By- Mohd Imran!!
A trademark according to S.2(1)(zb) of the Trademarks Act, 1999 means “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 the shape of goods, their packaging and combination of colours.” From a cursory reading of the same, it can be seen that the definition is quite open-ended. Any mark, be it a word, device, brand, heading, letter, numeral etc., capable of distinguishing goods and services of one person from that of another, can be registered as a trademark. Although the entire aforementioned find a place in the definition of a mark, there are certain marks such as smell and single colour that does not find a mention in the Act. They can still, however, be protected and given trademark status.
WHAT IS AN UNCONVENTIONAL MARK?
Traditionally trademarks can be defined as any mark which is unique to the product and was identified with the origin of the product. These marks would usually be word marks, device marks, numeral etc. An unconventional trademark is a type of trademark which does not fall into the category of conventional or traditional trademarks. An unconventional trademark is mainly in the form of sound marks, smell marks, shape marks or colour marks. An unconventional mark must possess the communicative ability to be able to differentiate the goods and services of one person from that of another. The mark should have the potential to be distinctive; it must indicate the source and thereby distinguish the goods or services from others.
LAW REGARDING UNCONVENTIONAL MARKS LAW IN US
In the United States, trademarks are governed by the Lanham Act of 1946. The Lanham Act encompasses unconventional marks by not expressly excluding them. The Lanham Act does not require graphical representation as a pre-requisite for filing a trademark application. Therefore, unconventional marks are fairly easy to register in the U.S. To put it simply, any mark that is non-visual in nature would only require a detailed verbal description for it to be considered for registration.1 Therefore a sound mark, smell mark or any other unconventional mark, if proven to be distinctive can be registered under the Lanham Act. Another criterion for these unconventional marks to be registered is that they should not be functional in nature. Under the doctrine of functionality, applicants are prohibited from trying to register a mark which has a direct nexus to the good or is, in fact, a feature which is essential to the genre of goods it is applied to. There should be no nexus between the smell and the function of the good it is applied to. The first U.S scent mark registration was issued in 1990 in the case of In re Celia, d/b/a Clarke’s Osewez,2 The scent registered was for a “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” used in connection with “sewing thread and embroidery yarn”.
Some of the sound marks registered in the U.S are:
- Tarzan’s yell
- Merrie Melodies theme song
- The spoken term ‘cha-ching’
- The NBC chimes
As for colour trademarks, in 1985, the U.S Court of appeals for the Federal Circuit held in Re Owens- Corning Fiber–glass3 that the colour pink as uniformly applied to fibrous glass home insulation was registrable as a trademark. This was one of the earliest decisions on the registrability of single colour marks.4
The most recent example would be the case of Christian Louboutin vs. Yves Saint Laurent.5 Christian Louboutin, a renowned footwear brand based in Paris produces luxury footwear, the vast majority of which consists of a red lacquered outsole. Christian Louboutin applied for a registration for the red sole and was granted federal registration in 2008. In 2011, YSL launched a series of monochromatic shoes including red. The shoe consisted of a red insole, heel, upper and outsole. Louboutin requested the removal of the allegedly infringing shoes from the market, and Louboutin and YSL briefly entered into negotiations in order to avert litigation. The negotiations having failed, Louboutin filed a trademark infringement action on April 7, 2011, asserting claims under the Lanham Act including trademark infringement and counterfeiting, false designation of origin, unfair competition, and trademark dilution. In the absence of inherent distinctiveness, the court focused on whether the Red Sole Trademark had achieved secondary meaning, considering several types of evidence, including consumer surveys, Louboutin’s advertising expenditures, media coverage, and worldwide sales for footwear. With this in mind, the court found that the Red Sole Trademark had, in fact, acquired secondary meaning.
LAW IN U.K
The status of unconventional trademarks is significantly different in EU. The graphical representation is mandatory. A trademark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically. The European Court of Justice while discussing graphical representation in Sieckmann vs. Deutsches Patent-und Markenamt6 laid down the following criteria for graphical representation. The Court held that,” the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.” In Sieckmann, the Applicant attempted to represent the mark by (I) indicating the name of the chemical substance, methyl cinnamate; (ii) the structural formula for that substance (C6H5- CH=CHCOOCH3) (iii) submitting an odour sample in a container (iv) describing the scent as ‘balsamically fruity with a slight hint of cinnamon.’ The ECJ found faults with each representation. For e.g. The ECJ ruled that while the description was easily accessible and intelligible, it was not clear, precise or objective. The chemical formula was objective but it was not self-contained as it was deemed to represent the substance rather than the smell of that substance. A trademark can be protected throughout the EU by registering the mark as a Community trade mark (CTM) with the Office for Harmonization in the Internal Market (OHIM). Common scents that have been accepted by OHIM include the written descriptions of “the smell of fresh cut grass” for tennis balls.
To summarize, the registration of untraditional marks in EU is indeed difficult in the face of the strict legislation.
LAW IN INDIA
The new trademark rules, which came into existence on 6th March 2017, ushered a new era for registration of unconventional marks. The new trademark rules provide for the registration of sound marks under Rule 26(5). Sound marks can be registered by submitting a sound clip along with the musical notations. Color marks can be applied for by submitting a reproduction of that combination of colours. The onus will be on the Applicant to show that the colour or sound has acquired distinctiveness or secondary meaning due to continuous bonafide usage. As for smell mark registration, there is no provision till date.
ICICI Bank was the first Indian entity to get a sound mark registration for its jingle.7
Even if a mark is not inherently distinctive, brand owners can still apply for a trademark if the mark has acquired distinctiveness due to its use over a long period of time. This mostly applies to colour marks. Combination of colours or single colour is not easy to be established as inherently distinctive. During application, the applicant must provide evidence to show that the colour or combination of colour is solely associated with them and exclusively designates their goods and the public associates the colour with the goods of the application. The burden of proof is on the applicant to show that the colour has acquired distinctiveness or secondary meaning.
The Trademark Act, 1999 draws influence from both US trademark law as well as the UK. The doctrine of functionality which is an essential part of US law finds a place in Indian trademark law as well. Similarly, the graphical representation is mandatory for a mark to be granted registration in both Indian as well as UK law.
CHALLENGES FACED DURING REGISTRATION OF UNCONVENTIONAL MARKS
Trademark registration systems have evolved around mostly conventional subject matter i.e. something that is visual and consists of words or devices. Registration of unconventional trademarks like smells marks, colour marks sound and shape marks are yet to gain momentum.
There are quite a number of challenges before the applicant who wishes to register unconventional subject matter. How does one represent a sound or scent using words and drawings? Applying these criteria to word and device marks is easy. The problem, however, arises when a small mark or sound mark has to be registered. The registration of colour marks, however, is not very difficult if the applicant can prove that the colour or combination of colours that has acquired secondary meaning and distinctiveness after being in use by the applicant for such a long period of time that consumers have begun associating the colour with the goods of the applicant. For instance, Cadbury’s distinctive shade of purple (Pantone 2865C) packaging for its milk chocolates was granted registration on 1st October 2012 after a long drawn out legal battle with Nestle. While graphical representation of colour is possible by referring to any international system of colour viz., Panton or RAL it is hard or rather impossible for a colour to be inherently distinctive.
The Indian judiciary has acknowledged colour as a part of trade dress and provided protection to it in Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd8
The new trademark rules have extensively laid down the procedure for application of unconventional marks. The grant of Yahoo’s sound mark was a very healthy development for the trademark regime in India. But there is still a need for the law to catch up with modern marketing techniques that use colours, shapes, scents and sounds to make their product distinctive.
If an unconventional mark is distinctive and not functional, it should be given trademark protection. Unconventional trademarks will definitely attract a new variety of customers who are more closely connected to the feel of the trademark rather than its visual appeal. Unconventional trademarks would help an ordinary consumer with imperfect recollection to help identify any product which they would usually not be able to differentiate between. Granting unconventional trademarks to companies would act as an incentive for other undertakings to develop new and innovative ways of branding and marketing their goods.
‘Visual perception should not be and is not a sine qua non for building brand association in the minds of consumers.’9
- Harsimran Kalra, Unconventional trademarks: the emergent need for a change, Indian Law journal, 2007 available at : http://www.indialawjournal.org/archives/volume4/issue_1/article_by_harsimran.html
- 17 USPQ2d 1238 (TTAB 1990)
- 774 F.2d 1116
- Linda B Samuels and Jeffrey M Samuels, Color Trademarks :Protection under U.S Law, Journal of Public policy and Marketing, Vol. 15, No. 2 (Fall, 1996), pp. 303-307 available at <https://www.jstor.org/stable/30000364?seq=1#page_scan_tab_contents >
- 696 F.3d 206(2012)
- Sieckmann v. Deutsches Patent-und Markenamt(C-273/00)  E.T.M.R 37
- Vaibhav Aggarwal,ICICI Bank gets its corporate jingle trademark registered, Rupee Times, March 14,2011; available at: http://www.rupeetimes.com/news/car_loans/icici_bank_gets_its_corporate_jingle_trademark_registered_5058.html
- 2005(31) PTC 583 DEL
- Vatsala Sahay, A defence of unconventional Trademarks available at <https://spicyip.com/2010/09/guest-postdefence-of-unconventional.html >