This article has been written by Sohini Goswami, pursuing a Diploma in Intellectual Property Rights from LawSikho.

Introduction

In this period of fast advancement where cross line exchange happens in worldwide markets, trademark has become a critical apparatus to signify an organization’s personality. A set up trademark conveys its own picture, appends unmistakable character to the merchandise and turns into the pith of business esteem in the market. 

The modern trademark law mirrors some novel advancements with respect to the mark and in the presence of ‘mark’ itself. The ‘modern market’ is in the bustling cycle of imagining new items with ‘typical scent’, ‘special touch’ and ‘unique sound’ to introduce more ‘sensory’ buyer merchandise to the ‘modern customers’. Albeit these novel trademarks have not yet arrived at a high acknowledgment altogether purviews, utilization of such marks is normal in contemporary worldwide markets. 

In modern occasions, new types of responsive trademarks have come to be internationally acknowledged as licensed innovation as the aftereffect of certain authoritative revisions or legal understandings. In the modern market, unconventional trademarks actually stay an emerging practice and the case-laws on this topic is developing. In any case, studies show that there is an expanding request from the owners for the enrollment of non-customary marks in the worldwide exchange. 

In actuality, there is no uniform standard worldwide in assessment, enrollment and requirement of these marks. This article will illuminate the sorts of unconventional marks, the issues looked during the registration of such marks and whether insurance of unconventional marks can prompt assurance under publicity rights.

What is a trademark?

As per Section 2(1)(zb), of the Trademark Act, 1999, “a trade mark may be a word, signature, name, device, label, numerals or combination of colours”, utilized by an endeavor, on products or administrations or other articles of business incentive to recognize it from other comparable merchandise or administrations starting from an alternate owner”. 

Under the Trademarks Act, 1999, merchandise and enterprises are arranged by the International Nice Classification of products and ventures. Schedule IV of the Act gives a rundown of such merchandise and ventures falling in various classes, however it is just indicative. The Registrar has the last word in the assurance of the class where specific merchandise or administrations fall. 

The various kinds of trademarks accessible for enlistment are: 

1. Any name (counting individual or family name of the candidate or archetype in business or the signature of the individual), which isn’t surprising for exchange to receive as a mark. 
2. An invented word or any self-assertive word reference word or words, not being straightforwardly descriptive of the character or nature of the merchandise/administration. 
3. Letters or numerals or any mix thereof.  
4. Devices, including extravagant gadgets or images 
5. Monograms. 
6. Combination of  colors or even a solitary tone in blend with a word or device. 
7. Shape of products or their bundling. 
8. Marks establishing a 3-dimensional sign. 
9. Sound marks when addressed in ordinary documentation or depicted in words by being graphically addressed.

Among the types of trademarks mentioned above, shape of goods, packaging, holograms, smell, sound, were earlier not considered as conventional trademarks until the new Act came into place.

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What is an unconventional trademark?

An unconventional trademark is a sort of trademark which doesn’t fall into the class of regular or customary trademarks. An unconventional brand name is chiefly as sound marks, smell marks, shape marks or color marks. An unconventional mark should have the informative capacity of having the option to separate the merchandise and enterprises of one endeavor from that of the another. The mark ought to can possibly be distinctive; it should show source and consequently recognize the products or administrations from others.

Laws in india regulating unconventional trademarks

The laws relating to trademarks in India have developed in a high pace in last decade primarily due to the change in International conventions, TRIPS agreement etc. The introduction of Trademark Rules 2017 has given a different dimension to the trademark laws in India. The bare reading of Section 2(1)(zb) and 2(1)(m) of Indian Trademark Act, 1999 and Rule 26 and 2(k) of  Trademark rules 2002, suggests that unconventional marks are inclusive of the definition laid down in the Act and brings under their ambit all kinds of trademark registration provided they satisfy the below mentioned criteria.

Requirements for registration

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 of an unconventional mark

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

On August 18, 2008, India’s first “sound mark” was granted to Sunnyvale, California-based Internet firm Yahoo Inc.’s three-note Yahoo yodel by the Delhi branch of the Trademark Registry. It was registered in classes 35, 38 and 42 for a series of goods including email, advertising and business services and managing websites. 

Following this instance, mobile phone maker Nokia had also applied for a sound mark for its signature musical notation in the Mumbai branch of the Trade Marks Registry.

In the case of Yahoo’s Yodel mark, they represented the mark using musical notations. Hasbro’s Play-Doh received “Scent Mark” for their distinctive “sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with a smell of a salted, wheat based dough”. 

This protection given to them legally restrains other undertakings from creating deceptively similar products or scents. However, this is a special case since the product, much like its packaging, logo, and texture is increasingly recognizable by its distinctive smell. It is noteworthy that in order to obtain a scent mark, the petitioner has to prove that the scent is not essential for the functionality of the product. 

Therefore, perfumes and similar products cannot be trademarked. In other words, a mark’s ‘scent’ or ‘perfume’ cannot be given protection under trademark for its distinct smell if it fails to prove before the Registry that the mark cannot be associated with the product irrespective of its distinct smell. The striking factor about the olfactory marks is that they cannot be visually represented. This question first came up in the case of Ralf Sieckmann v German’s Patent Office, wherein the European Court of Justice (“ECJ”) opined that visual representation is not necessary for a trademark of  goods having a distinct smell till the time they can be graphically represented

Regardless of whether an imprint isn’t characteristically particular, brand proprietors can in any case apply for a trademark if the imprint has obtained distinctiveness because of its utilization throughout a significant stretch of time. This for the most part applies to color marks. Combination of colors or single tones isn’t not difficult to be set up as inalienably particular. 

During application, the candidate should verify proof to show that the tone or combination of colors is exclusively connected with them and solely addresses their products and the majority everywhere connects the tone with the merchandise of the application. The weight of confirmation is on the candidate to show that the tone has obtained distinctiveness or secondary significance.

The Trademark Act, 1999 draws influence from both US trademark law as well as UK. The doctrine of functionality which is an essential part of US law finds place in Indian trademark law as well. Similarly, graphical representation is mandatory for a mark to be granted registration under both Indian as well as UK law.

Registration process for unconventional trademarks

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, color marks, sound and shape marks are yet to realize momentum.

There are few challenges before the applicant who wishes to register an unconventional subject matter. The lack of clarity revolving around the representation of these marks is the prime criteria.  Applying this criteria to word and device marks is easy. The problem however arises when a smell mark or sound mark has to be registered. The registration of color marks however is not very difficult if the applicant can prove that the color or combination of colors 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 color with the goods of the applicant. 

For instance, Cadbury’s distinctive shade of purple (Pantone 2865C) bundling for its milk chocolates was conceded registration on 1st October 2012 after a tedious fight in court with Nestle. While graphical representation of color is possible by alluding to any worldwide system of color viz., Panton or RAL it is hard or fairly impossible for a color to be naturally distinctive.

The Indian judiciary has acknowledged color as a part of trade dress and provided protection to it in Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd.

Can registration of unconventional mark lead to protection of publicity rights

The principal function of a trademark is identification of a product or service from its mark. In the instance of unconventional marks, it is critical to the smell, sound, shape etc of the origin of the mark. The right of publicity is the right of an individual to prevent others from using his name, likeness, photograph or image for commercial purposes without obtaining consent. In other words, it prohibits the unauthorised use of elements or indiciatives that uniquely identify a person. 

A well-known personality thus does not wish to have his name, photograph and likeness reproduced and publicised without his consent or without remuneration to him. The law in India is not well developed to protect the publicity/merchandising rights of celebrities. Courts in the U.K. and the U.S. have adopted different remedial approaches but lack a unifying justification in invoking these rights. 

The scope of publicity rights has expanded since its early formulations. Keeping protection at its core, it seeks to regulate the exploitation for financial gain that is inherently part of a celebrity’s chosen profession. With publicity rights having acquired this dimension, a celebrity has become a commercially marketable commodity. The merchandising and endorsements of celebrities have become a central component of media industry. Celebrities are therefore images which constitute a distinct and recognisable persona. These images, i.e. physical appearance, signature, style, photograph, likeness, recognizable attire, look, voice, gestures are often misappropriated by the ever transgressing media. Thus with time we have to make room for new laws. 

The world at large is right now in the middle of a global pandemic. In India especially, the preventive measures were taken very early on. Today if there is an Indian who has access to telecom services, he/she is aware of how Amitabh Bachhan sounds as his voice was used as a reminder for Covid-19 preventive measures before every call for almost an year. To an extent that a PIL was submitted to the Supreme Court to take it down as it became repetitive. In such a scenario, one can only imagine the widespread recognizance acquired by that caller tune as Amitabh Bachhan’s voice. 

A bare reading of the Trademark Act, 1999 would suggest that sound marks can also be registered as a trademark. Since this particular voice belongs to Amitabh Bachhan who is already a magnanimous worldwide acclaimed celebrity, it would be inclusive of his publicity rights. It is to be noted here that except for the fundamental rights there are no other proper legislation dealing with publicity rights. Therefore, a trademark registration of sound mark would be a huge boost towards the step of protecting the publicity rights of a celebrity such as that of Mr. Bacchan.

Conclusion

After investigating the circumstance from numerous viewpoints through this article, it is presumed that there exists no useful differentiation between conventional trademarks and unconventional trademarks in principle however the way that the trademarks are to be graphically addressed for the portrayal, so the laws identifying with such degree ought to be changed so the field for unconventional trademarks extend. In this period of startups, it’s just the advancement which clears path for satisfaction of any business and subsequently the development and inventiveness can emerge in any structure and such brand picture assumes a huge part and to protect the interest of such innovative thoughts, there is a quick need to reinforce the laws identifying with the enlistment of such trademarks and the allowing of trademark in the above occasions has definitely made ready for development in this field and trademark laws being a general field needs to adapt up to worldwide prerequisites and should be more powerful and comprehensive. 

There is scope for a lot of advancement, the law should be deciphered to one’s best ability and India will before long arise to more noteworthy statures in the Trademark space.

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