motion trademark, because of the unique movement of the door as it is opened or closed.
- Shape: This type of mark may be a three-dimensional representation of the product itself; the container for the product; or the architectural design of a store or signpost, such as McDonald’s Golden Arches. It may be the shape of a label or tag rather than simply the words or colors appearing thereon.
- Sound: This type of mark may be a jingle or a piece of music or other sound, such as the “roar of the MGM lion” or the “Tarzan yell.” It may be a short extract from a composition or an entire musical piece. In some cases, it may be a reproduction of an everyday sound, perhaps in an unusual circumstance.
- Smell: Although specific smells may be associated with particular goods or services, not all of them are protectable as trademarks, because they are functional. For example, the scent of perfume is considered functional. In other cases, a scent is applied or added to a product, and it is not the natural smell of the product itself and does not serve a functional purpose. For instance, in the United States, a cherry scent for synthetic lubricants for high-performance racing and recreational vehicles is registered on the Principal Register. Elsewhere, registrations have been granted for a eucalyptus scent, for golf tees (Australia); “the strong smell of bitter beer,” for flights for darts (United Kingdom); and different fruit fragrances, for containers (Argentina). Scent marks are also referred to as olfactory marks.
- Taste: Some jurisdictions permit the registration of taste as a mark, but they often require that the taste be represented graphically and, of course, that it serve the purpose of a trademark. In many cases it will be difficult to distinguish between the natural flavor of a product and the recipe adopted by a manufacturer to distinguish its goods from those of competitors. Even when the taste is not protected by a trademark registration, such recipes often are closely guarded trade secrets. Taste marks are also referred to as gustatory marks.
- Touch: It is possible for products to be manufactured in such a way that the product itself or its packaging may have a particular sensation to the touch, which can distinguish it from those of competitors. For example, the distinctive texture of certain bags and luggage sold under the LOUIS VUITTON brand may be entitled to protection in some jurisdictions as a touch trademark. Touch marks are also referred to as tactile marks.
- Three-dimensional: The product shape and packaging qualify for the registration under the category three-dimensional trademarks. In order to register a 3D trademark, it is mandatory to qualify the distinctiveness test. In India, shape of goods and their packaging have been included in the definition of trademarks for the first time by the trademarks act, 1999, which came into force in 2003. It is also noteworthy that design in respect of an article is registrable under designs act, 2000. The definition of design under designs act, 2000 excludes trademark. The fundamental distinction between a trademark and a design were enunciated by Delhi high court in corning inc. and Ors. V. Raj Kumar Garg and Ors. The court stated tat a bare reading of definition of design conveys that the design related to the features of shape, configuration, pattern, ornaments applied to an article which appeal to and are adjudged solely by the eye but it does to include trade mark as defined in section 2(1)(v) of trade and merchandise marks act, 1958.
What are the requirements to register a non-traditional trademark?
Trademarks in general must meet certain requirements in order to be considered eligible for protection and registration. These requirements vary from country to country depending on the specifics of local legislation, even though there are several regional or multilateral initiatives and treaties that seek to achieve some degree of standardization (e.g., Paris Convention, Madrid System, Trademark Law Treaty).
In the case of nontraditional trademarks, such standardization initiatives do not normally apply, and specific treaties or legislation are either very limited or nonexistent. As an example, the United States has begun to incorporate into free trade agreements miscellaneous provisions concerning registration of sound marks and olfactory marks. Also, Benelux and Community registrations in the European Union for nontraditional trademarks have been awarded different degrees of protection by national courts.
It is usually more difficult to obtain the registration of nontraditional trademarks than of traditional trademarks. Given that nontraditional marks must be considered trademarks in each jurisdiction in which they are to be protected, generally they have to comply with the basic local requirements. In many cases, this means that nontraditional trademarks are required to consist of a distinctive sign that is capable of serving as a source identifier and that can be graphically represented. However, these basic requirements can be complicated when related to certain nontraditional marks (sound, smell or taste marks, for example), and the requirements can be applied differently based on local practice. For example, a smell that may be considered a trademark in the United States may not be considered a trademark in Sweden, or a graphical representation of a sound mark that is acceptable in Chile may not suffice in Croatia. For these reasons, it is advisable, when seeking registration of a nontraditional mark, to obtain the assistance of qualified local counsel. Many jurisdictions provide some form of protection to nontraditional marks. Most commonly protected are product designs, packaging and product configuration, which are collectively referred to as trade dress. By contrast, the registrability of color, sound, scent, taste and touch is not uniformly recognized around the world.
Why register non-traditional trademarks?
We suggest you consider registering non-traditional trademarks such as smells, sounds and colours as well as traditional trademarks such as words or images. To date, registration of colours has proved to be difficult due to their inherent low level of distinctiveness. The colour must be capable of distinguishing one person’s goods from those of another and must not be a colour which other traders might ordinarily use for their goods or services. However, through use, consumers may come to regard the colour as indicating particular traders goods or services and the colour may then acquire the required distinctiveness.
Examples of sound marks currently registered in New Zealand are Sunlight Detergent’s “squeak” produced by the “friction of thumb or forefinger on dishware”, and the Warehouse jingle. Registration of smell marks has also proved difficult due to the graphical representation requirement. However, experience overseas has shown that registration of smell marks is highly sought after in the pharmaceutical and fast moving consumer goods industries to provide a competitive advantage over other traders. An example of a smell mark is the “smell of fresh cut grass” for tennis balls. As branding strategies are becoming increasingly international, businesses with a strong local reputation must take action to register their trademarks to protect their rights in a brand name. Ideally registration should be done when a business is set up so that further expansion is not restricted. When setting up a new business, do not assume that just because a company name or domain name is available it can be used. It may infringe against a trademark that may later prevent the new business’s ongoing operation
Indian position on non-traditional trademarks
As per section 18 of Indian trademarks act, any application for representation of a trademarks should be in compliance with the rules. According to rule 25(12)(b) of trademarks rules 2002, the application for registration for goods and services has to be such that it can be depicted graphically. Further, rule 28 makes it clear that the trademark should be such that it be able to represent on a paper. Rule 30 further makes the specification to the effect that the graphical representation made should be durable and satisfactory. In addition to this, what needs to be remembered is that rule 29(3) makes it explicit that three-dimentional marks can also be registered and so can a combination of colours.
In the light of all the provisions one may say that while it is possible to include a lot of non traditional marks within this definition, the requirement of graphically representability seems to be an impediment. It is likely that indian courts in future might adopt the sieckmann approach and hence under such circumstances, registrability of trademark will be contingent on several factors including the graphically representability of a non-traditional trademark and whether it is durable or satisfactory.
The Indian courts first time dealt in depth with a trade dress case in William grant and sons ltd v Mc dowell and co ltd. This case dealth with an action of passing off and for the first time recognized the importance of trade dress vis-à-vis a trans border reputation. With regard to shape the settled position of law is that trade dress needs to be distinct and must have acquired secondary significance. The indian courts have also addressed the issue of use of a single colour and has categorically stated that a single colour cannot be inherently distinctive. Recently, Cadbury tried to trademark it purple colour but it was refused. However, with regard to combination of colours, the position is clarified by the statue and the requirement of colours having acquired secondary significance like that of white and red in case of colgate dental products along with inscription of colgate in certain manner seems controversial. With regard to other non-traditional trademarks such as smell and taste marks, there seems to be no case law whatsoever and this issue seems to be fairly unexplored. With regard to sound marks, there however exists a possibility of registration under trademark law as visual perceptibility is not a criterion and there are methods of representing sound marks in a durable and satisfactory manner. How ever, this area also remains unexplored.
Considering the kind of legislation in India with regard to trademarks and the stringent needs of graphical representation of any trademark, non traditional trademark might non become prominent in the commercial market. The advances in technology will be vital for graphical representation of a sensory trademark. At present the trademark registry office in India, may not be enabled enough to allow registration by using updated scientific measure. Besides, the basic purpose of trademark is to indicate the origin of a product, which inevitably leads us to the rationale put forth by the conservative school of thought that believes that sense-based trademarks are neither distinctive nor do they indicate a source under most circumstances thus leading to consumer confusion. The tenor of decisions of the court along with definitions seems to suggest that the judiciary is keen to facilitate registration of non-traditional trademark.
- Registration of Non-traditional Trademark by Neha Mishra, National Law School of India University, Nagarbhavi , Bangalore, 22nd November, 2007 at 6:22 PM.