Image source: https://blog.ipleaders.in/doctrine-prior-use-indian-trademark-act/

This article has been written by Pranjali Nanadikar pursuing the Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. This article has been edited by Aatima Bhatia (Associate, Lawsikho) and Zigishu Singh (Associate, Lawsikho).

Introduction 

Sports and Sports teams have a long history with intellectual property law, more specifically trademarks. For a sportsperson, it is beneficial to seek trademark protection to generate additional revenue, particularly for athletes whose career will likely be short. In the sports industry merchandising, franchising, and branding also plays a very important role as a new revenue generation source. In this article we will discuss certain Unconventional (non-traditional) trademarks in sports.

Meaning of unconventional trademarks 

In India, the Trademark Act, 1999 defines a ‘trademark’ under section 2(zb) as a mark capable of being represented visually, one which can distinguish between the goods or services of one person with those of another. Thus, a trademark is an important intellectual property that helps the customer in recognizing the product and the particular company. Basically, trademarks build trust, loyalty and confidence among people, who believe that this particular trademark will provide them with the best quality product.

Traditionally, trademarks have been sign, label, logos, word/s which distinguishes a product of one entity from the product of another entity. However, Trademarks are often misunderstood as being limited to only signs, labels, logos and words. But within the growing scope and rising importance of intellectual property law in the whole world, it’s a very narrow definition. Thus, further, apart from the traditional trademark, there are various non-traditional trademarks introduced in developed and developing countries. Additionally, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) perceives different sorts of trademarks. Thus, trademarks can also be as non-traditional as a color, smell, sound, shape or even a video. Such trademarks are called non-traditional marks. From the international perspective, following are the unconventional trademarks that have been successfully registered. These are :

  • Holograms;
  • Shape marks;
  • Color marks;
  • Smell marks;
  • Sound marks;
  • Multimedia marks;
  • Touch and texture marks;
  • Taste marks;
  • Gesture marks.

In India, the Manual of Trademarks Practice and Procedure of Indian Trademark Registry, 2015 (Draft), however only recognizes small, sound, color and shape marks under the category of unconventional marks. Evidently, India still lacks any successful registration for taste, touch or gesture marks.

Registration of unconventional trademark 

Registration of unconventional trademarks is quite complex. Following are the two most important requirements that needs to be fulfilled if you are planning to register an unconventional trademark :

  • Graphical representation of trademark; and 
  • Examination of the mark’s distinctiveness.

Presently, the demand for unconventional trademark registration is very low as it becomes very difficult to represent such a trademark in graphical format.

Indian perspective of sports 

Nelson Mandela used to say that “Sports have the power to change the world. It has the power to inspire, the power to unite people in a way that little else does. It speaks to youth in a language they understand”. Today, sports speak to every Indian more than ever. With the rapid change and evaluation, sports have now become a sector of business. In India, the sports industry has become a more promising entertainment and business industry. With online communication of  information, sports have gained attention and excitement among people. However, the biggest difference between today’s sports and sports a few years ago is how money plays an important role. Not only merchandising, franchising and branding but also trademarking sportsperson and sports teams has a huge role in sports today. Brands are willing to pay huge sums of money to be associated with a particular sporting event or a sportsperson. 

Trademarks in sports 

In the Indian sports industry, there are many trademark infringement cases. For example, the BCCI filed a suit for the infringement of trademark or domain name Indian Fantasy League. The Madras High Court delivered the judgement that IFL will not be able to use the name/logo of BCCI as it would amount to trademark infringement. Infringement cases were not only about trademarks but also about celebrity’s name infringement which is registered as a trademark. For example, Sourav Ganguly v Tata Tea Ltd.

Unconventional trademarks in sports 

  • Now, we will see that not only conventional, but also unconventional trademarks have benefitted sportspersons and various sports teams. The most famous example of a registered unconventional trademark in the sports industry is Usain Bolt’s pose mark called “the lightning bolt”. Usain Bolt is an olympic athlete participating in various sprinting events, he is considered as the  man on earth and owns several trademarks registered all over the world protecting his name, signature and slogans .
  • Mo Farah is a British long-distance runner. He has also trademarked his very famous victory move. The “Mobot” in the UK Intellectual Property Office.
  • Gareth Bale, a well known footballer has registered his pose mark called “Eleven of Hearts”, which involves curving his hands in heart shape with the number “11” in between. He has also given rights to his pose to be used on shoes, hats, bags, umbrellas and jewelry.
  • Another similar example is of English  striker, Jesse Lingard, who has trademarked his famous celebration move, ‘JLingz’ where he covers his forehead with his fingers forming the initials of his name (in the shape of a J and L). He also gave  merchandising rights to use this trademark on clothing, footwear and headgear.
  • The most famous dispute regarding trademark registration of the move was ‘Vicht’. The Tennis player, Niclas Kroon registered this trademark ‘Vicht’, which was a sign which involved closing her hand in the shape of a duck beak. 
  • With regards to the smell mark, another landmark decision was delivered  in 2003 in the US which dealt with the issue of trademarking of the applicant’s smell mark. While the court did not grant registration for the same, it laid down several guidelines which would allow unconventional marks to be registered.

Practical difficulties faced by sports industry for registration of unconventional trademarks 

Now, it is very evident from the above examples that, in India, successful registration of unconventional trademarks in sports is very less and the graphical representation and distinctiveness are the causes for it, which are also the statutory requirements for a successful registration of an unconventional trademark.

  1. Graphical Representation 

The first and most important factor for registration of an unconventional trademark is graphical representation which is also a big hindrance . This can be achieved either by describing the move in precise and elaborate details or through the graphical medium of a picture or drawing. Further, the sportsperson or a particular sports team who is applying should also make sure that intelligibility, preciseness, clearness, durability, accessibility and objectivity of such graphical representation have been taken into consideration while applying.

Other unconventional trademarks such as smell or color marks, which are intangible in nature, face challenges while representing trademarks in a graphical format. Mere writing down the chemical formula of the smell will not be sufficient to successfully register the trademark. Also; the sample of the smell or sound cannot be a graphical representation. There is only one way to register such an unconventional trademark that is to attach a description so precise that no other sound or smell can be confused with the one trying to obtain trademark registration. Mere generic description of such an unconventional mark can create confusion. Similarly, if a sports person’s signature move or celebration is sought to be trademarked, apart from graphical representation one would require  a description of the mark so precise that on a clear reading of it, the move would not be confused with being similar or identical to move action performed by another person.

  1. Distinctiveness 

Another requirement for successful registration of an unconventional trademark is Distinctiveness/uniqueness. The sportsperson should make sure that his trademark is unique in nature and most importantly, not causing any confusion in the minds of the public with other products or services in the same trademark classification which it seeks to cover. Distinctiveness is a term which is acquired over time. A short period of time is not sufficient to prove the distinctive nature of such a trademark. It is also binding in an action for infringement or passing off to show that the mark has acquired distinctiveness. Thus, it has become very difficult, especially for sportspersons to register their move as, there is no such prior use of the move/action can be attributed to the player showcasing the mark’s distinctness.  

Conclusion 

It is very clear from the above-mentioned examples of unconventional trademarks in sports that India has very less  successful registration of unconventional trademarks in sports in comparison to the European Union. The most important hindrances while successful registration of non-traditional trademarks are graphical representation of such mark and distinctiveness/uniqueness about the mark, and the inadequate instruments to represent the trademark graphically. Thus, it is extremely important for the Indian government to catch up with the modern marketing techniques that use colors, shapes and scents and sound to make their product distinctive. It is also advisable to WIPO that they should provide clear guidelines about how an applicant can apply by satisfying the requirement i.e. graphical representation as it would create harmonization of trademark systems across  the whole world in the interest of global trade also. If TRIPS will introduce uniform guidelines for their member countries for registration of unconventional trademarks, then it will systematize registration procedures and it can benefit the sports industry immensely.

References 

  1. https://www.barzano-zanardo.com/en/approfondimenti/unconventional-marks-in-sports-when-celebration-becomes-a-trademark/
  2. http://www.cnlu.ac.in/2021/CIRF/14%20Yashwardhan%20Singh%20and%20Deeksha%20Singh.pdf.

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