In order to bolster their brand image and to attract the consumers companies have started adopting non-conventional trademarks in the recent years. Non-conventional trademarks are those trademarks which not only cater to the vision of the consumers but also other senses like olfactory, aural, etc. Smell mark, sound mark, shape mark or color marks are all considered non-conventional marks. These are different from conventional or traditional marks which comprises of merely word marks, logos, devices or symbols.
In India, the definition of trademarks under section 2(1) zb of the Trademarks Act, 1999 sets out the requirements when a ‘mark’ can be considered as a trade mark. As per this provision, the mark must be distinctive and the mark must be capable of graphical representation. Distinctiveness means that a mark must have the capacity to distinguish the goods and services of one person from those of the competitors. Graphical representation indicates that the mark should be capable of being drawn on the Register. Thus non-conventional trademarks can be granted trademark protection if they satisfy the criteria of the mark having acquired distinctiveness and if it is capable of graphical representation.
As audio branding becomes mainstream, companies have tried to capitalize upon this trend to generate profits by adopting and registering their sound marks. Sound trademarks in India are registered as per the procedures mentioned in Trademark Rules, 2017 as well as the Draft Manual of Trademarks: Practice and Procedures. As per Rule 26(5) of the Trademark Rules 2017, in order to register a sound mark, the proprietor is required to submit a sound clip in MP3 format along with the musical notations not exceeding a length 30 seconds in the trademark application. Through this procedure the requirement of graphical representation of the mark is met.
The proprietor, in order to obtain sound mark protection, should also establish that the sound mark has acquired a secondary meaning that an average consumer would associate the sound with goods or services of only one proprietor and no one else. Some sound marks registered in India are Yahoo’s yodel, ICICI’s corporate jingle, MGM film’s lion’s roar, Nokia’s guitar note, and the bell sound of Britannia Industries.
As per Section 9(3) of the Trade Marks Act, the shape mark is not registrable if the shape results from the nature of goods themselves or attains a technical result or gives some substantial value to the product. These conditions should be kept in mind by the brands before they adopt shape marks for their products.
As per Rule 26(4) of the Trademark Rules 2017, protection in a shape of goods or its packaging can be obtained by the proprietor by submitting at least five different views of the trademark in 2D-form and a description by word of the trademark. Examples of registered shape marks include the shape of Coco-Cola bottle, 3D shape of Calsberg bottle, shape of zippo lighter, exterior view of Taj Hotel,etc.
As per Rule 26(2) of the Trademark Rules, 2017 in case brands wish to claim combination of colours as a distinctive feature of the trademark, the TM application should be accompanied with reproduction of the trademark in that combination of colours. The proprietor should also establish that the colour has acquired distinctiveness or secondary meaning due to continuous bonafide usage.
In the case of Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd, the Delhi High Court observed that the plaintiffs successfully established a prima facie case for restraining the defendant from using the colour combination of ‘red and white’ as a trade dress on the container and packaging of their products.
Store Layouts and Designs
Recently, brands, in order to enhance their brand value are also seeking to trademark layouts of stores to protect their interior/exterior store designs, distinct arrangement of features, colour patterns, furniture, etc. These marks are different from the registered architectural trademarks such as the exterior view of Taj Hotel Mumbai and the BSE Building exterior.
This is because exterior marks protect only the exterior image of the buildings as device marks which is capitalized by owners for commercial use. In contrast, owners seek to register layout marks to safeguard their unique interior designs, distinct features, colour scheme,etc of the stores that they provide goods/services from. Examples of the same include Mary Cohr’s layouts of its store front, Godrej & Boyce’s Discussion Area Zone, Vedic Restaurant layout, etc.
The Indian Trade Marks Registry requires these applications to be filed as device marks instead of 3D marks. Another crucial aspect of applications to register Store Layouts is that the proprietors should provide detailed description of the mark highlighting the unique placement of the articles, the colour scheme, the wording in the mark, spacing between articles, theme and get up, etc.
Recently, the Discussion Area Zone was granted trademark protection wherein the proprietors were able to establish that the store design due to its uniqueness had gained popularity among the consumers. To satisfy the graphical representation requirement, photographs and sketches showing all features of the store layout accompanied with an accurate description of its constituent features was submitted by the owners.
Consumers sometimes associate a certain smells with a product. Some examples of the same include the rose fragrance and the Sumitomo tyres, sandalwood scents from incense sticks, jasmine fragrances from perfume oils, etc. However, in India there are no provisions for the protection and registration of smell marks.
In the context of smell marks India can adopt the requirement of submitting written descriptions of the smell in a precise manner so that particular smell would not be confused with any other. Some smell mark descriptions have met the distinctiveness test and been successfully registered outside India such as the Dutch Company’s tennis balls with the scent of newly mown grass, darts with the strong smell of bitter beer, etc. This alternative should also be considered in India instead of only focusing on the ‘graphical representation’ requirement as this stringent standard cannot be met by smell marks.
Some non-conventional trademarks adopted by brands like sound, shape, colour marks have been able to successfully register them due to their capability to be represented in graphical form. However smell marks which cannot be graphically represented are not capable of trademark protection in India. Therefore, the Indian Trademark Act should be amended to forgo the stringent requirement of graphical representation and incorporate alternate forms of representation to facilitate the recognition of smell marks.
Author: Neha Uppin, Legal Intern at PA Legal.
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