PublicationsPROBLEM WITH EXTENDING IP PROTECTION TO NON-CONVENTIONAL TRADEMARKS

August 1, 20210
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Abstract

Trademarks are an asset to any company. The over-competitive marketplace today has forced the companies into making their brand more appealable to the consumers. As a result, companies today are investing their precious time and money into developing various non-conventional trademarks to distinguish themselves from the competition. The following article gives a brief about the kind of non-conventional marks that can be registered by such companies and the problems attached with the registration of such marks.

Introduction

Trademark is a type of intellectual property consisting of design, sign, or expression which helps consumers identify the company source of the product, for example, golden arches are representative of the brand McDonald’s globally. These marks are essential for any company as they build a certain amount of trust in the consumers that the product they are holding is not a counterfeit. Non-conventional trademarks have become especially relevant in today’s times where there is cutthroat competition. Companies are forced to come up with innovative ways to lure customers and think beyond traditional marks and distinguish their products from other players in the market, creating the need for unconventional thinking.

A non-conventional trademark in simpler terms means a trademark other than the company’s name or product[1], for example, sound, colour, shape, motion mark, packaging etc. Section 2, Article 15, Clause 1 of the TRIPS agreement defines a trademark as any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. India being a signatory to the agreement has an obligation to register trademarks according to the norms set. Thus, Section 2(1)(i)(viii)(zb) of the Trademarks Act, 1999 defines trademarks similar to the definition of TRIPS agreement. The other criteria that need to be passed for a non-conventional trademark to be registered in India are provided under section 3 of Manual of Trade Marks Practice & procedure which makes graphical representation of the mark necessary[2].

Following are a few categories of non-conventional trademarks with the reasoning given by courts in granting IP protection to them.

Smell mark

To obtain registration of smell mark, the applicants must be able to visually represent i.e. write the description of the smell of the product and should be able to demonstrate the distinctiveness of their product. Popular brand Chanel’s registration for their No.5 fragrance was unsuccessful as the fragrance was the very essence of the product[3]. Examples of companies that obtained smell mark registration bypassing this two-fold test include tennis balls manufactured by a Dutch company that smells like newly mowed grass[4]; darts with a scent of strong beer[5].

Sound Mark

As per rule 26(5) of Trademark Rules, 2017, a maximum of 30 seconds sound clip can be registered only when the written musical notes are submitted along with the clip which would make the sound mark graphically representable. The iconic four bell notes of Britannia company was able to receive registration of their mark because they had been using this for a long time[6], an average consumer could relate such sound to that company and also because they submitted the written notes of their tune. Other companies like Yahoo[7], Nokia[8], ICICI bank have also registered their sound mark as they fulfilled the set criteria.

Colour Mark

Rule 26(2) of Trademarks Rules, 2017 states that colour trademarks can be registered only when reproduction of the combination of colours is also submitted with the application (graphically represented). This was highlighted in the Colgate V/s Anchor case[9] in which the court also highlighted that the onus of proving the distinctiveness and the colour combination is being used by the company for a long time is upon the applicant.

Similarly Zippo received a shape trademark passing its distinctiveness test and submitting a 2-D copy of the shape[10].

Why can’t we extend IP protection?

What we can construe from the abovementioned examples is that the judicial threshold for any non-conventional trademark is set too high. Firstly, the company needs to show that they have been using them for a long time[11] as stated above by the examples of Yahoo’s ‘yodle’[12] and tune of ICICI bank. Moreover, it is important to note that the examples given above are of well-known brands which have been in business for a long, which further cements our claim that it is impossible for a new company or a startup to register for such marks. Secondly, graphical or visual representation of certain marks is a problem e.g. smell or taste. Though the judgments[13] and examples of successfully registered non-conventional marks like the triangular chocolate ‘Toblerone[14](shape mark) suggest that it can be represented by describing it on a paper but it is coupled with the distinctiveness test. So, it is difficult to say whether an ordinary person would be able to relate to a certain brand just by the smell or colour combination.

A non-conventional trademark is a great way of enhancing the documented value of any company and this regime is fairly new for India which has boomed in the past decade but the criteria of granting such innovative marks are still like ordinary trademarks i.e. graphical representation. Unless we come up with new techniques to register odor marks or taste marks, it will always remain difficult for the companies to get their mark registered. Potential non-conventional trademark categories must be identified by the lawmakers and appropriate rules(as done for sound and colour marks) for registering such marks should be formulated to ease out the process of registration as we do not know what innovative trademarks these big companies could come up with, to register as their trademark e.g. Louis Vuitton getting a touch/feel trademark on their bags[15].

However, there is also a plus side to this high threshold of registering such marks. This sluggish economy and loss of jobs in the covid era have forced people to pursue the unexecuted business ideas they have always had and come up with startups. Support to such startups has seen an incremental rise by virtue of the Startup India initiative. A lower threshold for registration of non-conventional trademark could lead to numerous litigations i.e. companies seeking to defend or challenge competitor’s trademarks.

Conclusion

The definition of trademarks in the act is inclusive in nature which is why the courts look at non-conventional trademarks through the lens of distinctiveness coupled with graphical representation test (same as for ordinary trademarks) which are good for a particular kind of trademarks such as sound or motion marks but new rules and tests must be formulated to adequately judge other types of non-conventional trademarks to grant them IP protection.

REFERENCES

[1]VK Ahuja, Law relating to Intellectual property rights, third edition, p265

[2]VK Ahuja, Law relating to Intellectual property rights, third edition, p265

[3]VK Ahuja, Law relating to Intellectual property rights, third edition, p266

[4]VK Ahuja, Law relating to Intellectual property rights, third edition, p265

[5]VK Ahuja, Law relating to Intellectual property rights, third edition, p265

[6]Manuraj Singh Parmar, Non-conventional trademarks: A legal analysis

[7] Peter Ollier, Yahoo yodles into India’s TM Registry, 183 Managing Intellectual property 14(2008)

[8]The tune played when the phone switched on or off was granted protection, VK Ahuja, Law relating to Intellectual property rights, third edition, p266

[9] Colgate Palmolive Company Vs Anchor Health and beauty care,Pvt. Ltd.  2005(31)PTC 583 DEL

[10] Zippo Vs Anil Manchandani (CS (OS). 1355/2006

[11]Manuraj Singh Parmar, Non-conventional trademarks: A legal analysis

[12]Peter Ollier, Yahoo yodles into India’s TM Registry, 183 Managing Intellectual property 14(2008)

[13]T. Helbling, Shapes as Trade Marks? The Struggle to Register Three-Dimensional Signs: A Comparative Study of United Kingdom and Swiss Law, I.P.Q. 413, (1997); Mars v. Kraft The Hague, Court of Appeal, Jan 3, 2008 (Unreported).

[14] The triangular shape of Toblerone chocolate, which has acquired trademark significance over time,  Gangjee, Dev S, Non-Conventional Trade Marks in India (February 19, 2010), National Law School of India Review, Vol. 22, No. 1, pp. 67-96, 2010.

[15]VK Ahuja, Law relating to Intellectual property rights, third edition, p268

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Legal Maxim (September 20, 2021) PROBLEM WITH EXTENDING IP PROTECTION TO NON-CONVENTIONAL TRADEMARKS. Retrieved from https://www.legalmaxim.in/problem-with-extending-ip-protection-to-non-conventional-trademarks/.
PROBLEM WITH EXTENDING IP PROTECTION TO NON-CONVENTIONAL TRADEMARKS.” Legal Maxim – September 20, 2021, https://www.legalmaxim.in/problem-with-extending-ip-protection-to-non-conventional-trademarks/
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PROBLEM WITH EXTENDING IP PROTECTION TO NON-CONVENTIONAL TRADEMARKS.” Legal Maxim – Accessed September 20, 2021. https://www.legalmaxim.in/problem-with-extending-ip-protection-to-non-conventional-trademarks/
PROBLEM WITH EXTENDING IP PROTECTION TO NON-CONVENTIONAL TRADEMARKS.” Legal Maxim [Online]. Available: https://www.legalmaxim.in/problem-with-extending-ip-protection-to-non-conventional-trademarks/. [Accessed: September 20, 2021]
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Author: Bhuvan Malhotra

Designation: Student,2nd Year

University: Jindal Global Law School

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