This article is written by Priyanka Saraswat who is pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.
Table of Contents
Introduction
A jingle on the TV goes ‘ting ting tiding’ and you instantly know that it’s a Britannia biscuits ad; you see a small robin egg blue box in someone’s hands and you know that they have splurged it big with jewellery from Tiffany & Co; someone hands you a triangular piece of chocolate and you know it’s Toblerone even before you have eaten it. These subconscious sensibilities are evoked through the success of the trademarks these brands own in their products, which goes beyond just their two-dimensional logos.
But what exactly are trademarks? And how can they go beyond just the logos and symbols commonly used to depict brands and products? The Trade Marks Act, 1999 under 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 […]”. Traditionally trademarks have been logos, taglines, and symbols but over time they have evolved to represent other things too such as shapes of products, colours, sounds, smells, shapes, texture, motion, ambience, or packaging of the products or services, together now known as ‘Non-Conventional’ or ‘Non-Traditional Trademarks.’
This article touches upon the various kinds of non-traditional trademarks that have come to the forefront of consumerism in recent times. Further, it also discusses and details the advent of their registration process around the world with a focus on the Indian trademark scenario.
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What are Non-Conventional Trademarks?
A non-conventional trademark is technically any new type of trademark that does not fall in the pre-existing statutory conventional categories of trademarks. Therefore it’s not about what it includes but more about what is excluded from the conventional category of things. The types of non-conventional trademarks can be broadly categorized in visual marks such as trade dress, holographic mark, motion mark, colour marks, and non-visual marks such as sound mark, olfactory mark, texture mark, taste mark. The unconventionality of the mark, however, does not award it any rights beyond that of a traditional trademark.
Types of Non-Conventional Marks
Visual Trademarks
Trademarks that are perceived visually, i.e., can be seen and understood via graphic cues, fall under the category of Visual Trademarks. The more commonly found types of trademarks under this category include the following:
- Trade dress: This refers to the overall look and appearance of the product including its packaging, such as the shape of the Hershey’s Kiss chocolates or the distinct red soles of Louboutin shoes.
- Motion marks: This includes animated logos such as the Netflix opening motion or the Windows startup logo. With the advent of digital media, motions marks are now becoming the new-age taglines.
- Colour marks: These include marks such as the T-Mobile magenta or the Cadbury purple (which has now lost its official Trademark status even though it continues to be recognised and remains connected to Cadbury).
- Hologram marks: These are marks that consist of elements of the holographic category such as the one registered by American Express for their holographic logos on their electronic transaction cards.
- Position marks: Another newly accepted Visual Trademark, admitted by the EU in 2017, is a position mark that is strictly limited to the spot on the product where the said mark is positioned (deriving its name from the said distinction) It has been now admitted by the EU as a new and separate category.
In the statutory sense, most of the aspects of a trade dress are covered under the Trademarks Act, 1999, unlike colour and motion marks that are dependent on judicial precedents to obtain their legitimacy and consequently their implementation. A well-known trade dress registered in India is the distinct “two-thirds white and one-third red combination” of Colgate tooth powder packaging that the Colgate Palmolive Company defended in the 2003 case. Interestingly it is difficult to represent the motion mark in its pure form rather it is always represented as a combination of marks, for example sound and movement are to be presented together, such as in the MGM banner. This is also the reason that independently the sound of the Yahoo yodel has received official Trademark status in India separate from the motion mark and became the first sound mark to be registered in India.
Non-Visual Trademarks
Trademarks that are perceived by senses other than the eyes or by visual means fall under the category of Non-Visual Trademarks. Some such examples of non-visual trademarks are as follows:
- Sound mark: These include the marks that come in the forms of ad jingles, sounds associated with animated logos and motion marks.
- Olfactory Marks: A surprising addition to this list, an olfactory or smell mark is one that makes the product distinctly identifiable by its smell. A landmark case in this category is when Ralf Sieckmann attempted to trademark the “balsamically fruity with a slight hint of cinnamon” smell for methyl cinnamate, and unsurprisingly failed because the description wasn’t clear and precise.
- Other Marks: These include, texture marks, taste marks, amongst other unlimited possibilities.
Sounds have one of the biggest impacts on consumer perception of a brand amongst the non-visual category. With the growth of digital media and thereby digital marketing, brands have been giving equal weightage to being distinguished and identified by the sounds associated with them as they used to for visual publicity. This is possibly the reason that the only Non-Visual Trademarks to be registered in India are all sound marks including the ad jingles of ICICI Bank, National Stock Exchange theme song among others.
Sound recordings, while protected under copyright laws, also get protection under the trademark laws especially when they assume a definite shape and arrangement and create in the minds of the listener an association of the sound with a product or service. Olfactory marks on the other hand are more difficult to register due to their inability to be graphically represented which is one of the most important prerequisites under the law. While India has not, to date, had any application for the registration of olfactory marks, internationally one of the prominent cases is that of registration of the smell of freshly mowed grass for tennis balls manufactured by a Dutch company in 1999.
Registration & Procedural Requirements
An important idea to keep in mind while talking about non-conventional trademarks is that marks do not need to be registered to achieve the trademark status; registration only grants a trademark additional exclusive rights. Just the fact of overarching and widespread consumer recognition is enough for the mark to be considered a Trademark.
- Issues Arising while registering a Non-Conventional Trademark
At present, the demand for Non-Conventional trademark registration is relatively low. While the groundwork of registering a trademark is the same for both conventional and non-conventional trademarks, what differs and therefore brings into the procedural structure the challenges, is the requirement to graphically represent the unconventional subject matter of the trademark application.
- Rule 26(5) Trade Marks Rules, 2017: Soundmark
Statutorily there’s hardly any mention of these diverse kinds of trademarks both in Indian legislations and in TRIPS, therefore a greater emphasis is placed upon the judicial precedents set over time. A single mention of a sound trademark has only come in recent times under Rule 26(5) of the Trade Marks Rules, 2017 which states that “Where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations.” While this clarifies the procedure for sound marks and also is a possible benchmark for other visual marks, yet how do you convert scents, tastes, textures into graphical representations?
- Graphical Representation of Non-Conventional Trademark under Registration Process
Graphical representation according to Rule 2(1)(k) under Trademark Rules, 2017 is “the representation of a trademark for goods or services represented or capable of being represented in paper form and includes representation in the digitised form”. The European Court of Justice (ECJ) elaborates on this in the Sieckmann v. German Patent and Trademark Office case (referred to as the Sieckmann criteria) stating that the graphical representation needs to be “clear, precise, self-contained, easily accessible, intelligible, durable and objective.”
WIPO in its Standing Committee Report dated 28th April, 2008 states that the reason for these requirements of graphic representation from a trademark is so that anyone who consults the register to enquire about the nature of the mark can easily do so without requiring any technical know-how which any other unusual mode will hinder.
The Draft Manual prepared by the Indian trademark office in 2015 for filings and procedures extensively states the graphical representation requirements for different kinds of non-conventional trademarks. However, the Draft Manual has not yet been officially brought into force.
While the requirements set out by the European Court of Justice in the Sieckmann criteria are easy to fulfil for a visual mark, non-visual marks such as sound and scent may miss out. Therefore over time the European Court of Justice has relaxed some of the criteria such as “self-contained” and allowed for external clarification references to be used in support for greater precision but only to a certain extent.
These include instances such as the use of external reference of universally recognized colour codes, as they were considered to be precise and durable, in the Libertel Groep BV v. Benelux-Merkenbureau case. The UK Trademark Registry accepts these universal colour codes along with a written description as an adequate graphical representation.
The Indian Draft Manual however does not accept this usage of universal colour codes such as Patone even though it does not give a statutory specification for what exactly satisfies the graphical representation requirements for colour marks.
As a general requirement, WIPO aptly suggests that in support of examination, an application should always be accompanied by a statement or indication of the type of mark sought to be registered, the absence of which can create doubts while determining the nature and character of the mark – whether it is traditional or non-traditional.
The Trademark Rules, 2017 in essence also state similar requirements under Rule 23(2) stating that:
“23. Form and signing of the application.— (2) An application for the registration of a trademark, for goods or services shall—
(c) be considered as a three-dimensional trademark only if the application contains a statement to that effect;
(d) be considered as a trademark consisting of a combination of colours only if the application contains a statement to that effect.”
The Registrar can also, in case of the reproduction furnished by the applicant not sufficiently showing the particulars, call upon for further and better particular of the trademark including a description by words and different views of the trademark (as in the case of three-dimensional marks) as provided under Rule 26(3)(ii) of the Trademark Rules, 2017.
Even though not all known categories and types of non-conventional marks are mentioned in statutory provisions, and the fact that new and emerging types can be seen developing over time, a liberal interpretation of both the provided statutes and the international practices is required to understand the procedure of registration of non-conventional trademarks.
Conclusion
It is the constant race between marketing practices, consumer sensibilities and the requirement of legalities that gives rise to the lacunae that arise in understanding and registering unconventional Trademarks. With the rise in new and unique categories of marks (The Rock & Roll Hall of Fame and Museum in Ohio, USA attempted to get the façade of their building trademarked), the requirement to give legitimacy to the marks by granting them exclusive rights is needed to avoid consumer deception or confusion, and also help manufacturers and service providers against unfair competition, which is considered to the main focus of Trademark and Intellectual Property legislation. However, the creation of a universal, unambiguous, detailed and precise system for registration of these marks, will take a long time and shall come one judicial precedent at a time.
References
- Libertel Groep BV v. Benelux-Merkenbureau, (C-104/01) [2003] E.T.M.R. 63 (European Court of Justice)
- Draft of Trademark Manual, dated 10th March 2015
- WIPO Standing Committee On The Law Of Trademarks, Industrial Designs And Geographical Indications Report SCT/19/2 dated 28th April 2008
- Sieckmann v. Deutsches Patent – und Markenamt, (C-273/00) [2003] E.T.M.R. 37, 43-45 (European Court of Justice)
- Texture mark for bottle texture granted though title No. 29597 of April 28, 2004 “Textura Superficie Old Parr” for alcoholic beverages, Instituto Ecuatoriano de la Propiedad Intelectual (IEPI)
- Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd. 2003 (27) 478 (Del)
- EU IPO’s Trademark Reforms dated 1st October 2017
- The Rock and Roll Hall of Fame v. Gentile Productions, 134 F.3d 749 (1998) (Court of Appeal (First Circuit))
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