A Perspective on Non-Conventional Trademarks and the Difficulties in Extending IP Protection to Them

Introduction

Conventional trademarks like words, symbols, logos, devices, and names have been commonly used globally. Non-conventional trademarks go beyond conventional trademarks in terms of their nature, characteristics, and potential. These include both visible marks (colour, shape, holograms, etc.) and non-visible marks (sound, smell, taste, etc).¹ Non-conventional trademarks are not yet accepted by most jurisdictions, yet they are very common in the contemporary market sphere.² The paper primarily focuses on smell, sound, and colour marks.

Trademarks are defined under Article 15 of the TRIPS Agreement³ as any sign or a combination of signs that can distinguish the goods and services from one another.⁴ Although there is no explicit mention, the ambit of the definition is wide enough to fit non-conventional trademarks. Thus, in order to classify as a non-conventional trademark, a mark must be — inherently distinct, indicate the origin, capable of being represented graphically and capable of distinguishing goods from one another.⁵

In order to get registered, these trademarks have to comply with statutory provisions that differ across different countries. Several countries, including the EU and India, have extended protection to non-conventional trademarks. In Seickmann v. Deutsches Patent-und Markenamt⁶, the European Court of Justice (ECJ) held that the graphical representation of the non-conventional trademarks must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”⁷. The wide recognition of this criteria and the prerequisite of graphical representation has created several problems in extending protection to non-conventional trademarks.

Problems/issues

Due to the prerequisites of graphical representation and distinctiveness, various jurisdictions have followed different approaches to deal with the registration of sound marks. Further, it is crucial to examine whether the consumers perceive it to be exclusive linked to the product.⁸ In Shield Mark BV v. Joost Kist⁹, the ECJ dealt with the graphical representation of both musical and non-musical sounds. While a detailed notation of musical sounds was enough, non-musical sounds were deemed to be far more complicated to be registered because a worded description of these would not be “precise”. Thus, the ECJ held that digital recordings along with graphical representation were required for the non-musical sounds due to the variation in the level of intelligibility.¹⁰

Further, due to the application of the Seickmann¹¹criteria, it is found that smell marks are theoretically registered, while they cannot be practically registered. In Seickmann case¹², a chemical formula of the smell and a description “balsamically fruity with a slight hint of cinnamon” was submitted.¹³ The ECJ held that although the description was intelligible and easily accessible, it was not object, precise and clear. Further, although the chemical formula was objective, it was not intelligible or self-contained.¹⁴ With this, it can be noted that the Seickmann¹⁵criteria can only fully be satisfied with marks like words or devices, and not by non-conventional trademarks.

Further, colour marks are most often only registrable if it is a “combination of colours.” There has often been a doubt about whether a colour mark is too abstract to be registered as a trademark. In n Libertel Groep BV v. Benelux-Merkenbureau¹⁶, the ECJ held that a colour is merely a property of a thing and cannot be constituted as a sign.¹⁷ The Court further emphasised on the existence of the “Pantone Code” that provides for different numerical codes to colour shades for identification. Thus, it came to a conclusion that in order to register a colour mark, a threefold test has to be complied with i.e. functionality, graphical representation, and distinctiveness.¹⁸

Further, in Société des Produits Nestle SA v. Cadbury¹⁹, there was an application to register the colour purpose as a trademark for Cadbury. The Court held that giving a trademark of a single colour, as opposed to a combination of colours, would lead to Cadbury acquiring a legal monopoly over purple coloured packaging and would give them an unfair advantage over other companies/brands.²⁰

To conclude, the procedural problems lie with the registration of non-conventional trademarks due to the lack of a uniform global practice. It is very often difficult to extend protection to the non-conventional trademarks due to the prerequisites of graphical representation, distinctiveness, and functionality (i.e. the product's function and purpose cannot be the same). Moreover, the open-ended nature of the definitions of the term “trademark” cause ambiguity at a global platform. In order to overcome this issue, there is a need for a more uniform and consistent policy which applies to all the countries under the WTO.

Indian position and conclusion

Fulfilling the obligations of the WTO and complying with the TRIPS Agreement, Section 2(1)(b) of the Trade Marks Act, 1999²¹ provides for a broad definition of trademarks that has given scope to non-conventional trademarks to be included and considered. There have been a lot of trademarks that are successfully registered in India. For instance, Yahoo Inc., Colgate, ICICI Bank, etc. have successfully registered their trademarks.²² However, India, as compared to other countries like the EU and the US, has lesser registrations of non-conventional trademarks due to the rigidity of Indian law, unlike the laws of other countries. Moreover, graphical representation, being the “sine qua non” of trademark registration in India, has caused major difficulties in the registration of the non-conventional trademarks.²³

Although the amended Trade Marks Rules²⁴ have permitted digitalised graphical representation, making it relatively easier for these marks to be registered²⁵, there are not enough technological developments that have been incorporated within these rules and other provisions. For instance, the Draft Manual²⁶, expressly adopting the Seickmann criteria²⁷, has emphasised that certain “marks” like the colour, sound, shape, and smell will need a “special consideration”.²⁸ Such provisions have created an ambiguity in Indian law. In order to robust its business and trade-related growth, Indian law and policymakers need to adapt to the latest developments across the world.