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As of late, the field of intellectual property has seen immense improvement, particularly with respect to trademarks. The Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) perceives different sorts of trademarks. India has additionally rolled out vital improvements in its laws to follow the arrangements of the TRIPS agreement.
A trademark according to S.2(1)(zb) of the Trademarks Act means “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors.” From a cursory reading of the same, it can be seen that the definition is quite open ended. Any mark, be it a word, device, brand, heading, letter, numeral etc if capable of distinguishing goods and services of one person from that of another, can be registered as a trademark. Although the entire aforementioned find place in the definition of a mark, there are certain marks such as smell and single colors that do not find a mention in the Act. They can still however be protected and given trademark status.An unconventional trademark is mainly in the form of sound marks, smell marks, shape marks or color marks.
The Indian Trademark Regime has, so far, imitated the stand of European Union as far as the prerequisite of graphical representation for a trademark is concerned. Thus, it makes registration of non-conventional trademarks much more rigorous in India than in the United States. The non-conventional trademarks possess ability of source identifier despite not being easily graphically representable. The working of US Trademark Regime demonstrates this fact.
According to the author, assuming that a particular non-conventional mark is distinctive and is not functional, a non-conventional mark like sound, smell or shape should be given trade mark protection. Non-conventional trademarks cater to a segment of society which has, in the opinion of the researcher, been ignored in the earlier trade mark regime. This is with reference to those for whom visual perception often becomes difficult or even impossible: the visually impaired and the illiterate. Non-conventional marks encourage undertakings to develop new and innovative ways of branding. Companies reach out to newer markets, increasing benefits for themselves and a new segment of purchasers.
Some may argue that if smell receives protection now, a vista of intellectual property becomes exposed to potential registration;however, this is not a valid contention for arguing in favour of non-registration. It is opined that the provided the mark is not functional and is distinctive, there is no reason to prevent anything from receiving protection. Visual perceptibility should not be and is not a sine qua non for building brand association in the minds of the consumers. As observed above, non-conventional trademarks do fulfill the traditional purpose attached to trade mark protection. They also provide additional benefits. Thus, they should receive trade mark protection.
In the light of TRIPS Agreement and other related international legal instruments on trademark, there is a need for harmonization of trade mark systems worldwide.Hence, it is desirable to protect non-traditional trademarks in the interest of global trade.
There are two significant issues:
- The harmonization of criteria for the registration of these marks, and whether an office/trademark registry that accepts for registration could apply to them by analogy the same criteria it applied to traditional marks.
- The harmonization of modalities for registration, especially what would be considered an appropriate representation of the sign. It should be clarified whether the trademark registry should apply the same criteria of distinctiveness than for more traditional marks and what the criteria would be for graphical representation, particularly of non-visible signs.
At least the WIPO should come out with uniform guidelines concerning graphical representation of non-traditional trademarks. The WIPO Standing Committee on Information Technologies (SCIT) can provide proper guidelines with regard to the representation,description and the application of trademark principles to non-traditional trademarks. There are still grey areas in this regard:
- The potential economic relevance of these marks for less developed markets.
- The possibility of overlapping protection,for example with copyright, in the case of motion marks, with patent and design in case of shape trademarks.
For those signs where distinctive character can be proved, the requirement of graphical representation should not bar registration. In the modern global market, where traders market their products internationally, it is desirable to have a uniform policy among the TRIPS member states to provide for the registration of non-traditional trademarks.Where more and more jurisdictions come forward with relaxed and liberal interpretation of trademark, the inconsistencies existing in some countries surrounding the interpretation of graphical representation seem to hinder proprietors selling goods in international markets under non-traditional trademarks. This reminds the international community the urgent need to develop a uniform policy for the registration and protection of non-traditional trademarks.
The new trademark rules have extensively laid down the procedure for application of unconventional marks. However, there is still a need for the law to catch up with modern marketing techniques that use colors, shapes, scents and sounds to make their product distinctive.Unconventional trademarks will definitely attract a new variety of customers who are more closely connected to the feel of the trademark rather than its visual appeal.
Tanisha Agarwal, Vanshraj Mehta,‘Hear Me, Touch Me, Taste Me, Smell Me: Conventionalizing Non-Conventional Trade Marks in India’ (2017) Journal on Contemporary Issues of LawVol. 3 Issue 5
David Vaver, ‘Unconventional and Well-Known Trademarks’ (2005) 1 Singapore Journal of Legal Studies 8
Lisa Lukose, ‘Non-Traditional Trademarks: A Critique’ (2015) Journal of the Indian Law Institute, Vol. 57 Issue 2