Non-Conventional Trademarks- Analysis of the Indian Structure

Shipra, KIIT School of Law, KIIT University, Bhubaneshwar. This Article won 8th position in 4th RostrumLegal Essay Competition, 2016

What is a Trademark?

Trade mark is a branch of Intellectual Property Right. A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. Trademark is a mark or symbol which is capable of distinguishing the goods or services of one from those of others.[i] It works like a weapon in the hand of registered proprietor or owner of the mark to stop other traders from unlawful use of the mark of the registered owner. Under section 28 of the Act, the registration of a trade mark shall give to the registered proprietor of the trademark, the exclusive right to the use of the mark in relation to the goods in respect of which the mark is registered and to obtain relief in respect of the trademark in the manner provided under the Act. The proprietor of a trade mark has a right to file a suit for infringement of his right and obtain:
1.Injunction,
2.Damages,
3. Account of profits.

Infringement of Trademark

Infringement is a breach or violation of another’s right. As per Black’s Law Dictionary Infringement means an act that interferes with one of the exclusive rights of a patent, copyright and trademark owner”. According to the Trademark Act, ‘A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. Infringement of trademark means use of such a mark by a person other than the registered proprietor of the mark. As per Trademark Act, a mark shall be deemed to be infringed mark if:

  • It is found copy of whole registered mark with a few additions and alterations,
  • The infringed mark is used in the course of trade,
  • The use of the infringed mark is printed or usual representation of the mark in advertisement. Any oral use of the trademark is not infringement.
  • The mark used by the other person so nearly resembles the mark of the registered proprietor as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered.

Under section 29 of the Trade mark Act, 1999, the use of a trade mark by a person who not being registered proprietor of the trade mark or a registered user thereof which is identical with, or deceptively similar to a registered trademark amounts to the infringement of trademark and the registered proprietor can take action or obtain relief in respect of infringement of trademark. In a matter Supreme Court has held that in an action for infringement if the two marks are identical, then the infringement made out, otherwise the Court has to compare the two marks, the degree of resemblance by phonetic, visual or in the basic ides represented by the registered proprietor, whether the essential features of the mark of the registered proprietor is to be found used by other person than only the Court may conclude the matter. In Simple words a trade mark is infringed[ii] when person in the course of trade uses a mark which is identical with or deceptively similar to the trademark in relation to the goods in respect of which the trademark is registered. Use of the mark by such person must be in a manner which is likely to be taken as being used as a trademark.

In the case of [iii]Amritdhara Pharmacy Vs Satya Deo Gupta, The honourable Supreme Court said that “You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trademarks is used in normal ways as a trade mark for the goods of the respective owners of the marks. If considering all those circumstances, you come to the conclusion that there will be a confusion- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods-then you may refuse the registration, or rather you must refuse the registration in that case

The action for passing off is different from an infringement action. The action for infringement is a statutory remedy whereas the action for passing off is a common law remedy. Accordingly, in order to establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required. In the case of a passing off action, proving that the marks are identical or deceptively similar alone is not sufficient. The use of the mark should be likely to deceive or cause confusion. Further, in a passing off action it is necessary to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiff’s goodwill, whereas in an infringement suit, the use of the mark by the defendant need not cause any injury to the plaintiff. However, when a trademark is registered, registration is given only with regard to a particular category of goods. Protection is, therefore, afforded only to these goods. In a passing off action, the defendant’s goods need not be the same; it may be allied or even different. The Supreme Court laid down three elements that needs to be established in order to establish passing off action and those are[iv]:

  1. The first element in an action for Passing off, as the phrase “passing off” itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff’s. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its services in a manner which was deceived or would be likely to deceive the public into thinking that the defendant’s goods or services are the plaintiffs
  2. That second element that must be established by the plaintiff is misrepresentation by the defendant to the public and what has to be established is the likelihood of confusion in the minds of the public that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion the court must allow for the ‘imperfect recollection of a person or ordinary memory’
  3. The third element of a passing off action is loss or the likelihood of it.

[v]When considering the infringement of a registered trademark. It is important to bear in mind the difference between the test for infringement and the test in passing off action. In a passing off action, the courts look to see whether there is misrepresentation whereas in infringement matter, it is important to note that the Trademark Act gives to the proprietor an exclusive right to the use of the mark which will be infringed in the case of identical mark and in the case of similar marks, even though there is misrepresentation, infringement can still take place[vi].

Essential Ingredients for a Trademark

There are only two basic condition that needs to be fulfilled in order to claim it as a valid trademark:

  1. It should be distinct: A trade mark like ‘Apple’ for computers may be regarded as distinctive because it has nothing to do with apples, and similarly it would not be distinctive for actual apples and someone who is growing or selling apples may not use it as a trademark. So in general a trademark is not distinctive if it is descriptive
  2. It should not be deceptive: Typically a trade mark would be one that says that the goods for which it is used have certain qualities when they don’t have them in reality. For instance, a trade mark ‘Real Leather’ for goods that are not made of genuine leather. Hence it may be said that a trade mark is a visual symbol in the form of a word or a label applied to articles of commerce with a view to indicate to the purchasing public that they are goods manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt in by other person.

Graphical Representation

In the day and age of aggressive marketing, numerous techniques are adopted to capture the attention of the consumers. This is where the non-conventional trademarks come into play. Non-conventional or non-traditional trademarks are those marks which are beyond the purview of traditional trademarks and therefore consist of marks originating from shapes, sounds, smells, tastes and textures. Although not specifically mentioned in the Act, the definition of a ‘trademark’ incorporates the non-conventional marks as well.

In order to be a subject of valid application for registration the sign must be represented graphically as required by Section 2(1)(zb) of the act. [vii]The words “capable of being represented graphically “would mean that the mark should be such as capable of being put on the register in a physical form and also being published in the journal. The graphical representation provides a fixed point of reference, showing what the mark is.

In Swizzels Matlow Ltd’s [viii]Application (No 2), the court explained two chief reasons for the requirement of the graphical representation criterion:

  1. To enable traders to identify, clarity, what other traders (carrying on the same business or otherwise) have applied for registration as a trademark, and for which product.
  2. To enable the public to determine, with precision, the sign which forms the subject of the trademark registration.

In India, the Trademarks Act 1999 replaced the Trade and Merchandise Marks Act 1958 and amended and consolidated the law relating to trademarks in India. Primarily, the new act was considered necessary for India to comply with the Agreement on Trade-Related Aspects of Intellectual Property Rights and to meet its obligations as a member of the World Trade Organisation. Under the old act, unconventional trademarks such as colour combinations per se, three-dimensional marks, smells, sounds and tastes were incapable of being registered. However, the new act specifically provides for the registration of the shapes of goods, packaging and colour combinations as trademarks. Although smells, sounds, tastes and holograms are not specifically mentioned, the prevailing legal opinion seems to suggest that the newly amended definition of a ‘trademark’ is wide enough to include non-conventional marks.

The act recognises that colours add to the distinctiveness of a mark by providing that if a mark is restricted to a particular colour, this fact will be taken into account when determining the distinctiveness of the mark. However, whether a colour by itself is entitled to protection as a mark remains a grey area. Most applications are filed for words, designs, symbols, logos and other such distinguishable signs – in particular colours – to add distinctiveness to a mark. The act does not specifically provide for the registration of a single colour, although it does not expressly exclude the notion. However, in practice, a combination of colours stands a better chance of registration, provided that it is capable of distinguishing the goods of one trader from those of another.

Graphic representation of a mark is the sine qua non for a trademark registration in India. A trademark application essentially requires the mark to be represented graphically, that is, the mark should be capable of being put on register in a physical form and also being published in the journal. The Trademarks Rules, requires the trademark to be represented in a ‘paper form’.

Non-Conventional Trademarks

Non-conventional or non-traditional trademarks are relatively new on the Intellectual Property scene. Any mark that does not come under the traditional categories of trademarks such as letters, words, logos, numerals, pictures, and symbols may be termed a non-conventional trademark. Non-conventional trademarks therefore consist of marks originating from shapes, sounds, smells, tastes and textures.

Trademarks are governed by international treaties like the Madrid Protocol which allow a trademark to be registered in any or all member countries through a single application filed at any of the member countries. However, when it comes to nonconventional trademarks most countries have their own laws regarding what can be allowed and the extent to which the trademark laws can protect nonconventional trademarks.

In Colgate Palmolive Company v Anchor Health and Beauty Care Pvt Ltd[ix] the court observed that a colour combination is a ‘trademark’ within the definition of the act, as there is no exclusion in the definition and even a single colour is entitled to protection under the law of passing off. This dispute concerned the defendant’s colour combination of red and white in respect of dental products, which was similar to the plaintiff’s colour combination of one-third red and two-thirds white on its product container. Diverging from the view expressed in Colgate Palmolive, in Cipla v MK Pharma[x] the court held that a single colour or a colour combination is not a trademark and is incapable of protection under the common law of passing off. The plaintiff claimed that its blister packaging containing a distinctive orange-coloured, oval-shaped tablet constituted a trademark. However, the judge was of the view that “even if there has been deliberate copying of the similar colour and shape of the plaintiff’s tablets, that would not amount to passing off, since colour and shape are not indicative of the drugs, neither are they associated with the trade mark”. Such inconsistent views result in confusion surrounding the principles of protection that are applicable to colour marks. It is hoped that things will become clearer as the courts examine more cases.

Types of Non-Conventional Trademark

  • Sound Trademark: A sound trademark is a non-conventional trademark where the trademark function of uniquely identifying the commercial origin of products or services is achieved by means of an audio clip. Under most conventions and statutory provisions the definition of trademark either encompasses sound as a trademark, or at the very least, does not exclude such marks. Only a handful of countries have a standard or a set of requirements to be met for sound trademarks. These standards have evolved largely due to the cases prosecuted, and since even in those countries the number of applications prosecuted has been limited, guidelines, if any, are not very well developed. Although trademark laws passed in the European Union (EU) do not explicitly include sound in the definition of trademarks, the European Court of Justice (ECJ) felt that sound signs could be registered as trademarks so long as their use made it possible to distinguish the goods or services of one undertaking from those of other undertakings.  To be registered in the EU, sounds must not only follow traditional trademark laws but also be represented graphically in a way that is clear, precise, self-contained, equally accessible, intelligible, durable and objective. In the United States, whether a sound can serve as a trade mark “depends on the aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it struck.”  Quite simply this means that if a sound lingers in the mind of the listener and the listener subsequently associates a source or event with that sound then the sound may be eligible for a trademark. Some other recognizable sound trademarks issued in the US include the 3 tone NBC jingle (72349496), the Tarzan yell (75332744) and the drums, trumpets and strings chime of the famous movie house, Twentieth Century Fox (74629287).
  • Colour Trademark: colour combined with words, designs, symbols, logos and other such distinguishable signs have been traditionally eligible for a trademark, whether colour alone is eligible has been shrouded in shades of grey. The distinctiveness of colours and the ability to differentiate between different shades of a colour have been points in question. Concerns grew that if colour alone was protectable, trademark infringement suits would lead to lengthy litigations over ‘shades’ of colour which would slow down the process of trademark registration.

Functionality Doctrine: A colour cannot be a trademark if the colour is functional in nature. Under this ‘functionality doctrine’, if the feature of the product for which protection is sought is useful or affects the cost or the quality of the article, such that granting trademark protection to the feature would put competitors at a significant disadvantage, the feature is not entitled to trademark protection. For example, a court held that the colour black when used on outboard boat motors serves a functional purpose, since the colour black is compatible with all other boat colours and also because the colour black makes the motor appear smaller.

Some examples of colour trademarks include the colour purple for Cadburys Chocolates, the colour magenta for T-Mobile, and the colour orange for the mobile operator Orange.

  • Smell Trademark: It generally refers to smell or olfactory trademarks which is generally less in number in comparison to other non-conventional trademark. And the main reason behind that is that these trademarks are very rare and representing them graphically is an almost impossible and difficult work thus in the absence of graphical representation, these are very rare. But this is not the sole problem with these trademarks, the distinction between two smells are also very confusing thus the element of distinctness is also not present in this type of trademark. The “graphical representation” of scents thus far has solely been verbal. A verbal description of smell can be subjective and cannot really provide a fail-proof method of identifying and distinguishing one smell or scent from another. Another commonly used form of “graphical representation” of a scent is describing the smell as a chemical formula.

As with the case of colour trademarks, the “functionality doctrine” needs to be met by a scent in order to be allowed as a trademark. Any smell that has a functional use and if a potential trademark on that smell leads to a significant disadvantage to competitors, may be disallowed.  However, there is no clear-cut definition for functionality. For example, the smell of lemon for garbage plastic bags; the smell itself can be distinctive, but it can also be functional because it can mask the smell of waste and garbage. It was under this “functionality doctrine” that a smell trademark on a perfume was not allowed.

The smell of freshly cut grass for tennis balls was registered as a European Trademark; in the UK the smell of beer (bitter ale) has been registered for dart flights and the smell of roses for tires. An example of a registered smell trademark in the US is of a “vanilla” scent or fragrance when applied to office supplies, namely, file folders, hanging folders, paper expanding files, etc. (Registration No. 3143735).

  • Motion Trademark: Moving images in the form of a film clip, video, animation, logos etc. can also qualify for trademarks in some countries. Motion trademarks may also be known as animated marks, moving marks, or movement marks. The requirements of a motion trademark involve the detailed description of the various components or elements of the trademarks and their interaction with each other explained in a sequence of steps. The description of the Columbia motion trademark (USPTO TM 1975999) shown above is described as consisting of”A moving image of a flash of light from which rays of light are emitted against a background of sky and clouds. The scene then pans downward to a torch being held by a female figure on a pedestal. The word “COLUMBIA” appears across the top running through the torch and then a circular rainbow appears in the sky encircling the figure.” Just like the US, the European Union has also allowed registration of motion trademarks. The arrangement and opening of the doors of a Lamborghini has a motion trademark (CTM 1400092) which has the description “The trademark refers to a typical and characteristic arrangement of the doors of a vehicle, for opening, the doors are “turned upwardly”, namely around a swivelling axis which is essentially arranged horizontal and transverse to the driving direction”.
  • Hologram Trademarks: Holograms have for long been used for security purposes on credit cards, concert tickets, certain currencies etc. The purpose of use is to prevent counterfeiting and fraudulent replication, as replication of a hologram is considered more difficult. Holographic trademarks have been registered by a few European countries and also in the US. The basic requirements for a trademark registration apply to a hologram too, i.e., the mark should be distinctive enough to be used by a business to uniquely identify itself and its products and services to consumers. The main difficulty arises in the method of graphically defining the mark in trademark registrations. Holograms by their very nature possess multiple images or colours that are visible only when viewed from different angles. Hence, holograms are difficult to capture in paper form, because the paper print will not be able to show the movement of the images. The image may work electronically, but on paper, the published mark will only be a substitute of the mark itself; a figurative mark which needs graphical representation and adequate written description if it is to succeed. Applicants wishing to register their hologram as a mark should therefore seek to describe the hologram in as much detail as possible, providing visual views of the hologram in various frames with descriptions of angle and appearance.
  • Touch mark: It is possible for products to be manufactured in such a way that the good or their packaging have a particular sensation to the touch, which can distinguish them from those of competitors. Sometimes, a particular feel will reflect the quality of the product rather than the origin, but this type of mark may include, for example, tissues that are particularly soft or moist or products that may be held in the hand more comfortably. It is common practice for some products to have writing in Braille applied to them. Similarly registerable features may be added to products. United States: Touch (tactile) marks are registerable. The touch mark has to be represented graphically. An example of a touch mark is depicted in U.S. Registration No. 3155702, for “a velvet textured covering on the surface of a bottle of wine” for wines in Class 33, registered in the name of American Wholesale Wine & Spirits, Inc. of Glenview, Illinois. While a touch mark may possibly be inherently distinctive, it is more likely that evidence of distinctiveness acquired through use will have to be provided before a touch mark is registerable as a trademark. The functionality doctrine may bar protection if the touch is essential to the use and purpose of the article or inherently affects its cost or quality.
  • Taste mark: [xi]In many cases it will be difficult to distinguish between the natural flavor of a product and the recipe adopted by a manufacturer to distinguish its goods from those of competitors. The flavor of cola drinks is a good example. [xii]The manufacturers of such goods would certainly consider the flavor of their products as being a trademark of the company, and the recipes often are closely guarded trade secrets. [xiii]Taste is very subjective, and therefore it would be extremely difficult to define and compare one taste with another.

Conclusion

Article 15 of the TRIPS Agreement defines Trademark as any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings. It further states that Members may require, as a condition of registration, signs to be visually perceptible. This means that it is not compulsory for the Trademark to be visually perceptible so far TRIPs Agreement is concerned. Further, Article 1 of the TRIPS Agreement states that Members are not obliged to implement in their law more extensive protection than is required in the aforesaid agreement. This means that the Member States may or may not require Trademark to be visually perceptible or capable of graphical representation. The only necessary condition is that the given sign shall be capable of distinguishing the goods or services of one undertaking from those of other undertakings. This is because the primary function of a trademark is to distinguish the goods or services of one undertaking from those of other undertakings, whether a mark is visually perceptible or not doesn’t matters.

The Indian Trademark Regime has, so far, imitated the position of European Union as far as requirement of graphical representation for a trademark is concerned. The Indian Trademark Act, 1999 puts obligation of capability of graphical representation for the registration of trademark. Thus, it makes registration of non-conventional trademarks much more stringent in India than in the United States. The non-conventional trademarks possess capability of source identifier despite not easily graphically representable. However, the prima facie question is that whether it is possible for a mark to perform the primary function of a trademark despite lacking any capability of graphical representation and with respect to these international clauses it is highly noted that in India the capability of graphically representation is a not only a determining factor but also a cardinal principle in case of granting Trademark or not. Thus, we can conclusively hold that the Indian Trademark Act 1999 has put an unnecessary burden of capability of graphical representation as a condition for the registration of a trademark. In the increasingly globalized world, the use of sound, scent, colour, motion or holograms as a trademark is bound to increase in the nearby future. Thus, we should liberalize our trademark regime by diluting the requirement of graphical representation for the non-conventional trademarks.

References:

[i] Trademark registration in India-LegalserviesIndia.com(https://www.legalserviceindia.com/article/l65-Trademark-Protection-in-India.html)

[ii] Hearst Corporation Vs Dalal Street Communication Ltd., 1996 PTR 1 (Cal)

[iii] Amritdhara Pharmacy Vs Satya Deo Gupta, AIR 1963 SC 449

[iv] Satyam Infoway Ltd. Vs Sifynet Solutions (P) Ltd. 2004 (6) SCC 145

[v] Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical laboratories, AIR 1965 SC 980

[vi] American Home Products Corpn. Vs. Lupin Laboratories Ltd., 1996 PTR 7 (Bom)

[vii] The Requirement of Graphical Representability for Non-Conventional Trademarks- The WB National University of Juridical Sciences (NUJS) received 29 june2006, revised 9 august 2006 .Journal of Intellectual Property Rights Vol. 11, September 2006, pp- 313-317

[viii] SWIZZELS MATLOW LIMITED’S TRADE MARK APPLICATION- R.P.C. (1998) 115 (7): 244-249-Report of Patent, Design and Trademark Cases (Oxford Journals).

[ix] Colgate Palmolive Company v Anchor Health and Beauty Care Pvt Ltd 2003 VIIIAD Delhi 228

[x] Cipla v MK Pharma MIPR 2007 (3) 170

[xi] https://www.inta.org/trademarkbasics/documents/intanontraditionalmarkspresentation.ppt

[xii] Eli Lilly and Co., appeal relating to Community Trade Mark Application No. 1452853, Case R 120/2001-2 (OHIM Second Board of Appeal Aug. 4, 2003).

[xiii] Technically, taste (or flavour) marks are capable of registration. An application to register a flavour “requires a substantial showing of acquired distinctiveness.” (In re N.V. Organon, 79 U.S.P.Q.2d 1639, 1650 (T.T.A.B. 2006).) To date there are no registrations for taste or flavour. The TTAB has observed that “it is unclear how a flavour could function as a source indicator because flavour or taste generally performs a utilitarian function and consumers generally have no access to a product’s flavour or taste prior to purchase.” Id. at 1650-51. See TMEP § 1202.13. The requirement for a drawing does not apply when a mark consists of completely nonvisual matter. The applicant must submit a detailed description of the mark. 37 C.F.R. § 2.52(e). See TMEP § 807.09.

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