This article is written by Akshay, pursuing Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. The article has been edited by Aatima Bhatia (Associate, LawSikho) and Ruchika Mohapatra (Associate, LawSikho).
Trademark law is one of the most fascinating areas of intellectual property law, and there have been numerous advancements in this field of law in recent years. A trademark is an intellectual property that allows customers to recognise a specific brand, service, or product on the market. It protects the maker or owner of the goods from illegal product imitation, defends the interests of consumers, and helps to avoid unnecessary confusion. Traditional marks, such as logos, symbols, images, captions, signs, and names, are generally protected by trademarks. However, with today’s tough and ever-increasing competition among manufacturers of physical commodities, it’s more necessary than ever for them to stand out in the commercial market. As a result, brands have gotten more innovative and have embraced new non-traditional trademarks to identify their products in the marketplace.
Touch, fragrance, colour, shape, texture, sound, and taste are examples of non-conventional or non-traditional trademarks. In most cases, trademark protection is only granted to marks that can be graphically depicted; nonetheless, non-traditional trademarks are registered and protected because of their potential to create a certain level of recognition in the minds of consumers. The TRIPS agreement governs trademark registration and protection, and according to the agreement, a trademark must be able to perform its essential functions; nevertheless, it is not necessary for a trademark to be tangible, visually detectable, or graphically representable. As a result, the registration of non-traditional trademarks, particularly sound, has become quite prevalent in the United States and the European Union.
Non-conventional trademarks, on the other hand, are still a growing notion in India, and there has been much controversy and discussion about whether they may be deemed trademarks without the ability to be visually depicted. The purpose of this article is to shed light on the status of non-conventional trademark protection and registration in India, as well as to emphasise the intricacies and legalities involved in such protection by examining the situation of this idea across jurisdictions.
Challenges of non-conventional trademarks
The evolution of trademark registration methods for traditional subject matter has been gradual. Non-traditional trademarks such as fragrance marks, colour markings, sound marks, and form marks have yet to achieve traction. The applicant who intends to register non-conventional subject matter faces a number of hurdles. The registration process for registering for word and device trademarks under these criteria is simple. When a smell or sound trademark needs to be registered, there is a minor issue. Colour trademarks are not difficult to register if the applicant can show that the colour or combination of colours has acquired distinctiveness through secondary means after being used by the applicant for a long time and that the consumers have begun to associate the colour with the applicant’s goods.
To register a smell mark, for example, we must graphically describe the mark and demonstrate that it is distinguishable from the product. However, representing a scent or a smell graphically by supplying a chemical formula or composition information is difficult because it is designed to reflect the product rather than the smell of that thing. Some scents mark descriptions, such as the tennis balls of a Dutch company that smell like freshly cut grass and darts that smell like bitter beer, could give evidence to substantiate distinctiveness and have been registered outside India.
Another barrier to registering smell or taste marks and showing their distinctiveness is whether such markings work as a “functional element” of the linked products, as other traditional trademarks are.
Touch/texture markings, for example, aid to give customers a feeling of the items’ reality by offering a reference to their existence. The touch/texture mark is a mark that customers recognise as a distinguishing aspect of the product’s trade dress/packaging that can be felt rather than merely seen with the naked eye. The leather texture of a Louis Vuitton bag is an example of such a mark.
The registration of a trademark over a product’s functional feature is severely prohibited under trademark law. The functional aspect of the mark refers to those aspects of the mark that are derived from the nature of the good or from any fundamental element existing in the good or service. The bench in Noll v. O.M. Scott & Sons Co. found that the blue hue of fertilisers is primarily due to the presence of nitrogen in them. As a result, the blue hue represents a functional component of the fertiliser that has evolved as a result of the nitrogen content. Hence, no protection can be sought on the blue colour of the fertilizer which has been evolved because of the presence of nitrogen in it.
The Kellogg Co. case is also known as the “foundation of the functionality doctrine,” in which the court held that product designs that are intrinsic to functionality cannot be protected under trademark law because granting protection to a product’s functional characteristics would obstruct market competition. As a result of the foregoing rationale, the court denied trademark protection to the biscuit form on the grounds that it was utilitarian in nature.
As a result, we can see from the examples above that trademark protection cannot be provided to a functional aspect of a brand, even if it has gained uniqueness, in order to encourage competition and limit monopoly in the market. As a result, the functionality doctrine serves as a fair and justifiable restriction on trademark protection for a mark’s functional attributes in order to foster market competition.
The graphical representation of a mark requirement specifies that a mark must be capable of being graphically depicted in order to be protected. The graphical depiction of a marking requirement is significant because it gives a clear, exact, and particular reference to what the mark is. The graphical representation is also necessary for defining and identifying the trademark and its scope.
Though Article 15 of the TRIPS agreement does not dictate visual perceptibility standards for trademarks, it does leave it to the discretion of member nations to add or not include visual perceptibility criteria in their domestic trademark legislation. Using their discretionary powers, the majority of nations have made the graphical representation of a mark a necessary criterion for trademark registration under their trademark legislation. As a result, in order to get trademark protection in such nations, the trademark must also meet the graphical representation of mark standards.
The Indian Trademark Act, 1999 contains the terms “capable of being depicted graphically” in its definition of a trademark under Section 2(1)(zb), which indicates that the mark shall be able to be rendered on paper and published in the trademark’s official journal.
The Court examined the problem of graphical representation in relation to the registration sound mark in Shield mark v. Kist. The Court in this instance recognised that even though it is not “immediately clear,” the pictorial representation is nevertheless understandable. The Court relied on the Sieckmann criteria of simple, clear, exact, and more understandable portrayal in this case.
The uniqueness requirement is one of the most significant factors for trademark registration. Only if a mark is unique and capable of distinguishing one proprietor’s goods or services from those of others is it registrable under the trademark regime. A mark’s distinctiveness, on the other hand, might be either inherent or acquired distinctiveness.
The uniqueness of a mark is often assessed in relation to the good or service to which it is associated, rather than in general. It is observed in this case while taking into account the context in which the mark is now in use or is planned to be used in relation to the linked item or service. The mark must be significant and distinctive to an ordinary consumer in the relevant market in order to be protected. The registration of the trademark will be based on the brand’s distinctive character.
The TRIPS agreement allows member countries to use the criterion of inherent distinction, acquired distinctiveness, or both in their domestic legislation at their discretion. Inherent uniqueness refers to marks that are unique in and of themselves, whereas acquired distinctiveness, also known as acquired secondary meaning, is produced by usage, promotion, or advertising. The mark will only be considered distinctive if a proof is shown demonstrating it was unique in relation to the applicant’s products or services in commerce. One of the most often used practises for acquiring trademark protection for marks that are not ordinarily subject to acquired distinctiveness criteria, such as non-conventional marks, is to use acquired distinctiveness standards.
The criterion for determining the distinctiveness of a non-conventional mark is the same as for determining the distinctiveness of a conventional mark. In the case of non-conventional marks, the trademark office should proceed with caution when determining the distinctiveness of the mark because there are a number of non-conventional marks that, while not inherently distinctive, have acquired distinctiveness or secondary meaning through widespread recognition, either through use or the context in which they are used, e.g. the smell of grass, which is not inherently distinctive but may have acquired distinctiveness through widespread recognition, either through use or the context in which it is used.
The issue should be handled with a practical flavour when those markings are not practically different, such as in situations of colour marks where, while according to colour codes, certain marks are distinctive, they are actually so similar that they lack distinctiveness. Such marks should not be protected or, at the very least, should be required to prove uniqueness. The uniqueness must be demonstrated in practice, not in theory, in connection to the item or service. In addition, when it comes to the meaning, it’s important to pay attention to which mark is being utilised.
In India, the need for graphical representation is combined with additional criteria that must be completed before a trademark may be registered. Trademarks that are not “capable of identifying” one person’s goods or services from those of another are lacking in unique character. Such marks without distinguishing features can only be registered if evidence can be produced to show that they have developed a distinctive character as a consequence of their usage.
If any of these trademarks are descriptive in nature, they must acquire/attain a secondary unique meaning to indicate that the goods or services for which they are used are associated with a certain brand or the owner. As a consequence of its continuous and protracted usage among the general public, a non-traditional trademark acquires uniqueness and is known, and consumers link such non-traditional trademarks with its brand or the owner, such trademarks are registrable under the Indian Trademark Law.
The brand owner must submit evidence of continuous and prolonged use, as well as other documents demonstrating that the money spent on non-traditional trademarks’ marketing and advertising was aimed at raising awareness among the general public/consumers in order to establish a link between such trademarks and the brand/owner, which will serve as an indicator of the brand/owner.
If a non-traditional trademark is unique and non-functional, it is protected as a trademark. Non-traditional trademarks must appeal to a new set of customers who are more emotionally invested in the brand’s vibe. It would assist a consumer with poor recollection in identifying any product that they would normally be unable to distinguish. The grant of a non-conventional trademark would encourage other businesses to come up with new and imaginative methods to brand and sell their products.
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