Globalization has led to an evident increase in competition in the commercial space. Further, the presence of a budding consumer society has made companies, individuals and start-ups (collectively “Brand Owners”) focus on their brand image. Accordingly, they have adopted various innovative methods to help themselves surpass competitors and boost their own products. Trademarks is certainly one such innovative means, that has been deployed by brand owners to achieve this goal. It is common knowledge that trademarks tend to create a distinct image of a brand and generate goodwill amongst consumers. It also provides brand owners with security against unjust enrichment of their labour and reputation by others, in case someone else uses a deceptively similar mark.
Traditionally, brand image established through trademarks, was created using logos, words, symbols or a combination of these. However, recently, there has been an emergence of a new category of trademarks famously known as non-conventional or non-traditional trademarks. These are marks that do not fall within the realm of conventional trademarks marks mentioned above, but are in fact based on a shape, smell, motion, sound, taste or texture. Gradually, these non-conventional trademarks have also been recognized across various global jurisdictions. India too, has recognised the potential of such trademarks especially the sound marks. In 2008, the Trademarks Registry (“Registry”) granted India’s first sound mark registration to Yahoo’s three-note yodel. Subsequently, both Allianz Aktiengesellschaft and ICICI Bank’s applications were accepted for their respective jingles. While this was indeed a promising development, the Registry’s on-ground enforcement of the letter of the law has not been ideal for other non-conventional marks involving smell and colours.
This bulletin seeks to examine and address the level of protection granted to non-conventional trademarks in India and some developed jurisdictions, the manner of registration of such trademarks and, issues faced by applicants seeking registration of unconventional trademarks in India.
2. Indian Trademark Law & Non-traditional Trademarks
Section 2(1)(zb) of the Trademarks Act, 1999 (“Act”) defines a “trademark” as any mark capable of being represented graphically and capable of distinguishing goods or services of one person from another and may include shape of goods, their packaging and combination of colours. The word “mark” is defined in the Act as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. On a literal reading of the two definitions together, it is unambiguous that they include non-conventional marks.
As a matter of fact, non-conventional trademarks were explicitly recognised for the first time in India in circa 2009, when the Draft Manual on Trademarks Practice & Procedure (“Draft Manual”) was released by the Trademark office. The Draft Manual provides several clauses, that serve as a guide for applicants and the trademark examiners during the process of registration of a trademark. Thereafter, the Draft Manual has been regularly updated ever since but has not yet been incorporated into the Act. It was only in 2017, that non-conventional trademarks were formally recognized upon promulgation of the Trademark Rules (“Rules”). Rule 26(5) of the Rules states that sound marks are capable of being registered as trademarks and in order to do so, a sound clip in mp3 format along with a musical notation must be submitted. For three-dimensional trademarks, Rule 26(3) requires the submission of a reproduction of the 3-D figure in a 2-D graphic, or by giving a photographic representation. Further, Rules 26(2) and 26(4) provide for protection of a combination of colour and shape marks, respectively.
However, unlike developed jurisdictions such as the United States and European Union who have adopted a more flexible approach, the law in India has taken a somewhat rigid approach towards non-conventional trademarks other than sound marks. Consequently, it is difficult for brand owners to protect such intellectual property in India. The absence of systems for distinguishing and categorizing such non-conventional trademarks and of a separate registration procedure for them is an impediment that is hard to circumvent for brand owners. Moreover, the graphical representation requirement is seemingly one of the main reasons why many applications concerning non-conventional marks are rejected. In a nutshell, graphical representation means that the mark must be capable of being put in physical form within a register or journal including a representation in digitised form. In non-conventional marks such as smell, or taste, or colour marks, it is difficult to satisfy such requirements.
3. Non-conventional trademarks in developed jurisdictions
3.1 United States
In the United States, the definition of a trademark is an inclusive one, that includes both symbols and devices. The Lanham Act, 1999, which is the governing legislation requires the mark to be distinctive only and it need not be represented graphically. In fact, it was as early as 1978 that the United States Patent and Trademark Office (“USPTO”) had provided applicants the flexibility to file trademark applications sans the graphical representation requirement. The idea was to keep up with the ever-changing reality brought about by technological advancements. Further, the registration of non-conventional marks is also aided by the decision of the US Supreme Court in Qualitex Co v. Jacobson Products Co. In this case, the pivotal question was whether a company could register its green-gold colour mark used by it for its dry-cleaning press pads. The US Supreme Court held that a trademark can be “almost anything at all that is capable of carrying meaning”. According to the Court, the only requirement on the part of a brand owner is to present a detailed verbal description of the mark.
Consequently, it is particularly easier for brand owners to protect their non-conventional trademarks in the United States when compared to India. In fact, the first-ever olfactory or scent mark ever registered was the plumeria blossom scented embroidery thread that was registered by a Californian Business Company, OSEWEZ in 1990. Similarly, the first registration for a sound mark was issued as early as 1970 to the National Broadcasting Company for the musical notes G, E, C played on chimes for radio broadcast services. In sound marks, the USPTO allows the applicants to submit only a detailed description of the sound, including any words or lyrics. This has to be supplemented and clarified by an audio reproduction in an electronic format such as in .wav, .wma, mp3, .mpg, or .avi format.
3.2 European Union
Initially, EU’s position on non-conventional trademarks was significantly different from the United States. Not only was graphical representation mandatory, but in Ralf Sieckmann v. German Patent Office, the European Court of Justice (“ECJ”) went one step ahead and elaborated upon the nature of representation required. The question in that case was whether an olfactory mark described as a “balsamically fruity smell with a hint of cinnamon” could be registered as a trademark. The ECJ held that graphical representation per se is not enough for registration and the mark must, in addition, meet the following criteria: (i) it must be clear, complete and precise and (ii) intelligible to those persons having an interest in inspecting the register i.e., other manufactures and consumers. Further, it held that the mark cannot be represented using a chemical formula as it actually denoted the substance and not the scent. In the face of such strict requirements, registration of unconventional marks in the EU saw a decline.
Cometh 2017, there was a change in approach with an EU Trademark Directive (“Directive”). This Directive removed the criteria of graphical representation when applying for registration. The marks, however, must be represented in a manner, that provides sufficient clarity. They can be produced in any appropriate format using generally available technology such as .jpeg, .mp3 or .mp4 file. This was a welcome step as the new regulations allowed for a much wider palette of marks to be registered as trademarks. However, the Directive doesn’t help much with the registration of non-visual marks such as smell and taste due to the conditions of precision and clarity. Nevertheless, the reform introduced by the EU has resulted in an increase of applications for registration of non-conventional marks in the EU Intellectual Property Office. Trends indicate that applications for motion, multimedia and sound trademarks have witnessed a significant upward swing when we compare data from two years before and after the reform. Motion and sound trademark applications have more than doubled whereas multimedia trademark applications grew a staggering 33 times.
4. Procedural issues: Registration of non-conventional trademarks in India
Unfortunately, India does not share the liberal approach of developed jurisdictions and continues to emphasize on the need for graphical representation for non-conventional marks. This presents a number of challenges before the applicants. For instance, in case of a single colour mark, it will have a low probability of registration as the Indian trademark law only recognises a “combination of colours”. Secondly, the Draft Manual limits registration to only those single colour marks, that are very unusual and peculiar in trade. But even if there was a mark, that was unusual or peculiar, the Rules and the Draft Manual are silent on how to graphically represent such colour. It is over here, that India should take note of the emerging international consensus, which states that single colours can be graphically represented through a reference to an international colour code called the Pantone. The Pantone is a commercial system, that designates specific shades numerically and categorizes over thousand such shades by unique codes. This could be supplemented by a written description of the mark along with details regarding how it will be used on specific goods or services.
For olfactory marks too, graphical representation is quite a challenge, as the exact description of the odour is not achievable in many cases. An olfactory mark cannot be represented by a chemical formula or by giving the composition details as it would then be signifying the product and not particularly, the smell of that product. Further, it cannot be stored in a bottle and submitted to the registration officer as it could escape or decay with time. Additionally, smell varies with temperature, concentration, humidity and other conditions making it open to interpretation by the general public. This in turn gives rise to complications, and the argument that subjective views are not necessary while determining whether the mark functions as a trademark. To solve this issue, it has also been suggested that electronic devices that recreate various scents could be used. Graphical representation of scents and smell could be accepted as electronic files. These files can then be published and the scent could be reproduced at will. This may actually enable and expedite the registration of smell marks in India.
As far as shape marks are concerned, the Act provides for 3 (three) criterion that shall be fulfilled. These are: (a) the shape should not result from the nature of the goods themselves, (b) the shape should not be such that it would be necessary to obtain a technical result and, (c) the shape should not be such that it gives substantial value to the goods. It is submitted that the last criteria is detrimental to registration of shape marks because there are certain shape marks, which could be deemed as giving substantial value to the goods primarily due to their attractiveness, for instance, lamps! To add to this, the Draft Manual also states that a trademark application consisting of the shape of goods or packaging should be in relation to the goods only and not in respect of the container. In other words, where the right in a mark is claimed say in respect of perfumes contained in a bottle, the goods should be shown as “perfumes” and not as “bottles”, which is merely a container. Hence, in such cases, the applicant will only be able to claim registration for the goods carried in the actual product bearing the shape mark and not for the product (or shape) itself. However, this does not mean that shapes are not afforded any protection under the IP regime in India. The brand owners in such cases can avail protection for their shapes under the applicable Design Act and the Copyright Act.
Further, the Rules do not provide any specific timelines for registration of trademarks both conventional and non-conventional. Trademark registration is a relatively tedious process in India and it usually takes anywhere around 8 to 24 months (or more) to obtain registration depending on any objections, or oppositions from third parties. In case of non-traditional marks, this timeline becomes pronounced given the complexities involved. For instance, in Yahoo’s case, the Registry took 4 years for granting registration to the Yodel. Similar time was taken by the Registry in ICICI Bank’s case too. For Brand Owners, especially start-ups, this period is crucial in terms of their IP protection and growth. Such delays are detrimental to the interest of Brand Owners establishing their market presence, trying to keep a tab on legal and other costs and, makes them vulnerable to infringement of their IP.
Needless to say, non-traditional trademarks provide an excellent opportunity to Brand Owners for strengthening their identity and of their products and services. These trademarks are in the form of smell, colour, touch, sound marks and are used as a means to create a lasting image of the product or service in the minds of consumers. However, the present legal framework in India fails to capture this excitement and provide adequate protection to Brand Owners.
The existing Indian legal framework concerning non-traditional trademarks and the stringent requirement of graphical representation, makes the registration process arduous for applicants. We hope that India learns from global experience especially in jurisdictions such as the United States and EU, who have comparatively relaxed requirements for registration of non-conventional trademarks. More importantly, in view of the accelerated digitization and technological advancement courtesy the Covid-19 pandemic, it seems that time has come for the legislature to recognize the importance of non-traditional trademarks across the globe and from an Indian perspective. It is crucial that necessary steps are taken towards encouraging protection of such marks while removing avoidable hindrances in the registration process.
 See: https://www.livemint.com/Home-Page/5z2B1NQUy3YyPkpRDp789M/Yahoo-awarded-India8217s-first-sound-mark-Nokia-in-queue.html (accessed on February 12, 2021)
 See: https://www.mondaq.com/india/trademark/598438/sound-marks-a-new-perspective (accessed on February 19, 2021)
 See:https://www.thehindubusinessline.com/money-and-banking/ICICI-Bank-gets-lsquosound-mark-registration/article20108922.ece (accessed on February 19, 2021)
 The latest version of the Draft Manual is available at https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf
 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162, 164-165 (1995)
 Also, known as smell marks
 In re Clarke, 17 USPQ2d 1238 (TTAB 1990)
 Ralf Sieckmann v. German’s Patent Office, Case No. C-273/00
 Directive (Eu) 2015/2436, European Parliament & The Council Of The European Union, available at https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32015L2436&from=en (accessed on January 26, 2021)
 See: https://inventa.com/en/news/article/564/the-elimination-of-the-graphical-representation-requirement-and-its-effect-on-non-traditional-eutrademarks#:~:text=The%20%E2%80%9Cgraphical%20representation%E2%80%9D%20requirement%20was,rew%20more%20than%2030%20times (accessed on February 15, 2021)
 Libertel Groep BV v. Benelux-Merkenbureau, (C-104/01)  E.T.M.R. 63 (European Court of Justice)
 WIPO “Representation and Description of Non-Traditional Marks – Possible Areas of Convergence” (SCT 19/2) April 28, 2008 at pp. 23 to 28
 See: https://www.nbcnews.com/mach/science/digital-smell-technology-could-let-us-transmit-odors-online-chats-ncna940121 (accessed on February 24, 2021)