This article on ‘PROTECTION OF NON-CONVENTIONAL TRADEMARKS IN INDIA‘ is written by V Durga Sai Krishna, a 4th year student from Padala Rama Reddi Law College, Hyderabad, Telangana and an intern at Legal Upanishad.
This article provides about the non-conventional trademarks in India, this includes what is non-conventional trademarks, graphical representation non-conventional trademarks, who can register under the unconventional trademarks, legislation which gave protection to these types of trademarks. The law aims to protect the interest of the property owners from infringing their trademark and from misusing their trademark. Many of the laws protected the property owners, not only for the trademarks but also in matters related to patents, copyright, and designs. The non-conventional trademarks are of a recent origin in India because of an increase in the globalization of the Indian economy it has become necessary to protect the non-traditional trademarks.
WHAT IS A NON-CONVENTIONAL TRADEMARK
The non-conventional trademark can also be called non-traditional trademarks, which was another set of trademarks other than the usual trademarks such as logos, numbers, terms, letters, images, symbols, or a combination of one or more of these elements. Other than the traditional trademarks comes under the category of the non-conventional trademarks which includes colors, shapes, moving images, smell, touch, texture, holograms, positions or non-visible signs, etc. The Trade Marks Act, 1999 has not provided any definition about the non-conventional trademarks, the doctrine of Shield Mark is incorporated in India for the non-traditional trademarks.
GRAPHICAL REPRESENTATION OF NON-CONVENTIONAL TRADEMARKS
Graphical representation is considered necessary for the registration of any trademark. But in the case of non-conventional trademarks, it is considered as a practical problem. Graphical representation is a serious hurdle for registering non-conventional trademarks.
Sound marks are the best example for the non-conventional trademarks, generally, in many circumstances, sounds represent the uniqueness of the property. Onomatopoeia and sound notation are the few forms of sound marks it is also known as the audio signature. The European Union realized to give recognition to the sound marks, in the case of Shield Mark BV vs. Joost Kist (C-283/01) ECJ found that sound marks could differentiate the goods or services of enterprises, so there is a need for recognition of the sound marks in Trademarks.
If the product is found out through odor, it is called a Smell mark. The graphical representation can be brought by submitting the molecular notation used for the fragrance but in that case, it will represent the product rather than the smell of the product. The smell of the product will not have durability so for the registration they need to store the smell of the product, it is another hurdle for smell marks registration. Soaps are one of the best examples of smell marks i.e., each soap will have its distinct type of smell. However, details of the odor are necessary, so the applicant cannot register the odor without the submission of necessary details.
It means the mark consists of a single color or combination of one or more colors and a combination of colors is claimed to be registered as a trademark, the Trade Marks Act, 1999 also included the word combination of colors in the definition of trademarks. In Anglo-Dutch Paint, Colour and Varnish Works Pvt. Ltd. Vs India Trading House (AIR 1977 Delhi 41) it was observed that a particular color scheme was considered as a mark. A dealer can have a trademark in the combination of color though not as an individual color.
The shape of goods can be a trademark. Therefore the unique shape of soap, if registered, or of a toothbrush can be a trademark. Sec 2 (zb) of the Trade Marks Act, 1999 defined the trademark in that definition it also included the word ‘shape’ of a product. This says that if the shape of a product is unique and represents the enterprise, it can be registered under the Trade Marks Act.
A famous case regarding the shape and the color trademark in India is Nestle and the Cadbury case. In this Nestle chocolate company stopped the Cadbury Company’s attempt to acquire the purple color in their packaging and Cadbury Company stopped the attempt of Nestle Company to acquire the trademark on four-fingered chocolate bar shape mark.
TOUCH TRADEMARKS/ TEXTURE TRADEMARKS:-
If we can feel the product through touch is called the texture trademark. It is difficult to register the texture trademarks due to a lack of representation of the feel of texture or touch of the product such as fabrics, bottles, etc. It is one of the least claimed non-conventional trademarks in India. Significantly, it should have a purpose and it must not be for the decorative wrapping of items or services. The Khvanchakra wine bottles company has obtained the touch trademark as the velvet fabric was wrapped on it and for the brandy and grappa they used leather for packing those bottles, these are the best examples of the trademark on touch.
Compared to other non-traditional trademarks the taste trademarks are one of the most difficult ones and challenging, but some of the countries have adopted the registration of flavor of a particular commodity to identify the product in the commercial markets. In this taste trademark, the enterprise has to give a written explanation about the flavor of the product to register, just like the smell trademark.
In N.Y.Pezzeria, Inc vs. Syal case, can a specific taste be trademarked? The question was placed before the U.S. court to which a positive answer was provided with a precondition, every taste has its origin and the customer can link the taste of the product to that origin. Additionally, the significance of obtaining secondary meaning to be passed on as a trademark was also quoted.
PROTECTION OF NON-CONVENTIONAL TRADEMARKS IN INDIA
Generally, these non-conventional trademarks are made to attract customers so there is a need for the protection of these non-traditional trademarks. To protect the trademarks of the product the person who is seeking registration has to enroll the trademark, for the registration of the non-conventional trademark, the applicant has to describe that it is different from the product. Indian laws have not specified anything about the non-conventional trademarks except for the sound marks. Rule 26(5) of the Trade Mark Rules, 2017 provided an option for registering sound marks.
The applicant has to face many hurdles to register his non-conventional trademark. In India, only a few of them have registered under non-conventional trademarks. India has imported the doctrine of Shield Mark concerning the graphical representation of sound marks.
In India, the first-ever non-conventional trademark was registered by Yahoo’s Yodel. It registered its sound mark by submitting its unique musical notes. And another distinctive non-traditional trademark was registered by the Zippo Lighter, the Delhi High Court was awarded for its registration.
There were so many varieties of products are there in the market but only a few of them were registered under non-conventional trademarks because of hurdles in registering the non-conventional trademarks. These hurdles will discourage the applicants who want to register their trademarks. Compared to the other countries like European Union and the US, in India, there is less percentage of registered trademarks under non-conventional. The laws relating to non-conventional trademarks are not property implemented compared to traditional trademarks which will bring out the monopoly and unjust trade practices that will make a mess in the commercial trade of the economy.
- Rachna R. Kurup & Nimita Aksa Pradeep (Dec 2020), THE NON-CONVENTIONAL TRADEMARKS IN INDIA: THE WHAT, THE WHY AND THE HOW.
- Abanti Bose (Nov 2021), Challenges in Protecting a Non-Conventional Trade Mark.
- Manuraj Singh Parmar (Apr 2019), Non-Conventional Trademarks: A Legal Analysis.
- Rachit Garg (Apr 2021), Graphical Representation of Non-Conventional Trademarks : Study of US, Europe, and Indian System.
- Mahima Choudhary (Mar 2021), Graphical Representation of Non-Conventional Trademarks.