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Unconventional Trade Mark- Comprehensive View

Article by Vivek Pandey

Introduction

According to Section 2(1)(m) of the Trade Marks Act, 1999, a trademark is defined as a “mark,” encompassing various elements such as devices, brands, headings, labels, tickets, names, signatures, words, letters, numerals, shapes of goods, packaging, or combinations of colors, among others. In simpler terms, any mark, whether it be a word, device, brand, heading, letter, numeral, or a combination thereof, capable of distinguishing the goods and services of one person from another, can be eligible for trademark registration. It’s worth noting that certain marks like smells and single colors are not explicitly mentioned in the Act but can still be protected and granted trademark status. The scope of a trademark, as defined in Section 2(1)(zb) of the Trade Marks Act 1999, pertains to a mark that can be graphically represented and has the capability to distinguish the goods or services of one person from those of others. This includes the shape of goods, their packaging, and combinations of colors.

Unconventional Trade Mark

An unconventional trademark is a classification distinct from conventional or traditional trademarks. Such a trademark can manifest as visible signs like colors, shapes, motion, or holograms, as well as non-visible signs such as sounds, scents, tastes, or textures. For an unconventional mark to be effective, it must possess the communicative capacity to distinguish the goods and services of one entity from those of another. It is essential for the mark to demonstrate distinctiveness, indicating its origin and thereby setting apart the goods or services from others.

Some Known Unconventional Trade Marks

  • Design of a Carlsberg beer bottle (Shape)
  • Google doodle (fluid)
  • Amul girl (fluid)
  • red and yellow combination of McDonald’s (color)
  • Yahoo’s yodel, a man yodelling “Yahoo” (sound mark)
  • Cadbury- shape of purple, Pantone 2685C on their chocolate wrappers (color)
  • Nokia’s Connecting Hands (Motion/device mark)

Landmark Cases: Unconventional Trade Mark

  • Carlsberg Breweries v. Som Distilleries and Breweries Ltd [2017 SCC OnLine Del 8125]:

In the case of Carlsberg Breweries v. Som Distilleries and Breweries Ltd., the Delhi High Court ruled that the design of a Carlsberg beer bottle, encompassing elements such as the shape, pull caps, and labels, did not constitute a novel concept. The court emphasized that there was a discernible distinction between the designs in question. Carlsberg had asserted that Som was replicating its unique trademark-registered bottle design and trade dress with the intent to market Hunter beer.

  • Zippo Mfg. Co. v. Anil Moolchandani [2011 SCC OnLine Del 4562] :

In the legal case of Zippo Mfg. Co. v. Anil Moolchandani, the Delhi High Court issued a ruling that restrained the respondents from selling counterfeit lighters bearing the Zippo mark and 3D shapes similar to those of Zippo’s distinctive lighters. The court concluded that such use amounted to infringement of Zippo’s shape mark, affirming the protection of Zippo’s unique 3D shapes in the context of trademarks. This case underscored the importance of safeguarding distinctive shapes as integral elements of a trademark, reinforcing the legal precedent for the protection of shape marks in India.

  • The Indian Hotels Company Limited (IHCL) established a significant precedent in the realm of shape marks in India by successfully registering a trademark application for the exterior design of the Taj Mahal Palace Hotel in Mumbai in 2017. This legal action effectively prohibited anyone from utilizing the image of the iconic Taj Mahal structure for commercial purposes without obtaining prior licensing from IHCL. The registration underscored the recognition of architectural elements as protectable trademarks, serving as a landmark case that acknowledged the distinctiveness and commercial value associated with the unique design of the Taj Mahal Palace Hotel.

Limitations

In India, the Act does not mention smell/olfactory, taste/flavour as trade marks. The definition does not rule out olfactory marks however graphical representation is difficult in case of such marks. A taste can be described in written form, but the graphical representation hinders the possibility of a registration.

Limitations exist in India regarding the registration of certain types of trademarks. Specifically, the Trade Marks Act does not explicitly include smell/olfactory or taste/flavor as eligible trademarks. Although the Act doesn’t exclude olfactory marks, the challenge lies in the graphical representation of such marks. While a taste can be described in written form, the graphical representation requirement poses a hurdle to their registration.

In 2009, the Trade Marks Registry issued a Draft Manual on Trade Marks, serving as a guide for the registration practice in India. The manual emphasized that trademarks could be registered only if they could be graphically represented and if they had the capability to be distinguished from other products.

Section 9(3) of the Act introduces constraints on shape marks, outlining that shapes resulting from the inherent nature of the goods, those necessary to achieve a technical result, and those conferring substantial value to the goods shall not be registered. This provision aims to prevent a monopoly on shapes, ensuring fair competition and preventing owners from gaining an undue advantage over competitors.

Furthermore, Section 26(4)(i) of the 2017 Rules specifies requirements for the registration of trademarks consisting of the shape of goods or their packaging. According to this rule, the reproduction submitted for such trademarks must include at least five different views of the trademark, along with a verbal description of the mark. This detailed documentation requirement aims to enhance clarity and precision in the registration process for shape-based trademarks.

Past Reforms in Trade Mark Act

Several notable reforms have been introduced in the Trade Marks Act, particularly through the Trade Marks Rules of 2017, reflecting a positive evolution in trademark registration processes:

  • Sound Marks Submission:

The Trade Marks Rules of 2017 marked a significant advancement by allowing the submission of sound marks in an MP3 format. Rule 26(5) specifically outlined the format and duration for sound marks, requiring a 30-second length. This provision acknowledged the growing importance of non-traditional marks, such as sounds, in the realm of trademark recognition.

  • Registration of Color Marks:

Rule 26(2) of the Trade Marks Rules, 2017 facilitated the registration of color marks. However, it’s noteworthy that this provision is limited to a combination of colors. This acknowledgment of color combinations as distinctive elements demonstrates an understanding of the diverse ways in which trademarks can be visually represented.

  • Graphical Representation of Trademarks:

Rule 2(1)(k) of the Trade Marks Rules, 2017 emphasized the graphical representation of trademarks. According to this rule, a trademark can be represented graphically through a set of pictures, continuous snapshots of a moving mark, and accompanying descriptions. This provision underscores the importance of clarity and precision in the visual representation of trademarks, especially in cases involving dynamic or evolving marks.

These reforms collectively reflect an effort to modernize the trademark registration process, accommodating non-traditional marks, and providing clear guidelines for graphical representation. They signify a recognition of the evolving nature of trademarks in a contemporary and dynamic business environment.

Conclusion

In the contemporary era, there is a pressing need to explore the registration of additional unconventional trademarks. As we advance, it becomes crucial to consider not only the technical aspects of registration but also factors such as goodwill, distinctiveness, public image, and overall association before granting registration to any unconventional mark. Failure to do so could lead to confusion and undermine the fundamental purpose of trademarks. While the Trade Marks Rules of 2017 made commendable strides by addressing certain unconventional elements like sound marks, color, fluid, and motion, there remain aspects within the Trade Marks Act of 1999 that warrant further reform. Companies should have the opportunity to protect not only the traditional elements of their brand but also distinctive features like fragrance, recipes, spices, and ingredients that contribute to a unique taste, as well as memorable jingles. Recognizing and accommodating these diverse elements in the trademark registration process would not only align with the evolving nature of businesses but also foster a more comprehensive and inclusive protection framework. Such reforms would serve to encourage innovation, creativity, and fair competition while safeguarding the distinctiveness and integrity of brands in a dynamic and modern business landscape.

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