India: Non-Conventional Trademarks In India

Traditionally, the subject matter of trademarks includes words, logos, symbols or a combination thereof. The Indian Trademarks Act, 1999 (the 'Act') defines trademarks as "a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours."

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.

Graphical representation of the marks

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^[1], requires the trademark to be represented in a 'paper form'.

Pantone/color

A unique and distinctive trademark with catchy colours is likely to stay on the mind of the consumers. However, whether a specific color exclusively is eligible has been a contentious area of dispute. The Act does not specifically provide for the registration of a single color, although it does not expressly exclude the notion. In order to secure a single color trademark registration, one must furnish to the Registrar the evidence of acquired distinctiveness in India, prior to the date of filing of the single color trademark.  In practice, a combination of colors stands a better chance of registration, provided that it is capable of distinguishing the goods of one trader from those of another.

The Indian Registry and Courts follow the color depletion theory, which is based on two arguments- First, there is a concern that with the limited number of colors, to grant exclusive rights to colors would sooner or later deplete the available stock and, thus, be anticompetitive. Second, if a color alone was protectable, trademark infringement suits would lead to lengthy litigations over 'shades' of color which would slow down the trademark registration process. However, the theory only bars the registration of the seven basic colours but not any shade thereof.

Sound

The function of a sound trademark is to uniquely identify the commercial origin of products/ services by means of an audio clip. In general, applications in the form of musical notations describing the sound meet these requirements, whereas onomatopoeic descriptions do not. This means that musical notes that can be represented in the form of musical notations are acceptable whereas noises like a dog barking which cannot be represented by a musical notation but has to be described onomatopoeically or through a sonogram cannot be eligible for a trademark.

The Trademark Registry in India has granted registration to ICICI Bank Ltd for its sound mark by registering the very notes that form the jingle. ICICI Bank is the first Indian entity to obtain sound mark registration. The first sound mark to be granted registration by the Trademark Registry was the Yahoo! Yodel^[2]. In a milestone trade mark registration for India as well as Yahoo, the country's trade marks registry in 2008, granted registration to India's first "sound mark" to Sunnyvale, California-based internet firm Yahoo Inc.'s three-note Yahoo yodel. Subsequently, Allianz is reported to have successfully registered its sound mark in India and the Trademarks Registry has also recently accepted Intel's application for registration of its sound mark.

Internationally, the most celebrated case in this regard is that of Metro Goldwyn Mayer (MGM) Corporation had applied for the registration of a sound, that of a Lion roaring, by submitting a sonogram for the "Lion's roar". The application has been refused in the EU. Interestingly, the same trademark has been granted in the US. 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 the source or event with that sound then the sound may be eligible for trademark registration.

Smell

In comparison to sound trademarks and color trademarks, the numbers of smell or scent or olfactory trademarks registered are significantly less. One of the reasons could be due its inability of graphic representation.

The "graphical representation" of scents thus far has solely been verbal. A verbal description of smell can be subjective and cannot really provide a full-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. However the European Court of Justice has been of the view that a chemical formula does not represent the smell of the chemical itself and that few people would be able to get a sense of the smell based on its chemical formula. Further, a sample of the scent provided as evidence of the scent in question may degenerate over a period of time as the chemical composition may deteriorate.

There have been very few smell trademarks registered till date. The smell of-freshly cut grass for tennis balls was registered as a European Trademark. An example of a registered smell trademark in the US is of a "vanilla" scent or fragrance when applied to office supplies.

The registration of non-traditional trademarks is still at its infancy stage in India. Since the need of trademarks is at its zenith in today's times, the scope of non-conventional trademarks is yet to be tapped. Various aspects such as holograms, motion/gesture trademarks etc. need to be streamlined in order to cope up with the current realities.