Introduction:
In the dynamic world of intellectual property, trademarks have long been the cornerstones of brand identity. Traditionally, these marks have been visual in nature - logos, symbols, or words that distinguish one company's goods or services from another. However, as markets evolve and consumer experiences become more multisensory, a new category of trademarks has emerged: non-conventional trademarks. This article delves into the fascinating realm of non-conventional trademarks in India, exploring their legal framework, the challenges they face, and their potential future in one of the world's fastest-growing economies.
Non-conventional trademarks are becoming more
common in today's world of business and economic competition.
As more companies enter the global marketplace the need to stand
out from the competition grows daily and thus the search for new
commercial strategies. This search for individuality has brought
into existence 'unconventional trademarks'- identifying
signs that are not merely logo or symbols. They can be anything
from noises, colours, formation, smells, and feelings on the skin.
In India similar to other countries, protection of such marks has
marked a shift in the development of trademark laws.
Legal Framework in India
The regulation of trademarks and their protection in India is
provided with the support of the Trade Marks Act, 1999 and Trade Marks Rules,
2017. Although these legislations have been enacted mainly for the
conventional trademarks, they have exhibited a package of
flexibility regarding to the notion of non-conventional
marks.
The Trade Marks Act defines a trademark as Section 2(1) (zb) which
states a mark that can be graphically represented and which is
capable of distinguishing the goods or services of one person from
those of others. This definition in its broad nature is capable of
including non-conventional marks.
The Trades Marks Rules, 2017 introduced the needed clarity to the
registration process of non-conventional marks. Recording of sound
marks is particularly outlined by Rule 26(5) hence, the sound mark
must be in MP3 format and should not exceed 30 seconds; moreover,
the graphical representation of the notations of the sound mark is
also necessary.
Categories of Non-Conventional Trade Marks in
India
1. Sound Marks:
Sound marks have become quite popular in India. As for sound
marks, it is noteworthy that the Nokia tune was registered back in
2004, which made it one of the pioneers of such marks'
registration in the country. Since then, several other sound marks
have been successfully registered and these include the telecom
tune or the corporate tune of ICICI Bank and the four-note bell
sound of Britannia Industries.
- Colour Marks:
Single colour claims are typically difficult to register due to the principle of functionality and that an applicant has to gain separate characteristics. But certain colours in relation to specific combinations can be legally protected so that none other but a particular company can use it. Thus, for example, the use of yellow and black in Caterpillar Inc. 's construction equipment has been acknowledged as trademark.
3. Shape Marks:
Now, the appearance of goods or their packaging may be protected by the trademark law if the shape is in a way to give it a recognizable character and if at the same time the character is not functional. Some of the most famous are the contour of the Coke's bottle and the triangle on the package of Toblerone chocolate.
Smell Marks:
However, smell marks, although not definitively prohibited by the Indian law, remain fairly unknown. The problem is then one of presenting scent in graphic form and of substantiating the assertion that it differs from scent in other products.
Problems in Registering Non-Conventional Trade Marks
Despite the legal provisions, registering non-conventional trademarks in India comes with its own set of challenges:
1. Graphical Representation:
The tradition has it that the trademark must be capable of being represented graphically which is one of the most fundamental hallmarks. This is easier said for visual marks, but is a major concern for sound, smell, and taste marks. The Indian Trade Marks Registry has been quite accommodating on allowing the applicants to file the marks in any other form such as a 'spectrum of sound' in the case of Sound Marks; but other 'senses' marks remain a contentious issue.
2. Distinctiveness:
Non-conventional marks should thus be such that they are capable of identifying the goods or services of one undertaking from those of others. The likelihood of proving distinctiveness may famously be difficult, especially for colour marks or any audible sound. In most cases, applicants demonstrate proof that distinctiveness has been manifested through continuous use and consumer recognition.
3. Functionality Doctrine:
The following doctrine bars the registration of marks that perform an informative function rather than being used to indicate the source of goods. For example, it is especially suitable for shape marks if the shape is an element that defines the using or purpose of the good.
- Subjectivity in Examination:
The analysis of non-conventional marks is usually less objective than the analysis of the traditional marks. The specific scenario can cause discrepancies regarding registration process and escalating the chances of filing oppositions.
5. Enforcement Challenges:
However, despite the registration, there are cases whereby enforcing the rights in non-conventional marks poses a challenge. Establishing infringement of a sound or smell mark to give but a hint, could be much tougher compared to infringement of a typical visual mark.
Case Studies and the Landmark Decisions to advocate for change and the anti-discriminatory practice.
Several cases have shaped the landscape of non-conventional trademarks in India:
- Yahoo! Inc. & Ors. v. Akash Arora & Anr.
(1999)1 :
Althouǵh not directly concerning non-conventional marks, this case set the base for the recognition of the "well-known" trademark in India which formed the basis for further interpretations of trademark protection.
2. Zippo Manufacturing Company v. Anil Moolchandani (2013)2:
This case was over the design of the well-known Zippo lighter and its particular form. This case includes the Delhi High Court recognizing the distinctiveness of the shape and granted the application which paved way for shape marks in India.
3. Christian Louboutin SAS and others v Abubaker & others. (2018)3:
This case related to the trade dress claim of Louboutin, who sought to protect the use of red sole. The Delhi High Court responded negatively to single colour marks at the outset but the case has promoted very relevant debates regarding the registrability of colour as a trademark.
Future Opportunities and Developing Patterns
The landscape of non-conventional trademarks in India is evolving rapidly, with several trends emerging:
1. Increased Recognition:
This means that as business get more conscious with the possibilities of non-conventional marks, more marks of this nature are likely to be sought.
2. Technological Advancements:
This is specifically with regards to the representation and analysis of non-visual marks, whether new technology can present answers to the recognised issues.
3. Harmonization with Global Standards:
With India progressing further in liberalization and opening up of its economy there could be gradual efforts to standardize Indian non-conventional approaches to trademarks with the global norms. - Expansion to New Sensory Marks:
Whereas the sound and shape marks have received recent attention, there are possibilities that other sensory marks such as the texture or taste would be more popular in the future.
5. Development of Specialized Jurisprudence:
In this way, the law pertaining to non-conventional marks is still evolving and one would presume that as increasing numbers of cases are litigated extraordinary marks a progressively more specialized regime of law will come into existence.
Conclusion:
The use of non-conventional trademarks in India could be said to
be the next step in the evolution of the IPR environment in the
country. Since it happens in the context of the contemporary
marketplace, the change marks a shift in the nature of brand and
consumer relations. However, aspects related to representation,
distinctiveness and enforcement are still problematic, but the
legal framework of India has proved to be dynamic.
Thus, it can be noted that as the concept of brand identification
is further developed and explored by various companies and as
technologies for creating sensory brand experiences emerge
non-traditional trademarks are becoming more significant. It will
be for the coming years to decide how significantly these different
types of sui generis IP protection will develop in India.
It will therefore be important to keep abreast with such
developments for brand owners, legal practitioners as well as
policymakers. It is evident that non-conventional trademarks'
voyage has only started in the Indian context – this is an
area of tremendous potentiality and legal dynamism that is yet to
unfold and offer brand icons the flexibility and novelty of
creating the differentiations that they may so seek in one of the
most active and promising commercial arenas across the
international landscape.
- References:
- Trade Marks Act, 1999 (India)
- Trade Marks Rules, 2017 (India)
- Latha, R., & Mishra, A. (2021). "Non-Conventional Trademarks in India: A Critical Analysis." Journal of Intellectual Property Rights, 26(3), 181-189.
- Gangjee, D. (2017). "Non-Conventional Trademarks in India." In I. Calboli & M. Senftleben (Eds.), The Protection of Non-Traditional Trademarks: Critical Perspectives (pp. 68-89). Oxford University Press.
- Khurana, S., & Gill, K. (2020). "Sound Marks: The New Age Branding." Indian Journal of Law and Technology, 15(1), 45-62.
- Yahoo! Inc. v. Akash Arora & Anr., 1999 PTC 201 (Del)
- Zippo Manufacturing Company v. Anil Moolchandani, CS(OS) No.1355/2006
- Christian Louboutin SAS v. Abubaker & Ors., 2018 SCC OnLine Del 12069
- NON-CONVENTIONAL TRADE MARKS IN INDIA Dev Gangjee - http://docs.manupatra.in/newsline/articles/Upload/BB1047DA-5CCF-41BC-9C82-487F5DC570D3.pdf
- https://sksinghassociates.com/faqs
- THE FIVE SENSES AND NON-TRADITIONAL TRADEMARKS By 2018 By Sanya Kapoor- https://www.academia.edu/101967227/THE_FIVE_SENSES_AND_NON_TRADITIONAL_TRADEMARKS_By?hb-sb-sw=105680254
- https://www.mondaq.com/india/intellectual-property/788896/trademarks-comparative-guide
Footnotes
1. MANU/DE/0120/1999
2. MANU/DE/4130/2011
3. MANU/DE/1983/2018
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.