UNCONVENTIONAL TRADEMARKS

This Article is written by Anju Malik of Department of law, Bhagat Phool Singh Mahila Vishwavidyalya, an intern under legal vidhiya.

ABSTRACT

This paper examines the status of Unconventional Trademarks both internationally and in India”. Unconventional trademarks are those that can produce sound, taste, smell, motion, etc. in addition to having the ability to distinguish their goods from those of others. Unconventional trademarks should identify the source and set the goods apart from competing ones. The registration of nontraditional trademarks in the United States, the United Kingdom, and India was the focus of this paper’s attention. The application of trademark laws to unusual trademarks has been addressed in relation to Indian law. In addition, the article highlighted the registration of unusual trademarks.

KEYWORDS

Trademarks, Unconventional Trademarks, Conventional Trademarks, Trademark Rule, Well – known Trademark, Trans Boarder Reputation.

INTRODUCTION

Intellectual Property Rights (IPR) are a topic that comes up whenever we discuss trademarks, whether they are traditional or nontraditional. IPR allows the creator of any creative or innovative product the ability to own their innovation or creative idea in the same way as any other tangible product.[1] Trademark, like copyrights and patents, is one of the parts of IPR laws, and its function is to protect the “mark” of the product or the service. So, a trademark can be defined as any mark which can be represented in some form and can distinguish the product or service which it is representing. A trademark can be any particular color, any particular shape, name, shape, signature, sound, etc. [2]. Particularly with relation to trademarks, the field of IPR has experienced significant growth recently. The purpose of a trademark, which is a component of IPR laws along with copyrights and patents, is to safeguard the “mark” of a good or service. So, any mark that can be represented in some way and distinguish the good or service it is representing can be considered a trademark. A trademark can be any specific color, any specific shape, any name, any shape, any signature, any sound, etc. According to Section 2(1) (zb) of the Trademarks Act, a trademark is “a mark capable of being represented graphically and which is capable of differentiating the goods or services of one person from those of others and may include shape of items, their packaging, and combination of colors.” Any mark, including words, symbols, brands, headers, letters, and numbers, that can distinguish the goods and services of one person from those of another may be registered as a trademark. Despite the fact that all of the aforementioned are included in the definition of a mark, other marks, such as aroma and single colors, are not specified in the act. India’s Trade and Merchandise Act of 1958 was the country’s first law managing trademarks. In its place, the Trademarks Act, 1999, which updated and consolidated the law governing trademarks, was later introduced. The legislature believed that the new Act’s approval was essential for India to uphold its duties as a WTO member and to adhere to the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement. The prior statute prohibited the registration of trademarks that were unusual in some way, such as ones that used a particular voice tone or color scheme. The Indian Legislature and Judiciary have adopted a progressive approach to the Trade Mark legislation, therefore the position there has not yet been established. The Indian judiciary refers to precedents when the matter has already been settled when drafting its statutes.

WHAT IS UNCONVENTIONAL TRADEMARKS?

The term “unconventional trademarks” is broadly inclusive because it includes marks that don’t fall under the category of conventional marks, such as those made up of letters, numbers, symbols, logos, or combinations of these elements. It also includes marks based on texture, taste, smell, and other senses. An unconventional or non-conventional trademark needs to be able to communicate how its goods and services are superior to those of rival businesses or people. Shape, color, movement, location, and holograms are examples of visual signs. Other examples of non-visible signs include texture, taste, sound, and smell. A trademark, as used to denote a product’s origin, is often any mark that is unique to that product. These symbols commonly appear as words, objects, digits, etc. Unconventional Trademarks are a new sort of trademarks that don’t fit into the category of pre-existing conventional trademarks. They are also sometimes referred to as non-traditional or non-conventional trademarks. Unusual trademarks frequently come in the form of tastes, odors, forms, or colors. A unique mark must have the ability to communicate well enough to distinguish between the goods and services provided by other individuals. To distinguish the goods or services from those offered by rival companies, the mark must reveal source and possess distinctiveness.

Certain conditions must be completed in order for an unconventional trademark to be registered: –

• The mark must already be recognizable in some way.
• The product in question needs to stand out from competing goods.
• The mark should be able to be graphically displayed.

In light of these unique trademarks, it’s interesting to consider what exactly is covered by a trademark. Regarding the situation in India, the laws are changing. It was asserted that the sound marks for Yahoo! And Allianz Aktiengesellschaft had been registered with the Indian Trade Mark Registry. In a different decision, the Delhi High Court affirmed its denial of a claim for trade mark infringement made by “Zippo Lighters” to protect the appearance of their products.

“Registration And Enforcement of Trademark”

REGISTRATION

To effectively register and obtain legal protection for your trademark, follow the instructions provided.

• Fill out the required paperwork to register a trademark at the closest trademark registry office to your location; the registrar will then decide whether to accept or reject your application.
• If the Registrar determines that the application was approved in error or at the request of the applicant after hearing his side of the story, he may do so at that time and proceed as if the application had not been accepted.
• When the registrar accepts an application for registration, it must be publicized as required before it is approved, unless the registrar gives an exception due to special circumstances.
•  Following written notice of the trademark to the registrar, the accepted trademark is available for public opposition for a period of four months.
• Before or after the application is accepted, the registrar may grant correction or change to any part of the application. For registration to be permitted, the entire procedure must be finished within a year of the application date.
• Upon acceptance of the trademark application, whether the application was opposed or the opposition was upheld in the applicant’s favor, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof, sealed with the Trade Marks Registry seal. Ten years are allotted for the trademark registration process. However, it may be periodically renewed in compliance with the provisions of this section.

The notions of “Well-Known Trademark” and “Trans-Border Reputation” are also acknowledged in India. “In the concept of well-known trademark, as the name implies, businesses that are recognized as distinctive and have a physical presence in India are protected”, whereas in trans border reputation, businesses are offered protection despite not having a physical presence in India. Google, Yahoo, Reliance, and other companies are some examples of the former, whereas Apple, Volvo, Gillette, and other companies are examples of the latter.

ENFORCEMENT

The remedy for passing off provided by the TM Act of 1999 protects trademarks. In India, trademark protection against infringement is available without trademark registration. The infringement of a trademark is subject to civil or criminal proceedings. In the event that a trademark is violated, there are severe penalties.

A penalty has been given for using false trade marks, trade descriptions, etc., and for selling products or rendering services while using a fake trademark or false trade description, respectively, in accordance with Sections 103 and 104 of the 1999 Act. These are the punishments:

• Imprisonment for a minimum of six months and a maximum of three years.
• A fine of at least 50,000 rupees, but not more than 2 lakh rupees.

The court may impose the following sanctions in civil cases:

• Order for an interim or permanent injunction
• Police officer’s search and seizure
• Demand determines profits
• Forfeiture of counterfeit products
• The expense of legal action

When significant losses have occurred as a result of infringement, Indian courts have taken harsh action. In some situations, punitive damages have been awarded to the plaintiffs as compensation. In the 2016 case “Cartier International AG v. Gaurav Bhatia”, the plaintiff operated a prosperous business in India. The plaintiff claimed that the defendant had been selling knockoffs of their products on his website along with those of other luxury brands due to the growth of the e-commerce industry. Several fake goods were discovered during the raid on the defendant’s home. Numerous approaches were presented by the plaintiff to calculate the revenue generated by the selling of counterfeit goods. The defendant purposely skipped out on the court hearings. As a result of the defendant being found guilty, the court imposed a permanent injunction and awarded damages in the amount of Rs. 1 crore as a consequence.

WHAT ARE DIFFERENT TYPES OF UNCONVENTIONAL TRADEMARKS?

The different types of Unconventional Trademark are as follows:

• Smell Trademark:
• Although many countries now recognize the registration and protection of product smells as trademarks, the registration process is still difficult because it cannot be graphically depicted and necessitates an extra human effort to show how the fragrance differs from the product. Smell is one of the strongest senses in the human body, allowing people to recall their prior experiences with ease.
• Without the necessary connection to the product, the smell must be distinctive and cannot, in and of itself, qualify to be registered as a trademark.
• The fragrance must also be a result of the product’s qualities rather than a naturally occurring scent for it to qualify as a smell mark.
• The chemical make-up of the medication has been described numerous times to describe the smell. However, some companies registered smell as their trademark after passing all the required tests.
• Examples of well-known smell trademarks include a UK tire manufacturer’s rose-scented tires, a London-based company’s beer-scented dart flights, and a Dutch company that registered the aroma of recently cut grass for their tennis ball.
• Taste Trademark:
• Today, a number of jurisdictions will register taste marks as trademarks.
• The most important legal requirement for trademark registration is to demonstrate that the good or service is unique and not misleading, generic, descriptive, or similar to another brand.
• A mark can be registered and given trademark protection if it satisfies the originality requirements and can be graphically represented.
• But how do you represent a flavor mark graphically, and can you articulate taste in words?
• Another crucial question is whether the functioning theory will be violated if flavor marks are given trademark law protection.
• For instance, mango juice cannot be protected under trademark law for its taste because it performs the same purpose as a mango, which is its flavor.
• As a result, the functioning doctrine when applied disqualifies a product intended for human consumption from trademark protection under the taste category.
• Trademark For Motion/ Movement Trademark:
• A motion mark is a moving logo, symbol, video, or name that a business or the person who owns a product or service uses to draw attention to that product or service from consumers.
• Animation software and computer programs help with the development of motion marks.
• Motion markers are recognized in a very small number of nations.
• For instance, the trademarks of Motion Pictures, 20^th Century Fox Movies, and Columbia Pictures are well-known motion marks registered in the USA, 11, where the phrase “20^th Century Fox” appears in three lines in golden color while the music plays in the background and the camera moves from left top to right bottom while the phrase is brought to the center of the screen as shown in the Ice Age animated film and the Deadpool movie.
• A motion mark is not included in the Indian Trademark Act. The suitable portrayal of motion marks will require movement of the mark’s particular word, logo, symbol, etc. as well as sound, which is challenging to depict in text form. This makes graphical representation of motion marks tricky.
• A motion mark must be presented to the registrar as a collection of markings in India because it cannot be registered there on its own.
• Due of the extensive testing needed for registration, registration of motion marks under trademark law is uncommon in India.
• Touch Trademark / Texture Trademark:
• A person has five senses, one of which is touch. It is possible to use a product’s texture as a marketing strategy to draw customers.
• Touch markings are one of these non-traditional marks, and in order for them to be protected by trademark law, they need to be recognizable to the average consumer and able to be graphically represented.
• Touch mark is another term for texture mark. The touch mark should fulfill the criteria of a typical trade mark and not merely serve as a decoration or packaging for a good or service.
• There should be no connection between the contact mark and how well the device works.
• The consumer should be able to associate the brand with the good or service, and it should be able to be represented graphically.
• Claims for protection under trademark law for touch markings are unusual as compared to other non-conventional marks because it is challenging to graphically depict the feel of the product texture in many countries, including India.
• Due to the complexity of the graphical representation, touch markings are the least desirable mark for registration, hence none have been submitted for registration to the Government of India’s Ministry of Commerce and Industry’s Controller General of Patents, Designs, and Trademarks.
• Hologram Trademark:
• Another non-traditional trademark is the “Hologram mark,” which employs a hologram to show where goods or services are from.
• From different perspectives, the hologram trademark will appear in a variety of hues.
• 13 These holographic markers stop both accurate and incorrect copying. In order for the mark to be registered under trademark law, it must be visually represented and depict all tangible features, including images seen from different angles. This is difficult because a hologram would have changing colors depending on the angle from which it is viewed.
• An explanation of the hologram’s varied pictures when viewed from various angles, which is challenging to convey in writing, should be included in the application for registration.
• Colour Trademarks:
• Trademarks may be registered for any symbol that conveys meaning or a message and may be recognized by our senses.
•  Our visual senses can detect the color, and they may interpret it to convey a specific meaning. As a result, it can now be registered as a trademark.
• The color trademark is recognized for color combinations, but because there are so many different shades of a single color and because it lacks the intrinsic potential to be distinctive, registration of a single-color mark is unclear.
• Because there are so few colors available, registering a single color as a trademark will bring disputes with other front-runners and restrict anyone from using the color. This is another problem with registering a single color.
• The logo may look distinctive and noticeable due to the color mix. The purple Cadbury wrapper, for example, has been around for a very long time. It now has a secondary connotation as a result. People can now tell Cadbury chocolates apart from other brands of chocolate because to this characteristic.
• Sound Trademark:
• A non-traditional trademark is one that uses sound. To identify a good or service, a musical note, like the Nokia ringtone, or a sound note, like the “Yahoo yodel,” might be employed.
• Under trademark law, the mark must have a graphic representation, and by writing down the musical notes, the sound mark can be represented graphically.
• However, proving distinctiveness and that typical customers would connect the good or service with the sound mark are prerequisites for registering a sound mark.
• One such example is the corporate jingle “Dhin Chik Dhin Chik” of ICICI Bank in India, which is a sound mark that is protected under trademark law.
• Shape Trademark
• Similar to colors, textures, and other non-traditional trademarks, the shape of a product may also be protected if the client associates that particular shape with the product.
• The Trade Mark Act of 1999 and the UK Trade Mark Act of 1994 both define shapes as marks.
• However, form marks are difficult to register since they cannot be visually represented and are hard to distinguish from other non-traditional trademarks.
• Zippo lighters, Coco-Cola bottles, Toblerone chocolate bars, etc. are just a few examples of companies who have been successful in maintaining the design of their products.

LAWS REGARDING UNCONVENTIONAL TRADEMARKS IN DIFFERENT PARTS OF THE WORLD

[1] THE POSITION OF UNCONVENTIONAL TRADEMARKS IN THE UK AND US:

The UK Trademark Act, 1994’s definition of the term “Trademark” stipulates that it must have a pictorial representation and be able to differentiate the products of one undertaking from those of another.

In order for a trademark to be registered in the UK, a graphical representation is required. The UK adheres to tight regulations regarding what defines a graphical representation and has strict laws governing the registration of trademarks. As a result, registering an unusual trademark in the UK becomes rather challenging.

A trademark must have a graphical representation in order to be registered in the UK. The UK has stringent laws governing the registration of trademarks and adheres to stringent standards for what counts as a graphical representation. As a result, it becomes quite challenging to register an unorthodox trademark in the UK.

The UK Registry Work Manual states that if it can determine what the applicant intends to use as a sign without seeing any supporting examples, a sign may be portrayed graphically. Additionally, the applicant may propose using the graphical depiction in a future application or at the location of the sign. It ought to be comprehensible to someone reading a trademark journal.

Any sign, or any combination of signs, that can distinguish the goods or services of one enterprise from those of other enterprises, shall be capable of constituting a trademark, and further, the members may make the registrability on the basis of distinctiveness through use. This is stated in Article 15 of the TRIPS Agreement. The sign must be visually discernible in order to qualify for registration.

The Lanham Act of 1946, which governs trademarks in the United States, does not mandate graphical representation for trademark registration, making it relatively simple to register nonconventional trademarks. The scent mark and color mark are two examples of unorthodox trademarks that can be registered in the US. According to the US Patent and Trademark Office, a trademark can be registered provided it can identify the source of the aforementioned goods and is not only descriptive or functional.

LAWS IN INDIA:

Since the past ten years, India’s trademark law has seen significant development. The Trademarks Act, 1999 (in effect since 2003) was passed in order for the country to fulfill its commitment under the TRIPS Agreement and the Paris Convention for the Protection of Industrial Property. Many new developments were made after the Act was passed, like the ability to file trademark applications electronically.

The Trademarks Act’s Sections 2(1) (zb) and 2(1)(m)[13] They ought to be read together. After analyzing these two sections, it becomes clear that the term “trademark” encompasses packaging, shapes, color, etc. Despite these restrictions, great attention should be paid when registering trademarks for things like color, fragrance, sound, shape, etc.

Nonconventional trademarks may be used to characterize products even when they cannot always be specified and depicted graphically, as long as the product is expressly state.

On the other hand, the Indian Legislation specifically states that markings must be graphically depicted. A mark must be graphically expressed in the following circumstances: [14]

• The graphical depiction makes it possible to properly identify the sign.
• Graphical representations may be used in place of marks or signs.
• A person can reasonably grasp what the trademark signifies.

As a result, when India awarded registration for good trademarks, it simply appropriated the Shield Mark doctrine that the ECJ had established in the case of “Shield Mark BV V. Joost Kist” The European Court of Justice claims that a written description of a sound cannot be considered to be a graphical picture since it is not precise and clear enough. However, the court also stated that if the sound was recognizable and unique, there was no reason why it couldn’t be registered as a trademark. The Trade Mark Registry in India has not done any research into the use of sound as a trademark. The government has focused on creating laws that are more concise, effective, and transparent working of the registry.

CASE LAW ON UNCONVENTIONAL TRADEMARKS:

  [3] “Cipla Limited V. M.K. Pharmaceuticals”

A blister packaging of a distinctive orange-colored, oval-shaped pill was not granted trademark protection by the High Court of Delhi in Cipla Limited vs. M.K. Pharmaceuticals in 2007.

The same court has also given the blue color of the Parachute Coconut Oil bottle protection in India.

Additionally, trademark registration for single-color marks was given to Victorinox (brown color label) and Telekom (magenta color label).

    [4] “Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd.”

In the case of Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd., where the color scheme of red and white was in question, the High Court of Delhi determined that if a product has a distinctive color scheme, style, shape, or texture and has been on the market for a substantial amount of time, it can be assumed to have acquired secondary meaning as a result of its goodwill and reputation.

[5] “Britannia Industries Ltd. V. ITC Ltd.”

In the case of Britannia Industries Ltd. V. ITC Ltd., the High Court of Delhi ruled that Britannia could not be prevented from using the yellow and blue color scheme as its trade dress for its biscuits since ITC had not proven that the combination had acquired goodwill.

However, despite being a well-known brand with a global reputation for premium goods, the High Court of Delhi in 2018 rejected Christian Louboutin’s request to use the color red as a color mark.

Adopting color, sound, and form branding methods helps companies build their brands in fiercely competitive markets, ensuring that only high-quality products and services stand out.

It Is safe to conclude that there is a worry about graphical representation in the registration of non-traditional trademarks in India, although the requirements are not significantly different from those for traditional ones. For the display of unusual marks, appropriate techniques must be developed. To adapt to such concepts and include the requirements in the act itself to clarify the registration criteria for non-conventional/unconventional trademarks, Indian IPR legislation has to be modified. However, current trends suggest that Indian courts will be willing to support a thorough strategy for safeguarding distinctive marks.

CONCLUSION

Technically, there is no distinction between traditional and unconventional trademarks. According to the law, a sign or mark qualifies as a trademark if it can make a product stand out from similar goods. Even unusual trademarks meet that condition. It’s only that unusual trademarks have a mysterious background, making it a little challenging to register them. Trademark law is an extremely fluid field. In order to adapt to changing circumstances, the law should likewise be adaptable. [6] Visual perception should not be and is not a sine qua non for building brand association in the minds of consumers.

REFERENCES

[1] Anita Rao and V. Bhanoji Rao, Intellectual Property-A Primer (1^st edition, Eastern Book Company)

[2] Source http://www.businessgyan.com/content/view/623/220/

[3] https://www.indialawoffices.com/legal-articles/unconventional-non-traditional-trade-marks-in-india

[4] https://www.indialawoffices.com/legal-articles/unconventional-non-traditional-trade-marks-in-india

[5] https://www.indialawoffices.com/legal-articles/unconventional-non-traditional-trade-marks-in-india.

[6] Vatsala Sahay, A defence of unconventional Trademarks available at < https://spicyip.com/2010/09/guest-postdefence-of-unconventional.html >