Non-Conventional Trademarks

INTRODUCTION

The traditional subject matter of a Trademark can be understood by the definition under the Trademark’s Act, 1999. Section 2(zb) defines a trademark as “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 colours.” The phrase ‘may include’ implies that the definition is not exhaustive. This ambiguity, coupled with various technological developments, has introduced new forms of trademarks commonly known as non-conventional trademarks.

WHAT ARE NON-CONVENTIONAL TRADEMARKS?

As the name suggests, non-conventional trademarks are marks outside the realm of Conventional trademarks. They are usually based on appearance, shape, sound, smell, taste, textures etc. From a global perspective, the following are considered as the general categories of non-conventional trademarks:

1. Smell/scent/olfactory marks;

2. Sound/aural marks/audio signature;

3. Tactile/touch/texture/haptic marks;

4. Single colour marks;

5. Taste/gustatory marks;

6. Holograms and Moving images/motion/animation

Though they are not expressly included in the Trademarks Act, 1999, the general definition of a trademark appears to incorporates them, thus permitting their registrability. While each country has set out requirements for registration of trademarks under their respective Trademark laws, we have certain uniform standards set by International Conventions. These include distinctiveness and graphic representation. Distinctiveness means that a mark must be capable of being distinguished from that of the others in the same category of goods/services. Graphical representation indicates a requirement of the mark of being capable of being represented visually by pictures, lines or characters and phrases so that it can be precisely identified. For instance, Coca-Cola Corp owns the trademark of the name Coca-Cola, as well as the shape of the bottle. While the well-acquired reputation of the brand meets the distinctiveness requirement, the red and white logo with the words ‘Coca-Cola’ as well as and the pictorial representation of the bottle’s shape meet the requirement of graphic representation. While a non-conventional mark based on appearance or the shape of the product is easily representable, it is relatively tricky to categorise marks based on their sound, smell, taste and texture in this category. Therefore, the Courts and the Trademark Registries often face issues while determining the registrability of non-conventional trademarks.

Let us now look at the various forms of non-conventional trademarks.

1. OLFACTORY MARKS

The sense of smell is considered one of the most potent senses which has a significant impact on human memory. Multiple industries have capitalised on this particular human feature by associating their brands with a popular or a pleasing scent. This became another catalyst in efficiently increasing sales. The trademark law permitted registration of smell/ a scent as a valid trademark by visually representing the product’s small and establishing distinctiveness. The most common example of this type of trademark is the trademark scent of Play-doh. Since bottled smell would eventually decay, the representation of a scent is required to be precisely described. A few scents have been registered owing to their apt description in such a manner that it is not confused with any other smell. For instance, registration of a “the strong smell of bitter beer” for Darts or ‘scent of newly mown grass’ for tennis balls. The first time a scent mark was recognised was in the US case In Re Celia Clarke, where a graphical description of the smell as 'a high impact, fresh floral fragrance reminiscent of Plumería blossoms' was accepted for sewing thread and embroidery yarn.

In comparison to other forms of trademarks, the number of registered scent marks is relatively low. This is mostly concerned with the fact that it is technically arduous to graphically represent an olfactory mark. Any scent that has received registration to date, has done so under a verbal description of the scent for count for its visual representation. But the subjectiveness of a verbal description makes it tough to categorically identify a specific scent as distinctive from the scent of others’ products. It is paramount to note that a scent mark cannot be registered for a product that is solely sold based on its scent such as a perfume. The Trademark law clearly states that the scent should not be functional. Due to this reason, the U.K. registry had refused to register Chanel’s well-known scent No. 5. The principle that the trademark should not be descriptive of the product is strictly applicable in this case. The Indian trademark law also requires a strict application of the principle of non-functionality.

2. SOUND MARKS

Sounds play a vital role in the marketing of a brand. Multiple industries have capitalised upon this opportunity by registering sound marks. This led to the customers associating a sound with their good/service, thus increasing the effectiveness of their advertisements. These marks are the aural/audio signature of a product. The most famous sound mark is the sound of Tarzan yelling which consists of approximately 10 sounds. Other examples of famous sound marks include ESPN’s “DaDaDa-DaDaDa”, the signature Nokia ringtone, NBC’s chimes, Homer Simpson’s “D’OH” as well as Netflix’s initial “Da dum” sound.

These marks are relatively easy to register. The graphic representation of a sound mark usually involves a series of notes representing pitches, cords or cadence. With respective to distinctiveness, the general rule in addition to the capability of distinguishing from others’ marks is that it should not be a sound which any other similar business may use in their ordinary course of business. Yahoo's yodel was the first sound mark to be granted by the Indian Trade Marks Registry in 2008.

3. SINGLE COLOUR MARKS

It is a well-known branding strategy to associate a colour with a particular brand. This leads to the specific colour triggering a subconscious memory of a connection between the colour and the brand. For instance, the colour combination of yellow and black for DeWalt power tools. Registration of a combination of colours as a Trademark is fairly common as the trademarks law allows the same with no difficulty. But the courts have indulged in expansive deliberation to decide upon whether a single colour is permissible or not.

Since it is nowhere expressly excluded, the Indian law had allowed registration of single colour marks in the Manual of Trademarks, Practice and Procedure, 2015. However, a high standard of acquired distinctiveness was also established. Usually, the Theory of Colour Depletion is applied to register singular colours. This Theory brings up the concern that there are a limited number of colours and granting exclusive rights to colours would sooner or later deplete the available stock. This would lead to an anti-competitive market. But the Theory essentially eliminates the registration of the seven basic colours only, not multiple shades of those colours.

In a recent Delhi High Court judgement, Christian Louboutin Sas v. Mr Pawan Kumar & Ors., the court had considered whether a singular colour (red) of the sole of a shoe can be considered as a valid trademark. In this case, the court had accepted the specific shade of ‘Red sole’ as a valid trademark because it is a well-known mark and therefore had acquired distinctiveness. But the question of whether single colour trademarks can be registered in India is still left unanswered. Other common examples along with Louboutin’s Red Sole include Lilac of Milka chocolates, the Tiffany blue box as well as the canary-yellow shade of Post-it notes.

4. TACTILE MARKS

These marks essentially involve a feature related to the sense of touch. Touch is one of the most prominent human senses. This is the primary purpose of using a Tactile mark for product branding. This was first recognised in 2006 when the International Trademark Association adopted a Resolution supporting the recognition and registration of touch marks. Like any other mark, a touch mark cannot be functional in nature. Since converting the sense of touch into a protectable brand is not easily accomplished, there are fewer touch marks.

The world’s first texture mark can be traced back to 2004 when Diageo drinks company had registered the “crackle-glass texture” as a separate product identifier for the Grand Old Parr, a blended Scotch whisky. The Ecuador trademark office registered the mark which was graphically represented as “by a dual-printing process in which the inked portion was printed first, followed by a second raised impression or embossed printing of the texture mark itself on the same page” and looked like a raised honeycomb design.

Due to the lack of the ability to establish distinctiveness, these marks are generally only registered after they have acquired distinctiveness after being in use for a substantial amount of time. In one instance, the Federal Patent Court of Germany denied the trademark described as “The rough feeling of fine sandpaper" for beverages due to the lack of a distinctive character. Though, few common instances of a registered texture trademark of American Wholesale Wine & Spirits, Inc. described as “a velvet-textured covering on the surface of a bottle of wine” as well as “a leather texture wrapping around the middle surface of a bottle of wine” registered by the David Family Group LLC in the United States in 2008.

5. TASTE MARKS

A taste mark is registered to associate a particular flavour with the taste of the product. It is essential to note that no food products can have a registered trademark due to the functionality requirement. Proving a non-functionality test is extremely cumbersome in the case of taste mark because most products are never tasted unless they are intended to be eaten. And in this case, taste becomes a functional feature.

Like a touch mark, tastes are also not inherently recognised as distinctive and the graphical representation of a taste mark also suffers through the same ordeal as that of a scent mark. Therefore, most importantly they have to be proven to have acquired distinctiveness. This is a major hurdle in the registration of taste marks. The most common type of products that can use this type of mark for commercial benefits is the pharmaceutical industry, where the intended function of a tablet is not to savour its taste. But the U.S. trademark court had pointed out that “it is difficult to define how taste can act as a trademark when consumers only taste goods after purchase.” Eli Lilly’s, a pharmaceutical company had made a futile attempt to register the taste of artificial strawberries for their medicines and N.V. Organon also failed to register an orange flavour for its pharmaceuticals. Such registrations have been denied on the grounds that any pharma company is entitled to use such flavours to disguise the unpleasant taste of their medicines. Further, it is not established yet that the consumers would perceive it as a trademark. They are more likely to assume that any added flavour is to disguise the bitterness of the tablet. But the court had recognised the capacity of a taste or a flavour to be registered as a trademark.

6. HOLOGRAMS AND MOVING IMAGES

With the advent of multimedia and other related technologies, digital marketing has become an integral component of the promotional strategies of every industry. This has ushered in possibilities of registering moving images and holograms as trademarks.

A Hologram as a trademark is used usually to uniquely identify the commercial origin of a product or a service. Applicants of a Hologram mark along with ensuring distinctiveness and graphical representability need to include a description of the view of the hologram when it is moved in different directions. The Glaxo Group has a trademark registration for the holograms hat appears on toothpaste, dental floss, mouthwash and other similar goods. Another example is the American Express' hologram trademark in the United States to distinguish its credit card.

Moving images as a trademark comes in handy when a single image is insufficient to adequately represent the company and instead a sequence of multiple images is used. Such a sequence can be easily made distinctive and is capable of being represented graphically. Sony Ericsson’s flipbook depicting 20 images is one of the initial motion marks. A couple of well-known motion marks include the Microsoft window’s logo visible while starting any window’s PC or laptop as well as the Century Fox Film Corporation's logo with floodlights trailing back and forth across the sky.

CONCLUSION

Though non-conventional marks such as scent and sounds are not a traditionally accepted practice, it has been beneficial to involve them in the ambit of registrable trademarks. These types of marks create a psychological impact on its customers, thus acting as an indispensable tool of marketing. Non-conventional trademarks have proven to be of commercial significance in a manner that pushes the boundaries of the competitive market, thus furthering the scope of a healthy competition, which is the primary objective of the Trademark law. As an additional boon, these marks have also provided for a situation where people who are visually impaired or illiterate can distinguish between goods and services based on their sound, smell, shape, etc.

REFERENCES:

1. Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994).

2. Can you trademark sounds, smells, colours, motions and flavours? - https://www.worldtrademarkreview.com/brand-management/can-you-trademark-sounds-smells-colours-motions-and-flavours

3. Christian Louboutin Sas v. Mr Pawan Kumar & Ors., 2018 (73) PTC 403 (Del).

4. Dev Gangjee , Non Conventional Trade Marks in India, National Law School of India Review , 2010, Vol. 22, No. 1 pp. 67-95 (2010).

5. In Re Celia Clarke, USPQ 2d 1238 (1990) (TTAB)

6. L. Kenneth Port, "On Nontraditional Trademarks" 38(1) Northern Kentucky Law Review 1-58 (2012).

7. Lukose, Lisa P. “NON-TRADITIONAL TRADEMARKS: A CRITIQUE.” Journal of the Indian Law Institute, vol. 57, no. 2, 2015, pp. 197–215. JSTOR, www.jstor.org/stable/44782501. Accessed 13 Mar. 2021.

8. Non-Conventional Trademarks: A Legal Analysis - https://www.khuranaandkhurana.com/2019/04/15/non-conventional-trademarks-a-legal-analysis/

9. PAZ HOROWITZ ROBALINO GARCÉS (PAZ HOROWITZ) OBTAINED REGISTRATION OF OLD PARR CRACKLE-GLASS “TEXTURE” MARK IN ECUADOR- https://ntmblog.wordpress.com/2015/01/07/paz-horowitz-robalino-garces-paz-horowitz-obtained-registration-of-old-parr-crackle-glass-texture-mark-in-eucador/

10. Trademarks Act, 1999.

11. Smell, Sound and Taste – Getting a Sense of Non-Traditional Marks- https://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html#:~:text=To%20obtain%20registration%20of%20a,kept%20on%20a%20trademark%20register.