Unconventional Trademarks: Overview and Analysis

Unconventional Trademarks: Overview and Analysis

Introduction

According to Section 2 (1) (zb) of The Trademarks Act, 1999 “a mark being represented graphically and fit for differentiating the products or services of one individual from those of others and may incorporate shape of goods, their packaging and combination of colors.”¹

Unconventional Trademark

An unconventional trademark is a kind of brand name which doesn't fall into the classification of conventional or traditional trademarks. An unconventional trademark is in the form of sound marks, smell marks, shape marks or colour marks. An unconventional mark must have the ability of being able to separate the products and services of one individual from that of another. The mark should have potential to be distinctive; it must indicate source and subsequently recognize the goods or services from others.

These marks have taken a legal acknowledgment and boom in India significantly because of the appearance of Trademark Rules of 2017² as they have legitimized the marking of sound, colour given that they are capable of being graphically represented.³ The word Graphical representation refers to the representation of the mark either in paper or in digitized form so it can have its distinct identity⁴ and encourages for encroachment claim if graphically represented.

Requirements of Unconventional Trademarks

To register for unconventional trademarks, following elements are required-

• The mark should be inherently distinctive.

• The mark should be able to distinguish a particular product from other products.

• The mark be represent as graphical representation.

Laws in India

The new Trademark Rules provide for the enrollment of sound marks under Rule 26(5). Sound marks can be registered by presenting a sound clip alongside the musical notations. Colour marks can be applied for by presenting a reproduction of that combination of colours. The onus will be on the Applicant to show that the colour or sound has acquired distinctiveness or secondary meaning because of constant bona-fide use. With respect to smell mark registration, there is no provision till date.

If a mark is not said to be distinctive, brand proprietors can still apply for a brand name if the mark has obtained distinctiveness because of its use over a long period of time. This generally applies to colour marks.

The Trademark Act, 1999 draws influence from both US trademark law as well as UK. Therefore, graphical representation is needed for mark be allowed registration in both Indian as well as UK law.

Development of Unconventional Trademarks

The development in the unconventional trademarks must be given to Trade Related Aspects to Intellectual Property Rights (TRIPS) agreement. It is an international convention on Intellectual Properties which sets normalized legitimate standard. They have included colour& shape trademarks, hologram trademarks, etc. and India being a signatory to the two TRIPS arrangement and Paris agreement is under commitment to promote the rules set in these conventions.

In USA, there have been a few occurrences in the past where unconventional trademarks were registered as Lanham Act of 1946, where the distinctiveness of the mark was alone needed to be shown.

In the case of Qualitex Co. v. Jacobson Products co.⁵the court held that under Lanham Act, subject to regular conditions a colour is registrable as a brand name.

In landmark judgment given by European Court of Justice In the case of Shield Mark BV v. Joost Kist⁶ named as Shield Doctrine, the court while conforming the guidelines to be kept up for qualifications of graphical representations, analysed a same taking into consideration about different kinds of brand name, primarily keeping into mind the registration of sound mark by composed description/graphical representation. The court held that it did not have the necessary accuracy and can't be understood as graphical representation.

Problems Faced in Registration of Unconventional Trademarks

Registration of unconventional trademarks like smell marks, shading marks sound and shape marks are yet to gain force.

There are a lot of difficulties before the candidate who wishes to register unconventional subject matter. How can one represent a sound or scent using words and drawings? The issue arises when a smell or sound mark has to be registered. The registration of colour marks isn't difficult if the applicant can prove that the colour or combination of colour has obtained secondary meaning and uniqueness in the wake of being used by the candidate for such a long period of time that consumers have begun associating the colour with the goods of the applicant.

Instances of Registration in India

There are 2 procedural prerequisites particularly for registering an unconventional trademark-

• Firstly, representing/flagging such unconventional brand name to give the particular distinguishing proof to the mark.⁷

• Secondly, restricted to the registration of such trademarks which are not expressly mentioned in the act or the rules and in such form of unconventional trademarks where the examiners and registrars of brand name can request that the individual to file more information on the mark like the written description of the mark etc.

Analysis

The Indian Trademark Regime has, imitated the stand of European Union to the extent the essential of graphical representation for a brand name is concerned. Thus, it makes registration of non-conventional trademarks substantially more rigorous in India than in the United States. These brand names have capacity of source identifier despite not being effectively graphically representable.⁸

Non-conventional marks encourage undertakings to grow new and creative methods of branding. Organizations connect with newer markets, expanding benefits for themselves and another segment of buyers.

Non-conventional trademarks do satisfy the traditional purpose connected to trademark protection. They provide give extra benefits. Thus, they should get brand name protection.⁹

BY-

ANKITA MISHRA