The uprising of the economic wave across the world has compelled countries to adopt liberal approaches in their trade policies. This has created a business ecosystem for foreign traders to set up business in local markets. Because of changes in trade policies, many changes and legal concerns surfaced, especially from the perspective of intellectual property laws. Presentation of brand identity among consumers plays a major role in brand creation. Jingles, songs or stories related to the product can create a brand identity for its customers. Following the footsteps of the developed countries, many developing countries like India have made considerable changes to explore new avenues like the concept of Unconventional trademarks.
What are Unconventional Trademarks?
Unconventional trademarks can be in the form of a sound, colour, shape, moving images or even smell. It’s a very new and innovative addition to the seasoned concept of conventional trademarks in India. According to the basic structure of trademark laws, the function of a trademark is more important. It is important for a trademark to show distinguishing features between two products to obtain trademark registration. TRIPS Agreement introduced the concept of registration of unconventional trademarks. Since then, may countries have tried to include unconventional trademarks in their respective Intellectual Property Laws.
Registration of unconventional trademarks is possible if it fulfils the requirements provided by the Indian trade marks law. One of the major requirements is that the trademark must be capable of showing a difference between two products. The proposed non-conventional trademarks must be distinctive and the same should be capable of graphical representation. Some of the Unconventional Trademarks which have become known to us over a period are as follows:
In India, trademark laws are closely related to commerce and has kept pace with changing times and globalization. The Indian Trade Marks Act does not explicitly state that all sounds can enjoy trademark registration, however, in accordance with recent case laws any unconventional trademarks must be “capable of graphical representation” besides being capable of being distinct.
Therefore, the representation of unconventional trademarks is possible using a series of musical notes. As this is a new concept, it has been made clear that none of the unconventional trademarks such as a sound trademark will qualify, prima facie, for acceptance without evidence of distinctiveness.
If a sound has been able to establish its distinctiveness and the consumers recognize the brand through the sound like the start-up tunes of Nokia or Microsoft, then it qualifies for trademark registration in India. Yahoo!’s ‘Yodel’ is the first sound trademark that enjoyed trademark registration as a non-conventional trademark in India. Other examples of unconventional trademarks are as follows –
- Audi’s sound of the heartbeat
- ‘I’m lovin’ it’ of McDonalds
Filing a trademark application is possible for the marks that are meaningful, different and perceptible. You can sense colours by your visual senses and you can interpret the same to give a distinct meaning. Therefore, these types of trademarks are capable of trademark registration as unconventional trademarks.
People, in general, should be able to identify the colour in relation to specific goods or services and not just associate the colour with the producer. A combination of colours can make the mark look distinct and recognizable. For example, the purple wrapper of Cadbury has been in use for ages and it has developed a secondary meaning. It is the feature from which people differentiate Cadbury from other chocolates.
But it’s very difficult to prove distinctiveness with the use of just one colour, hence usually it is easier to use multiple colours to get trademark registration of a colour mark. The applicant shall prove the use of a specific colour scheme or combination of colours has acquired a unique identity in relation to the goods or services. Also, the colour mark should have acquired a secondary meaning due to continuous and uninterrupted commercial use.
Examples of popular unconventional colour trademarks are:
- Paytm Money’s renowned colour scheme (having registered trademark number 3684177 in Class 99)
- Cadbury’s unique purple colour (Colour shade – purple Pantone 2685C, having registered trademark number 4582308 in Class 99)
There can be a trademark registration for a unique shape of goods or packaging of a product that is capable of graphical representation. Another important thing is that the shape of the trademark must be different to the shape of the actual product. The shape of the packaging of the product should be different from the actual product as the other manufacturers or traders of a similar product may lose value if the shape is similar.
A unique shape gives a special brand identity to a product. While proving its recognition at the Trademark Registry, the applicant should be able to show concrete evidence related to its distinctiveness. The final shape should be of 3D graphical representation and the same shall can also be additional evidence. The graphical representation shall consist of various angles to make it more perceptible and noticeable. Some examples of unconventional trademarks related to shape are –
- The popular curvy shape of Coca-Cola is one of the most popular unconventional trademarks in India. (having a registered trademark number 143652 in Class 32). Coca-Cola has multiple trademark registrations for unconventional trademarks.
- The world-famous Zippo Lighters enjoys trademark registration of a shape mark (having registered trademark number 714368 in Class 34 )
Scent/ Olfactory Trademarks
Unconventional trademarks such as smell/ scent trademarks on the other hand are the toughest to register as, one can state its proximity to a smell like the smell of baked bread or a fish, but the exact description is almost impossible to convey in a written form.
Prerequisites of trademark registration of unconventional marks like scent trademarks are –
- The unconventional trademark have to have a graphical representation;
- The scent trademark should be capable of differentiating between multiple products.
They also cannot be recorded like the sound trademarks making their graphical representation extremely difficult. The best method to graphically represent the scent marks is by submitting its chemical formulae and composition along with the standard information required to reproduce the exact scent mark. The following are the points that determine the registrability of a scent mark:
(a) the applicant should be the only person marketing the goods concerned;
(b) the fragrance should not be an inherent attribute or natural characteristic of the goods, but a feature supplied by the applicant;
(c) the applicant should have emphasized and promoted the scent mark in advertising, and
(d) the applicant should be able to prove that customers dealers and distributors of its products, recognize the applicant as the source of these goods.
The vital requirements related to trademark registration in India are difficult to fulfil as the Indian Trademarks Act, 1999 does not provide for a method of graphical representation for unconventional trademarks such as scent marks. Therefore, it is difficult to obtain successful trademark registration for such unconventional trademarks in India.
A motion mark is an animated moving logo/ hologram that is adopted to expedite the marketing reach and attract consumer attention. If the mark can be represented graphically and fulfils the criteria of trademark registration, then there is no issue in pursuing trademark registration. Motion marks can be presented by showing a series of movements by arranging the images in a sequence and creating an illusion of movement. As in a motion mark, the motion and the succession of images are pivotal. The Microsoft logo that flutters like a flag is an example of one such registered motion mark. Some examples of unconventional trademarks related to motion trademarks in India are as follows –
Indian Trademark Registry has granted a registered status for such unconventional trademarks in India to multiple popular brands.
The first motion mark in India was granted to Nokia Corporation. (having registered trademark number 1246341 in Class 99)
Another registered motion trademark in India is Toshiba’s movement trademark (having registered trademark number 4093005 in Class 99)
To summarize we can say that there is not much difference in the registrability requirements of conventional and non-conventional trademarks. The main concern is regarding their representation. It is not possible to define or graphically represent unconventional trademarks, however, if any unconventional trademark is distinctive and consumers can recognise them then the same can be registered as a trademark. New approaches and principles are required to be adopted to keep pace with the emergence of new types of signs and to ensure coherence with other fields of intellectual property protection like copyright and design.
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