Non-Conventional Trademarks: A Legal Analysis

15th April, 2019 - 12:22 pm Categories: Trademark 0 Comments

NATURE AND SCOPE OF NON-CONVENTIONAL TRADEMARKS

The Non-Conventional marks are those marks which do not fall under the category of conventional marks such as marks including letters, numbers, logos, pictorial description, symbols, or those elements which consists of the combinations of such elements. The definition of Non-Conventional mark is illustrative and states that it includes ‘shape of goods’, ‘packaging’ and ‘combination of colours’ within its ambit. They are basically those marks which are based on appearance, shape, sound, smell, taste, textures etc. Such marks are said to be beyond the purview of traditional trademarks. In the act it is not specifically mentioned but the definition of Trademark incorporates the non-conventional marks as well.

PROBLEM WITH RESPECT TO NON-CONVENTIONAL TRADEMARKS

Consumers uniformly identifies certain non-conventional trademarks with respect to their shapes and colours but in case of smell and taste marks, the perception with respect to marks may vary thus giving rise to confusion among the consumers. In order to obtain registration as a mark, it can acquire distinctiveness even though it is not inherently distinct through its use and thus qualify to be a trademark.

Another problem is that the basic premise of the paper is barrier in registration of non-conventional marks is the graphical representation of the mark to be registered especially with respect to the case of odour and sound marks.

GRAPHICAL REPRESENTATION OF NON CONVENTIONAL MARKS : A GENERAL OVERVIEW

Graphical representation of a mark is considered to be a sine qua non in order to register a trademark in India. A trademark application is needed to be graphically represented and the mark must be capable of being put in the physical form within the register. It is also needed to be published in a journal. Graphical representation of non-conventional marks is a practical problem. It is considered to be a serious barrier in registering the non-conventional trademarks.

1. ODOUR MARK

   It is a controversial trademark which has gained popularity in the recent time. In the case of Ralf Seickman v. German Patent Office the registration of the smell mark was not taken into consideration and was rejected because graphical representation criteria were not fulfilled. The main issue which was pointed in this case was whether an olfactory mark which is described as balsamically fruity scent with hint provided of cinnamon could be registered as a trademark with respect to certain services. ECJ in this case stated that graphical representation is not sufficient and it needs to be clear and precise to clear the right of exclusivity and also it must be considered intelligible to those persons who have interest in inspecting registers.

2. SOUND MARK

   The graphical representation of sound mark can be done by musical notations and written descriptions. In Shielf Mark BV v. Joost kist h.o.d.n Memex[ the ECJ held that requirement of graphical representation was not satisfied when the sound is represented graphically by means of description using written language. When sound is shown as a stave divided into measures, musical notes etc then graphical representations are said to be accepted. It has also been stated that along with it a written description of the mark in the form of musical notes must also be needed to be filed with the registry.

3. COLOUR MARK

   Single colour and combination of colours are the two forms of Colour trademarks. Combination of colours can be included in several national legislations. In Libertel Groep BV v. Benelux Trademark Office[the issue was raised that whether a single colour mark consisting of orange colour can be registered as a trademark. The ECJ reiterated the criteria of graphical representation as stated in RalfSieckmann’s it was held that such representation must be clear, precise and self contained. It must be easily accessible, durable and objective.  In order to solve the issue with respect to graphical representation, India may consider internationally recognized code such as Pantone in order to prevent colour depletion and anti-competition.

4. SCENT TRADEMARK

   In the cases related to Scent Trademark the registry takes place is with respect to Shield Mark Doctrine. Scent needs to be distinctive of the product and it must not be utilitarian or functional. Thus the fragrance of the scent/perfume cannot be registered, however the description of the scent is required.

PROTECTION OF NON CONVENTIONAL TRADEMARKS IN INDIA

In India, very few non-conventional trademarks have been registered. India has imported the Shield Mark Doctrine with respect to graphical representation of sound marks. Manual suggests the sounds specifically which are not distinctive and thus not meant to be registered. In India, Yahoo!’s yodel is the first ever non-conventional mark to be registered[. It was represented through musical notes.  The Zippo lighter was also considered to be distinctive and was granted registration by Delhi High Court. Other non-conventional trademark to be recently registered in India is sound mark by Allianz Aktiengesellschaft. Indian Trademark Industry has also registered sound mark of ICICI Bank in the notes which forms the jingle. For people who are visually impaired or illiterate distinguishing character of the shape or sign plays an important role.

CONCLUSION

The few obstacles with respect to Non-conventional trademark must not be considered as a discouragement to their use, but on the contrary new methods must be incorporated. Nonconventional trademark creates a psychological impact on consumers and it has gained some significance in the recent times. India has accepted the sound trademark of intel. The concept and law with respect to Non-conventional trademarks are evolving in India. This paradigm shift from the traditional concept has gained commercial significance and there is need for uniformity for the same across the globe.

Author:  Manuraj Singh Parmar , Law Student, B.Com LLB (Hons),  Institute of Law, Nirma University, Ahmedabad , Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any  queries please contact/write back to us at shubham@khuranaandkhurana.com

References:

[2] Reports of Patent, Design and Trade Mark Cases, Volume 121, Issue 9, 2004, Pages 315–326, https://doi.org/10.1093/rpc/2004rpc17

[3] Case No C-104/01 before the ECJ, http://www.copat.de/ markenformen/c-104_01en.pdf (10 November 2005).

[4]  ShamnadBasheer, India’s first “Sound Mark” Registered, SPICYIP, 19 August, 2008, available at http://

[5] spicyipindia.blogspot.com/2008/08/breaking-news-indias-first-sound-mark.html

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

[7] Santosh Singh, Yet Another Sound Mark Granted, SPICYIP, 30 July 2009, available at http://

spicyipindia.blogspot.com/2009/07/yet-another-sound-mark-granted.html

[8] http://www.mondaq.com/india/x/472602/Trademark/NonConventional+Trademarks+in+India