An Unconventional Truth

For nontraditional marks to be protectable, the rules must bend to match the nature of the marks themselves, argue Manisha Singh and Amaya Singh of LexOrbis.

As the term “unconventional” suggests, such trademarks are unlike the conventional trademarks that are usually found in the form of a word, letters, numbers or a device or a combination of the same. However, they still fulfil the purpose of a trademark: providing a unique commercial impression to goods or services.

Unconventional trademarks can be any of the following: colors, motions, shapes, smells, sounds, tastes, or more.

There are multiple reasons why unconventional trademarks are important and must be understood. In the age of the Internet, the value of sound marks and motion marks (animations) cannot be underplayed. These marks are likely to catch the attention of a consumer before any traditional marks do. It is important that the visual perception is not the be-all-and-end-all of commercial impressions.

The Trade Marks Act, 1999 of India and its corresponding Trade Mark Rules, 2017, together recognize certain unconventional marks such as the shape of goods, or the combination of colors and sounds. The Indian Trade Mark Rules have standardized sound mark applications into “the MP3 format no longer than 30 seconds,” which indicates greater acceptance of non-traditional marks.

Other marks such as smells, tastes, etc., are not expressly excluded by Section 2(1)(zb), which defines trademarks as marks that can be represented graphically and can distinguish goods or services of one person from those of another and may include shape of goods, their packaging, and combination of colors.

Therefore, they can be granted trademark status if they are found to be (a) distinctive and (b) capable of being represented graphically.

“In practical terms, it is difficult to process the trademark applications, advertisements, etc., of nontraditional marks due to their very nature of not being easily graphically represented.”
Manisha Singh (pictured) and Amaya Singh

Landmark Cases

Evolution of Indian jurisprudence on nontraditional marks can be traced via landmark judgments such as Colgate Palmolive Company and Ors. v. Anchor Health and Beauty Care Pvt. (2003) and the Christian Louboutin cases. In the Colgate case, the plaintiff claimed that the color combination of red and white was part of its trademark for dental products. It was observed that if a product having distinctive color combination, style, shape, and texture has been in the market for decades, it is understood to have acquired secondary meaning on account of its reputation and goodwill.

The Louboutin cases dealt with the red sole that is characteristic of the brand’s shoes. Courts have gone back and forth on whether the law allows for single colors to be considered a trademark as the Act explicitly mentions “combination of colors.” In general, the standard of establishing goodwill and reputation for color marks is quite high.

Shape marks are frequently registered in India if they satisfy the following tests: (a) the “shape of goods” should not result from the very nature of the goods themselves; (b) the shape should not be such as is necessary to obtain a technical result; and (c) the shape should not be such as to give substantial value to the goods. They must also prove to be distinctive in nature.

In addition to shape marks, motion marks are also registered in India.

With nontraditional marks, the proprietors and the registering authorities face multiple challenges. In practical terms, it is difficult to process the trademark applications, advertisements, etc., of nontraditional marks because they are not easily graphically represented.

This is especially true for smell and taste marks. While motion, shape, color, and sound marks are fairly simple to denote graphically by way of pictorials, images, the Pantone system, and staff notations, respectively, the same cannot be said for smell and taste marks.

The Indian trademark law’s stipulation that the mark be represented graphically is not unique to India and can be found the world over. Graphical representation is essential for practical reasons. It is necessary for trademark prosecution, enforcement, and other processes where a clear record and description of the mark is important.

Furthermore, the mark needs to be advertised to the public and open for inspection, which can only be achieved if the mark is graphically represented. In cases where deceptive similarity is to be judged, it is crucial to have graphical representations of the mark to compare.

Another challenge that comes with unconventional trademarks is the burden of proving that a mark is distinctive or has acquired distinctiveness. This may be exceptionally difficult to achieve in the case of subjectively experienced marks such as smell and taste.

“Nontraditional trademarks may also benefit from explicit codification, as uniformity can lead to better accessibility for all parties.” Manisha Singh and Amaya Singh (pictured)

The Way Forward

The challenges of unconventional trademarks are best explained by taking the example of smell marks. Smell is regarded by some as the most potent way of triggering human memories.

In 2002, the Court of Justice of the European Union passed a judgment in the case of Ralf Sieckmann v. Deutsches Patent-und Markenamt (German Patent and Trademark Office). In this case a smell mark was filed along with a written description of the scent, the structural chemical formula of the substance and a sample of the scent. It was held that these elements were not sufficient by themselves or together to render a precise graphical record of the smell mark. A similar judgment is to be expected if such a case were to arise in India.

However, the European Union Directive 2015/2436, which came into effect in 2019, removed the requirement of a graphic representation for something to constitute a trademark. The conclusion is evident: when graphical representation requirements are relaxed, unconventional marks are registered more easily. However, if the requirements are considered too lax, a method of recording/representing such marks should be agreed upon.

Nontraditional trademarks may also benefit from explicit codification, as uniformity can lead to better accessibility for all parties.

Such codification must be done while keeping in mind the harmonization of the global trademarks system. Taking into consideration the Madrid System of registration, the standardization of requirements for nontraditional marks will only benefit everyone involved. This is a necessity in the age of globalization.

Manisha Singh is Managing Partner at LexOrbis. She can be contacted at: manisha@lexorbis.com

Amaya Singh is a Partner at LexOrbis. She can be contacted at: amaya@lexorbis.com

Tuesday, November 17, 2020

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