This article is written by Pulkit Rathi, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from Lawsikho.com. Here he discusses “unconventional trademarks”.

Trademarks – An introduction

Trademarks are generally used to protect the goodwill of a product or kind which has been established by a brand over years from being exploited by the third parties. Many brands have their own market value and encash the same, like Apple has made its own goodwill over the period of time and has an ardent set of buyers. To protect such brand value from third party’s exploitation, many companies tend to obtain trademark to safeguard its brand value. This is a major form of intellectual property and is governed by Trademarks Act 1999 and Trademark Rules, 2017.

Unconventional trademarks

An unconventional trademark is nothing but trademark of items other than goods or brand’s name. They majorly include sound, colours, olfactory mark, motion mark etc. If we interpret the requirements to register a trademark as defined in 2(zb) of the Act[1], It states that trademark is a mark capable of being distinguished from other goods and has procured an identity of its own and the marks which are considered to be unconventional are also capable of being distinguished and has a distinct identity, thus it is not wrong to say that unconventional trademarks also form a part of regular trademarks only. The check here is the graphical representation of these marks, the regular trademark can be registered using its distinct features either by design or alphabet but the same is not easy for these unconventional marks. These marks have taken a statutory recognition and boom in India majorly due to the advent of Trademark Rules of 2017[2] as they have legitimized the marking of sound, colour provided that they are capable of being graphically represented.[3] The word Graphical representation has also been defined under the rules which states that it refers to the representation of the mark either in paper or in digitalized form so that it can have its distinct identity[4] and facilitates for infringement claim if graphically represented.

Development of Unconventional Trademarks

The development in the area of unconventional trademarks must be credited to Trade Related Aspects to Intellectual Property Rights (TRIPS) agreement. It is an international convention on Intellectual Properties which sets standardized legal standing in this regard. They have included colour trademarks, shape trademarks, hologram trademarks, etc.. and India being a signatory to both TRIPS agreement and Paris agreement is under obligation to inculcate the guidelines set in these conventions.

In USA, there have been several instances in the past where unconventional trademark wer registered as Lanham Act of 1946 though did not include unconventional trademarks explicitly but did not place any bar on it either as even the graphical representation of the mark need not be shown, the distinctiveness of the mark was alone required to be shown. In the case of Qualitex Co. v. Jacobson Products co.[5] the court held that under Lanham Act, subject to usual conditions a colour is registrable as a trademark. USA generally has a liberal outlook towards registration of unconventional trademarks as compared to other countries. The scent of Plumeria was registered in the year 1990.

In a landmark judgment passed by European court of justice in the case of Dr. Ralf Sieckmann v. Duetsches Patent und Markenamt[6] the court stated that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

In another landmark judgment given by European Court of Justice in the case- Shield Mark BV v. Joost Kist[7] which was later termed as shield doctrine, the court while conforming the standards to be maintained for qualifications of graphical representations, the court analysed the same taking into consideration various kinds of trademark, primarily keeping into mind the registration of sound mark by written description/ graphical representation the court held that it lacked the required precision and cannot be construed as graphical representation. Regarding on Onomatopoeia, the ECJ noted that there was a difference between the sound sought to be trademarked and the onomatopoeia, once pronounced. Therefore, there was no precision and clarity; hence it did not constitute graphical representation.

Laws in India

The laws relating to trademark in India have developed in a high pace in last 10 years primarily due to the change in International conventions, TRIPS agreement[8] etc. The introduction of Trademark Rules 2017 has given a different dimension to the trademark laws in India. By bare reading of Section 2(1)(zb) and 2(1)(m) of Indian Trademark Act, 1999[9] and Rule 26 and 2(k) of  Trademark rules 2002, we can infer that these are inclusive definition and brings under their ambit all kinds of trademark registration provided they satisfy the below mentioned criteria.

Requirements

Certain conditions are required to be fulfilled to register an unconventional trademark-

• The mark should be intrinsically distinctive.
• The mark should be able to distinguish a particular product from other products.
• The mark should be capable of graphical representation.

Requisites for graphical representation

1. A graphical representation can precisely determine what the sign is;
2. The graphical representation can substitute the mark used by the applicant because it represents that sign and no other; and
3. It is reasonably practicable for a person inspecting the register, or reading the Trademark Journal, to understand what the trademark is.

Instances of registration in India

It is important to note that there are 2 procedural requirements especially for registering an unconventional trademark. The first requirement is representing/flagging such unconventional trademark so as to give the distinct identification to the mark. This is to be complied so that there arises no dispute in the future and its importance has been well explained in the OHIM’s examiner manual as “The categorization of marks (word, figurative etc.) serves a number of functions. Firstly… it establishes the legal requirement for the mark to be represented, secondly, it can help understand what the applicant is seeking to register and finally it facilitates research in our database”.[10] The second requirement is limited to the registration of such trademarks which are not explicitly mentioned in the act or the rules and in such form of unconventional trademarks where the examiners and registrars of trademark can ask the person to file more information on the mark like the written description of the mark etc… though this is not a mandatory provision but is usually preferred to avoid any kind of confusion in the future. In India there have been 3 major registrations of such unconventional trademarks which are as follows:

• Yahoo’s pronunciation as ‘Yodel’ was the first unconventional trademark being registered in India and it was graphically represented through musical notes.[11]
• The second one being trademark for a shape of ‘Zippo lighter’ and its legality was upheld by the court where its trademark was challenged stating that a shape can be trademarked provided that it is peculiar and distinctive.[12]
• The last one being a sound mark registered by a German company which registered the sound ‘Allianz Aktiengesellschaft’.[13]

These are the unconventional trademarks which have been registered in India till date and by the drastic development in the field of trademark, it is expected to boom the registration of such unconventional trademarks in near future.

Conclusion

There exists no constructive distinction between normal trademarks and unconventional trademarks in theory but the fact that the trademarks are to be graphically represented for the description, so the laws relating to such extent should be liberalized so that the arena for unconventional trademarks expand. In this era of startups, it’s only the innovation which paves way for success of any business and the innovation and creativity can arise in any form and such brand image plays a very important role and to safeguard the interest of such creative ideas, there is an immediate necessity to strengthen the laws relating to the registration of such trademarks and the granting of trademark in the above instance has paved the way for improvement in this arena and trademark laws being a universal field has to cope up with international requirements and must be more dynamic and inclusive.

References

[1] https://indiankanoon.org/doc/1190072/.

[2] http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_69_1_312_1_TRADE_MARKS_RULES_2017__English.pdf.

[3] Rule 26 of Trademark Rules, 2017.

[4] Rule 2(k) of Trademark rules, 2017.

[5] Qualitex Co. v. Jacobson Products co. 514, U.S 149.

[6] Dr. Ralf Sieckmann v. Duetsches Patent und Markenamt  Case C (273/00).

[7] Shield Mark BV v. Joost Kist Cae C (283/01).

[8] https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm.

[9] https://indiankanoon.org/doc/117176/.

[10]  OHIM Examiner’s Manual (Jun 2009), at 2.7.1.

[11]  Peter Ollier, Yahoo Yodels into India’s TM Registry, 183 MANAGING INTELLECTUAL PROPERTY 14 (2008).

[12]  Zippo v. Anil Manchandani (unreported, CS (OS). 1355/2006).

[13] Santosh Singh, Yet Another Sound Mark Granted, SPICYIP, 30 July 2009.

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