NON-CONVENTIONAL TRADEMARKS AND THE PROCEDURAL REQUIREMENTS FOR THEIR REGISTRATION

Trademark Jun 19, 2021 0 Add to Reading List

INTRODUCTION –

Trademark law is one of the most fascinating areas of intellectual property law, and there have been numerous advancements in this field of law in recent years. A trademark is an intellectual property that allows customers to recognize a specific brand, service, or product on the market. It protects the maker or owner of the goods from illegal product imitation, defends the interests of consumers, and helps to avoid unnecessary confusion. Traditional marks, such as logos, symbols, images, captions, signs, and names, are generally protected by trademarks. As a result, brands have gotten more innovative and have embraced new non-traditional trademarks to identify their products in the marketplace.

Non-conventional or non-traditional trademarks are markings that are not included in the typical collection of trademarks and so encompass touch, smell, color, shape, texture, sound, and taste, among other things.

There is also the possibility that these marks will cause consumer confusion, negating the purpose of trademarks. Non-conventional trademarks, on the other hand, are still a growing notion in India, and there has been much controversy and discussion over whether they may be deemed trademarks without the ability to be visually depicted.

This article discusses the non-traditional trademarks that have recently become popular in the consumer market. It also goes over and over the beginning of their registration process around the world, with a particular focus on the Indian trademark situation.

NON-CONVENTIONAL TRADEMARKS: NATURE AND APPLICATION -

Non-conventional marks are those that do not fall into the category of conventional marks, such as those that contain letters, numbers, logos, graphic descriptions, symbols, or elements that are made up of such elements. The definition of a Non-Conventional mark is illustrative, stating that it encompasses "good shape," "packing," and "color combination." Traditional trademarks are thought to be unsuitable for such marks. Although not officially defined in the statute, the concept of trademark includes non-traditional marks as well.

REQUIREMENTS FOR REGISTRATION AND PROCEDURAL REQUIREMENTS -

When discussing non-conventional trademarks, it's crucial to remember that a mark doesn't have to be registered to be considered a trademark; registration just offers a trademark extra exclusive right. The mere fact that a mark has broad and widespread consumer awareness qualifies it as a trademark.

ISSUES THAT ARISE DURING NON-TRADITIONAL TRADEMARK REGISTRATION -

Non-conventional trademark registration is now in short supply. While the principles of trademark registration are the same for conventional and non-conventional trademarks, the requirement to graphically portray the unconventional subject matter of the trademark application changes, making the procedure more complicated.

2017 TRADEMARKS RULES, RULE 26(5): SOUND MARK -

Because there is little mention of these various types of trademarks in Indian laws or TRIPS, a larger reliance is placed on judicial precedents established through time Only recently has a single reference of a sound trademark been made under Rule 26(5) of the Trade Marks Rules, 2017, which reads that “When a trademark application contains a sound as a trademark, the sound must be reproduced in MP3 format, with a duration of no more than thirty seconds, and recorded on a medium that allows for easy and audible playback, as well as a graphical depiction of the notations.” While this clarifies the sound mark methodology and provides a solid foundation for future visual marks, how can you portray scents, tastes, and sensations graphically?

NON-CONVENTIONAL TRADEMARK GRAPHICAL REPRESENTATION DURING THE REGISTRATION PROCESS -

“The representation of a trademark for goods or services represented or capable of being represented in paper form, including representation in the digital form,” according to Rule 2(1)(k) of the Trademark Rules, 2017. The European Court of Justice (ECJ) elaborates on this in the case of Sieckmann v. German Patent and Trademark Office (referred to as the Sieckmann criteria), The graphical representation must be "clear, accurate, self-contained, easily accessible, understandable, durable, and objective," according to the guidelines.

The use of external reference of globally known color codes was ruled to be precise and durable in the Libertel Groep BV v. Benelux-Merkenbureau case, for example. The UK Trademark Registry accepts these universal color codes in conjunction with a textual explanation as an appropriate graphical representation.

Despite the lack of a formal specification for what specifically satisfies the graphical representation criteria for color marks, the Indian Draft Manual does not recognize the use of universal color codes such as Pantone.

APPLICATION FORM AND SIGNATURE -

An application for the registration of a trademark for goods or services must include the following information:

Only if a statement to that effect is included in the application will it be considered a three-dimensional trademark.
Only if the application contains a declaration to that effect will a trademark consisting of a combination of colors be considered.

The Registrar may also, if the applicant's reproduction does not adequately show the particulars, request additional and better details of the trademark, such as a written description and different views of the trademark (as in the case of three-dimensional marks), as provided by Rule 26(3)(ii) of the Trademark Rules, 2017.

Although not all known categories and types of non-conventional trademarks are mentioned in statutory provisions and those new and emerging types can be seen developing over time, a liberal interpretation of both the provided statutes and international practices is required to understand the procedure for non-conventional trademark registration.

CONCLUSION –

In general, trademark law recognizes the protection of psychologically significant marks. If any symbols or marks that have taken on new shapes have a strong psychological impact on customers' minds and have significant economic value, they should be protected under trademark law. The difficulties in registering such marks as trademarks on paper should not be a deterrent to their use, and new techniques for recognizing and categorizing such marks should be created to keep the cost of protection for customers of non-traditional trademarks under control.

When considering all of the rules about non-traditional trademarks, it is evident that current laws have made the registration of non-traditional trademarks more difficult, as there is no distinct registration method for non-traditional trademarks. As a result, the Legislature must take the required steps to alter the current Trademark Laws to make the registration of non-conventional trademarks easier.

REFERENCES –

BY ANAMIKA