~Remsha Pathan
Abstract
Trademarks were created to assist people remember the quality and identity of a brand, making it easier for them to tell one brand from another. So far, India has provided strong protection for conventional trademarks such as words, colors, labels, names, and symbols. Indian trademark legislation currently falls short in offering sufficient protection for non-traditional trademarks, which often include elements like motion, fluid designs, taste, scent, texture, sound, and shape. Non-conventional trademarks encounter difficulties in achieving recognition since they frequently fall outside the standard definition of a trademark. As these unconventional identifiers presently do not have legal acknowledgment and coverage, there remains significant potential for exploration and enhancement in this domain.
Keywords- Non-conventional Trademark, Graphical Representation, Trademark Act 1999, Trademark Rules 2017, Distinctiveness Requirement, Sound, Scent, Taste, Motion Marks
Methodology
This research employs a qualitative methodology, focusing primarily on doctrinal legal research.
It is grounded in a thorough examination of existing literature, which encompasses scholarly articles, judicial rulings, and international case law. An analysis of Indian trademark legislation specifically the Trade Marks Act, 1999 and Trade Marks Rules, 2017 has been undertaken to assess the scope and constraints of non-conventional trademarks in India. Furthermore, insights from global legal systems and a general analytical perspective on trademark principles were employed to critically identify gaps and suggest recommendations for reform.
Introduction
Understanding what trademarks are, why they exist, and how they were established in India is crucial before exploring the world of non-traditional trademarks. A brand is not merely the name or person who owns it, it is knitted meticulously to the trademark. It stands for a dedication to excellence and helps develop trust with customers. In order to preserve the unique identity of brands and the products or services they provide, trademarks are essential. Applied to products for sale, A trademark can be described as a visual representation, such as a word, color, or label, that differentiates a product from similar offerings by different individuals or organizations. It also indicates to the consumer that the product comes from a particular person or organization and has a specific source. Through the use of this mark, the manufacturer or seller obtains a restricted exclusive right to utilize the trademark concerning that product. This entitlement to use a mark is acknowledged as a trademark and can obtain protection either under common law or by registering in accordance with the Trade and Merchandise Marks Act of 1958, which has since been succeeded by the Trade Marks Act of 1999. Similarly, there is the need for the recognition of non-conventional trademarks in the Indian trademark laws, as it provides prospects for businesses or enterprises to differentiate themselves from other competitors and protect their brand identities, which serves the sole purpose of the existence of trademark laws.
What is an unconventional trademark?
Unconventional trademarks are the newly emerging area in the field of trademarks that has recently grasped attention in the recent era. The companies put a lot of effort and money into building their brands and standing out from their competitors so that the consumer can easily choose and recognize their brand, as the brands offer originality and the promise of quality, but things like sound, taste, and scent, which a consumer can directly link to the brand, still struggle to get recognition, as they still fail to get protected by the Indian trademark laws, as they are deemed unfit to fit in the definition of the ‘trademark’ under the Trademark Act 1999.
In this advancing era of technology, it’s important to consider the distinct ideas of shape, scent, fluidity, movement, and hue that arise. A trademark’s unique feature distinguishes it from others; nonetheless, the reputation and artistic effort invested in creating the trademark are also taken into account. Non-traditional trademarks can include both non-visible elements, like sounds, flavors, or tactile sensations, and visual elements, such as colors, shapes, movements, or holographic images.
Sound Marks
Sound marks are the unique kind of unconventional trademark used by the different brand producers so that the consumer can relate to the brand’s product, making the product unique and distinguished from that of the other brands. The Trademark Act 1999 does not mention the sound marks, The Trademark Rules 2017 allow for the registration of non-traditional sound marks. According to Rule 26(5), it is the responsibility of the applicant to demonstrate distinctiveness by providing evidence of acquired secondary meaning.The sound mark can only be registered if it is submitted in MP3 format, which must not be longer than 30 seconds; also, it must be recorded on a device that can play it clearly. And most importantly, graphical representation of the sound’s musical notes is essential for its registration. In the ruling issued by the European Court of Justice in the case of Shield Mark BV v. Joost Kist., the Court stated that in order to fulfill the criteria for graphical depiction of a musical record or sound, both musical notes and a description of the sound must be provided. Applications featuring musical notation sufficiently meet these criteria, whereas onomatopoeic descriptions fall short. India has adopted the Shield Mark Doctrine regarding the visual representation of sound marks. The Draft Manual on Trademarks has highlighted that sounds without distinctiveness are ineligible for registration.
Olfactory marks
Olfactory marks basically refer to the odor/smell of the products so that the product is distinguished and remembered from its smell. Different products have different signature smells from which consumers can easily recognize the products. For instance, Dettol products can be recognized by the consumers from the odor, which has been used in the Dettol products such as Dettol handwash. But there had been no official legal recognition of the olfactory marks in India yet due to the lack of regulatory frameworks and technological infrastructure. Furthermore, there had been various challenges for olfactory marks to be recognized in India, such as the olfactory marks not being distinctive in nature and being subjective in nature, as human perception of smell may vary from person to person. Moreover, a smell mark is categorized under the heading of trademark as per the Trademark Act 1999 when it is capable of being or possible of being represented graphically, which is hard for smells.
In the case of Ralf Seickmann v. Deutsches Patent-und Markenamt, the ECJ dismissed all attempts to register the fragrance due to insufficient graphical representation. The Court established that the essential characteristics of graphical representation should be “clear, precise, durable, objective, intelligible, easily accessible, and self-contained,” which is referred to as the Sieckmann seven-fold test for graphical representation. Following this significant ruling, obtaining registration for scent trademarks in the realm of unconventional marks appears nearly unfeasible.
Although scent marks have been successfully registered in various parts of the world. For example, the iconic scent of PLAY-DOH has officially been registered as a trademark by the United States Patent and Trademark Office (USPTO). Hasbro describes this trademarked aroma as a distinctive scent created from a blend of a sweet, slightly musky, vanilla-like fragrance with hints of cherry and the natural odor of a salted, wheat-based dough, positioning the PLAY-DOH brand as one of the few active scent trademarks in the country and certainly the most well-known.
Taste marks
A taste mark, also known as the gustatory mark, is another unconventional trademark applied to the product, helping the consumer to identify the product with the help of its taste. A taste mark is one of the complex and challengeable trademarks, although some nations have allowed the registration of flavor as a trademark to identify goods in the commercial market.
Taste may be inherent to the product, but it must not perform a functional or utilitarian role that is essential to the product’s consumption or use, as such functionality disqualifies it from trademark protection. For example, the mint flavor in toothpaste performs the functional role of providing freshness and therefore cannot be trademarked, as it serves a utilitarian purpose rather than acting solely as a source identifier. Graphical representation poses another significant challenge in the taste trademark registration process. The only way to convey a taste is through written descriptions, which are not yet recognized in India. Additionally, a practical challenge is that a consumer must first buy the product to experience its taste, making it impossible to sample the product prior to purchase. Due to these challenges, taste trademarks in India are largely untapped, and there are presently no global registrations for taste.
In the case of Levola Hengelo BV v Smilde Foods BV, the EU Court of Justice examined whether the flavor of a food product falls under the scope of Copyright law. The plaintiff argued that Heksenkaas, a type of cream cheese spread, has a unique savory blend that deserves copyright protection. The Court, however, rejected the argument, stating that a work must be clearly and unquestionably recognizable, a requirement that taste does not meet because it is subjective and lacks a consistent, objective representation. Taste cannot be granted copyright protection under EU law since it does not meet the requirements for being a precise and objective “expression of the author’s own intellectual creation,” according to the Court. This decision highlighted the challenges in recognizing and legally defining taste, and it also subtly supported the position against taste marks in trademark law.
Motion marks
Motion marks represent the moving logo, images, sequence, or animation used in the perspective of the product of the brand to make it unique in the market and attract the consumer. For instance, the animated logo of Mercedes-Benz that spins allow consumers to easily recognize and connect with the brand, while the well-known upward-opening doors of a Lamborghini, often featured in marketing materials, illustrate the idea of motion marks.
Motion marks are crucial for brands in strengthening their brand identity through animated visual components, though their acknowledgement in the Indian trademark laws has been restricted. The Trademark Rule 2017 recognized the motion marks by permitting the graphical representation of motion marks through a sequence of images and descriptions, but their non-recognition under the Trademark Act 1999 limits the scope of motion marks in India.
Unfortunately, the Trade Marks Act of 1999 absences a definition for motion marks. The stipulation for graphical representation prevents the possibility of registering a motion mark. Before 2017, it was not possible to register a motion mark. However, following the implementation of the Trade Marks Rules in 2017, Rule 2(1)(k) states that a trademark may be graphically represented through a series of images, continuous snapshots of the moving mark, along with descriptive text.
Legal Recognition for the Trademark Protection in India
Indian trademark laws are governed primarily by the Trademark Act, 1999. The act defines a trademark under section 2(1)(zb) as “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 the shape of goods, their packaging, and combinations of colors”. However, the definition does not expressly recognize the unconventional trademark.
Nevertheless, some of the progress in the field of the trademark has been archived through the procedural laws such as the Trade Marks Rules, 2017. For example, Rule 26(3)(b) of the Trade Marks Rules, 2017, permits the registration of three-dimensional (3D) marks as a category of trademark, classifying them as non-traditional or atypical. The rule says that if a 3D mark is part of an application, it needs to be shown using two-dimensional drawings or photos. This safeguards the form of a product or its packaging to indicate its origin, but only if the shape is unique and helps distinguish one company’s goods from another. Famous instances of these types of trademarks include the silhouette of the Coca-Cola bottle, the triangular form of the Toblerone chocolate bar, and the unique design of the Zippo lighter, all of which demonstrate how three-dimensional characteristics can be safeguarded as trademarks.
The Trade Marks Rules, 2017, establish procedural guidelines under the Trade Marks Act, 1999, with the objective of enhancing and simplifying the trademark registration and protection process in India.These guidelines became operative on March 6, 2017, superseding the Trade Marks Rules, 2002. The Department for Promotion of Industry and Internal Trade (DPIIT) established these regulations according to Section 157 of the Trade Marks Act, 1999, which empowers the Central Government to formulate rules for the execution of this act’s provisions.
Legal Challenges for Non-Conventional Trademarks in India
Despite gradual reforms, non-conventional trademarks still encounter significant legal and procedural obstacles within the Indian trademark framework. A key concern is the lack of explicit statutory acknowledgement in the Trade Marks Act, 1999, which does not explicitly reference unconventional markings such as sound, motion, fragrance, or taste marks. This legislative void generates significant ambiguity and insufficient legal clarity for both applicants and the trademark registry.
Additionally, the Trade Marks Rules, 2017, lack clear definitions or standardized procedures for representing such marks, which complicates the registration process further. For instance, there is no clear standard outlining what defines a motion mark or how it should be visually represented, unlike jurisdictions such as the European Union Intellectual Property Office (EUIPO), which offer comprehensive procedural guidance.
Consequently, due to European Union measures such as Article 4(b) of the European Union Trade Mark Regulation (EUTMR), the stringent “graphical representation” criteria have been supplanted with a more adaptable norm that emphasizes “clarity and precision.” By allowing for non-visual descriptions and contemporary file formats that are currently not available in the Indian system, this innovative method makes it easier to register non-traditional marks.
One significant challenge in the registration of non-traditional trademarks is the necessity for distinctiveness, which is vital for trademark protection. To obtain registration, a mark must have distinct characteristics that allow customers to identify the source of the products or services. While conventional trademarks like logos or text frequently have inherent distinctiveness, non-conventional trademarks like colors, sounds, and aromas usually lack this quality and must demonstrate acquired distinctiveness through prolonged usage and consumer recognition. In some instances, the NBC chimes have become closely linked to the NBC brand in the United States as a sound mark. Over time, they have developed a strong connection with the brand. In a similar way, Cadbury’s distinctive purple packaging has been trademarked in multiple jurisdictions due to its long-standing use and consumer recognition, demonstrating how a feature can become distinctive through frequent use and recognition.
Recommendations
Representing unconventional trademarks can be challenging in India, but these problems can be tackled by embracing new technologies that offer solutions. In the Sieckmann case, it was concluded that a chemical formula, a descriptive text, and even a scent sample were not sufficient to properly represent a scent mark for legal purposes. We can create valid ways to represent scent marks by using cutting-edge scientific tools like electronic noses and scent-capturing devices. Furthermore, the term “graphical” may have a wider meaning. Spectrophotograms or musical notation can be used to visually represent sound trademarks. A collection of still photos can be used to illustrate motion trademarks. Furthermore, the word “graphical” could have a broader meaning. Spectrograms or musical scores can be used as visual representations of the audio for sound trademarks. A series of still photos combined with written descriptions could be used to illustrate motion trademarks. Scent maps, digital scent codes, or standardized chemical formulas can serve as stand-ins for scent- and taste-related trademarks. By utilizing visually verifiable and reproducible formats grounded in scientific principles, the trademark registry can uphold clarity and precision while also welcoming innovative branding components.
In order to address the challenge of establishing distinctiveness, India should implement specific evidentiary standards designed for non-conventional trademarks, which may include consumer surveys, advertising history, and brand recognition studies. The legislation needs to acknowledge contemporary forms of evidence, such as social media interactions and digital analytics, to align with current branding practices. Moreover, instituting a system where extended use (for instance, beyond five years) establishes a presumption of distinctiveness similar to what the USPTO does would provide much-needed certainty. These changes would facilitate the protection of authentic non-traditional marks while preserving legal integrity and consumer understanding.
To make it easier for non-traditional trademarks to be registered, it is essential that they are included in the legal provisions that necessitate an update to the Trademark Act of 1999 to allow for unconventional trademarks. This should incorporate a distinct definition and acknowledgment of unconventional trademarks. Additionally, the trademark rules established in 2017 must be amended to provide explicit procedural guidelines for their registration, outlining acceptable formats and representations. Indian regulations should also aim to adopt “a clear and precise” standard similar to that of the European Union Trade Mark Regulation (EUTMR).
Conclusion
Non-conventional trademarks signify a dynamic and evolving aspect of intellectual property, providing brands with distinct opportunities to stand out in competitive markets. However, in India, the current legal framework is not sufficiently prepared to accommodate such innovations. Non-traditional marks including sounds, smells, tastes, and movements are difficult to register due to the Trade Marks Act of 1999’s lack of explicit legislative recognition, strict graphical representation requirements, and ambiguous processes. As countries around the world increasingly embrace sensory and experiential branding, it is important for Indian trademark legislation to evolve. By updating current laws, adopting more adaptable representation criteria, and integrating technological advancements, India can develop a trademark system that is more inclusive and progressive. Strengthening legal measures for non-traditional trademarks will not only align India with top global practices but will also empower Indian companies to more effectively safeguard their unique brand identities.