July 2022

HOW ARE UNCONVENTIONAL TRADEMARKS REGISTERED IN INDIA?

How are Unconventional Trademarks registered in India?

Introduction

Unconventional Trademarks, also known as non-conventional or non-traditional trademarks, as the term implies, these trademarks meet the standard criteria for a trademark yet deviate from the typical conventions established by trademark legislation. These marks are not limited to words, symbols, names, devices, packaging, or color combinations, but also include three-dimensional marks, sound marks, motion marks, hologram marks, and slogans, as well as touch, smell, and taste marks. The Indian Trademark Act, 1999, defines a trademark 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 the shape of goods, their packaging, and combination of colors.”[1] The fact that the definition in the Act makes reference to the necessity of graphical representation and the capacity to distinguish between similar marks makes it abundantly evident that registration of unconventional trademarks is restricted.[2] On the other hand, the latter half of the definition discusses the potential for obtaining shape marks and color marks under the purview of the registration. This article will further discuss the process of registration and the legal stance of unconventional trademarks in India.

Shape Marks

The shape of the goods mark helps protect the shape of such products whose shape has reached a particular distinctiveness and popularity to such an extent that the general public may recognize the product because of its shape. The shape of the goods is the unconventional trademark that is the most widely recognized in India. This is due to the fact that the shape of goods is mentioned in the definition of a trademark, that it can also be represented graphically, and that it has the ability to differentiate the goods and services of one business from those of other businesses. However, the limitation on the use of shape marks can be found in subsection (3) of section 9 of the Trademarks Act of 1999. In addition to this, the fact that the ‘shape of good’ option is available when filling out an application for trademark (TM-A) registration in India demonstrates that shape marks can be registered in India by providing a two-dimensional graphical image of various angles of the product in order to make the trade dress comprehensible.

Color Marks

As discussed previously, the definition of a trademark under the Trademarks Act of 1999 allows a “combination of colors” to be registered as a trademark. In addition, even section 2(1) (m) includes “color combination” in the definition of “mark.” The Act does not prohibit the registration of color marks exclusively, nor does it permit the registration of a single color as a trademark. According to the proposed Trademarks Manual, a single-color trademark may be registered provided it is uncommon and distinctive in trade, is recognized by customers, and acts as a mark of origin for such products and goods. The TM-A application allows for the filing of a color trademark, although this option is generally subject to refusal under section 9(1)(a), which stipulates that trademarks that lack distinctiveness, are incapable of distinguishing the goods or services of one person from those of another, cannot be registered.[3]

Sound Marks

The sound marks are currently going through the same registration process as any other conventional mark in India. The ‘sound mark’ is one of the several types of trademarks that can be filed for using the TM-A application. The Trademark Rules, 2017 [Section 26 (1)(iii)(ii)] require that a sound mark that is seeking registration be presented in an MP3 format with its length not exceeding 30 seconds, in addition to a graphical representation of the particular mark that is comprised of musical notations.[4] The acceptability of a sound mark is contingent on whether or not the sound is already so extensively distinctive that a customer would link the sound with the goods or services of only one proprietor, or whether or not the sound is becoming increasingly broadly distinctive.

Motion Marks

The Trademark Act of 1999 makes no mention of a motion mark in its provisions. The draft manual for trademarks and the rules governing trademarks both remain mute on the subject. The ‘CONNECTING HANDS’ mark owned by Nokia was the first motion mark to be submitted for registration under registration No.1246341.[5] It is possible to obtain motion marks registered in India by simply giving a sequence of images that illustrate the step-by-step motion of the mark,[6]Nevertheless, a motion mark in its most literal sense cannot be registered in India.

Smell Marks

The majority of the time, India adhered to the standards established by the Europe Union, including the requirement of graphical representation. On the one hand, the requirement has been eliminated from the European Trademark law, making it easier for unconventional trademarks to obtain registration.[7] On the other hand, when it comes to smell and olfactory marks, there has yet been no significant change in India. The possibility of obtaining a smell mark registered by writing down the chemical formula for a smell still seems to have a low probability, and there has been no attempt made to do so up to this point in time.

Taste Marks

In the same vein as the olfactory marks, the likelihood of successfully registering a taste mark in India is quite low. This is due to the fact that putting a description of a taste into writing does not meet the requirements of graphical representation. It would contradict the objective of a trademark, which is to assist customers in determining the source of a good or service, if the description might be interpreted in a variety of ways by different customers.

Other Unconventional Marks

The texture/touch mark and the hologram mark are the two types of marks that receive the least amount of attention in Indian law. It is impossible to graphically represent the texture marks because they are based on the feeling that a person gets when touching a product, and hologram marks need to be viewed from specific angles in order to understand their distinctive character. As a result, they may not be easily depicted in trademark applications because it is difficult to see them from those angles. When it comes to these two marks, there is almost no data accessible, and the odds of getting registered for the same are close to nil in India at this point in time.

BY- EKTA DIXIT

JUNIOR ASSOCIATE

BASKARAN AND ASSOCIATES

[1] Trademarks Act, 1999

[2] Lakshmikumaran & Sridharan Attorneys, available at https://www.lakshmisri.com/insights/articles/unconventional-trademarks-a-roadmap-to-the-future/# [ Accessed on 2^nd June 2022]

[3] Indian Trademarks Act 1999, Sec 9(1)(a)

[4] Ibid

[5] Trademark Number 1246341 in class 99 dated 28/10/2003 by Nokia Corporation from Trade Marks Registry India

[6] Hardik Choudhary, ‘Are Motion Trade Marks Protected?’ ALG Offices India ( May 2021) https://www.algindia.com/article-is-a-motion-mark-protected-in-india [ Accessed on 26^th May 2022]

[7] Sikhar Sinha & Kunal Gopal, ‘Tracing The Jurisprudence Of Smell Marks As a Trademark’ (2017) HNLU Student Bar Journal Volume III, ( 61-69) https://hnlusbj.files.wordpress.com/2016/11/tracing-the-jurisprudence-of-smell-marks-as-trade-marks.pdf [ Accessed on 5^th May 2022]

TRADE SECRETS

A trade secret is confidential data or confidential information that relates to business and is generally kept as a secret by the owner. These are kind of information that pertains to certain commercial value and commercial gain to the owner[1]. In the case of Coco v AN Clark Engineers Ltd[2], it was held that the kind of information which will be protective must not be something in public property and public knowledge. For any information to qualify as a trade secret it must qualify the following elements

The information which is not known to the general public and is not readily accessible rather it must be restricted to a limited number of people.
Reasonable measures are taken by the owner to maintain the confidentiality of the information.
The information must be of scientific, technical, and related to useful arts or business.
The information must be associated with economic benefit to the owner’s right and provide the owner of information with commercial gain and this aspect becomes lost when the information is revealed.

The TRIPS agreement refers to the trade secret as ‘undisclosed information’. The trade secret can range from any technical, scientific, and financial information. Some examples of trade secrets can be formulas for drugs, chemicals, cosmetics, foods and industrial processes, and manufacturing techniques.

The formula of coca cola is the most famous example of a trade secret that is protected in a bank vault in Atlanta and is only accessible only when the board of the company passes a resolution. It remains known only to two employees of the company at the same time and they are not even allowed to fly in the same plane.

In the case of Bombay Dyeing & Manufacturing Co Ltd v Mehar Karan Singh[3], it was observed by the court that information such as formula, pattern, compilation, programme, device, method, technique, or process, which derives an independent economic value from not being known.

In today’s business world, there is a huge concern underlying protecting certain information confidential and for the same, there are efforts being made along with tremendous investments. Thus, the law guarantees enforcement of trade secrets with an object to make good the loss which is suffered by the owner as a result of unauthorized exploitation of trade secrets.

BY- AISHWARYA N.

4th YEAR, UPES LAW SCHOOL

INTERN AT BASKARAN AND ASSOCIATES LLP

[1] Sreenivasulu NS, Intellectual Property Rights, Second Revised and Enlarged Edn, 2011, Regal Publications, New Delhi, p 160

[2]Coco v AN Clark Engineers Ltd (1969) RPC 41.

[3] Bombay Dyeing & Manufacturing Co Ltd v Mehar Karan Singh 2010 (112) Bom LR 3759. 2010 (112) Bom LR 3759.

OBSCENITY REGULATIONS IN INDIAN TRADEMARK LAW

Law Relating to Obscenity in Trademarks

The Trade Marks Act, 1999

Section 9(2)(c) of the Trade Mark Act, 1999 prohibits the registration of marks that indicate or contain lewd or scandalous material. There shall be nothing incompatible with the moral standards of society. Considering cultural standards that prohibit the use, indication, or depiction of anything offensive or scandalous when selecting a mark is essential.

The trademark at issue in Ghazillian’s Trademark Application consisted of the two words “Tiny Penis” in class 25 for apparel, footwear, and headwear. The Registrar denied registration on the grounds that the mark violated prevailing moral standards.

The Draft Manual of Trade Marks

The Draft Manual of Trade Marks states the following:

The manual defines “Scandalous marks” as those marks which are “likely to offend the accepted principles of morality”.
A mark that is deemed prima facie to be obscene shall be refused.
What falls within this category of marks shall be marked which could by their very nature induce public disorder, or incite criminal or other offensive behavior
If a mark may be categorized as being merely “distasteful” then an objection u/s 9(2) (c) cannot be sustained. However, if the mark is deemed to be such that it would be deleterious to religious, family, or social values then an objection and subsequent refusal is probable.
The outrage which may result from the usage of the mark must emanate from an identifiable section of the general populace of the country.

A mark that is deemed vulgar or racially insensitive shall not be tolerated regardless of the target audience of the goods/services which bear the trademark. However, when it comes to prospective scandalous marks, the objection to the trademark may depend on the target audience. For e.g., a mark that may be deemed scandalous will certainly face objection if it is placed on goods/services aimed toward children. However, the same mark may not be objected to if the goods/services are aimed at adults. Objections should be raised against explicit full frontal nudes and offensive (scandalous) back views.

Examples of marks that may consider objectionable under this Section –

WHITE DOVE YOU DON’T NEED WINGS TO FLY[1]

This mark shall be contrary to public policy since the words “White Dove” are a euphemism for a drug and as such the use of this trademark would be construed as a promotion of drug use which is contrary to law and the public policy of the nation.

SNUFF MOVIES

The Mark contains terms that hint toward pornography and as such the usage of the mark will be contrary to the public policy of India.

TESTS OF OBSCENITY

Hicklin Test (superseded by contemporary standards test) – The Hicklin’s test in order to determine whether a work is obscene or not proposed the interpretation of the work by isolating the alleged obscene parts of the work, severing them from the work as a whole and interpreting them in an isolated manner and determining what effect the isolated passages may have on the weakest readers such as children. Hicklin’s Test does not give comprehensive results by failing to consider a holistic perspective.
Test of Contemporary Standards

The test of contemporary standards states that the work must be interpreted as a whole and that the alleged obscene parts are not severable. They must be read in the overall context of the work. The standard for judging obscenity shall be that of a reasonable, prudent member of society.

JUDICIAL PRONOUNCEMENTS

Samaresh Bose v. Amal Mitra[2] An impartial evaluation of any book, story, or article may lead a puritanical and conservative judge to declare it to be obscene. If another judge were to judge the same book objectively and from a different point of view, he or she might not find it to be obscene.
Aveek Sarkar v. State of West Bengal[3] A photograph of a nude or semi-naked woman cannot be deemed offensive in and of itself unless it has the potential to elicit strong emotions or make explicit sexual desires clear. Depending on the specific position and setting in which the nude or semi-naked lady is shown, the image should be suggestive of a depraved mentality and intended to arouse sexual excitement in those who are likely to view it. Only sex-related items that have a propensity to excite amorous thoughts can be considered obscene, although obscenity must be assessed from the perspective of the typical person by using current social norms.
S Rangarajan v. P Jagjivan Ram[4] The court ruled that the criteria to be used to evaluate a movie for obscenity should be from the perspective of a sensible, reasonable member of society rather than a hypersensitive human. Even if the issue involves movies, testing obscenity is the main component.

However, despite all these regulations and the vigilance of the Trade Mark Registry, certain questionable trademarks do slip through. Here is a recent example of the same:

The trademark which has been quoted is a recent one as can be ascertained by the date. The screenshot has been taken from the Trade Marks Journal. The trademark includes the word “bust” which is another word for breasts and conveniently includes a graphic image of women’s breasts in the device mark. Such a mark though may seem to be scandalous at first. However, it may as well be categorized as being merely distasteful if the remarks in the Draft Manual of Trade Marks are taken into consideration.

CONCLUSION

There is a grey area with respect to obscenity in the realm of trademark law. While there exist statutory provisions, their interpretation or application has still not been determined. There is a need for further academic research and expansion of judicial pronouncements in this area. A release of clarifications and guidelines by the CGPDTM may also help in this matter.

BY- UDAY ANAND

SYMBIOSIS LAW SCHOOL PUNE

2ND YEAR

[1] Office of Controller General Patents, Designs & Trade Marks, Ministry of Commerce & Industries, Government of India, The Draft Manual of Trade Marks Practice and Procedure.

[2] Samaresh Bose v. Amal Mitra, [1985 SCC (4) 289]

[3] Aveek Sarkar v. State of West Bengal, [2005 (2) CHN 694]

[4] S Rangarajan v. P Jagjivan Ram, (1989) 2 SCC 574

TATTOOS AND COPYRIGHT INFRINGEMENT

The art of tattooing traces back to the upper Paleolithic period in Europe and it can be said that tattoos nowadays have become more common since it is widely loved by people these days. But it is certain that pages of history would have never imagined that the tattoos would attract copyright infringement. Yes, you read it right. Certainly, tattoos do draw copyright infringement if the tattoo involves a copyrighted element. This article discusses on tattoos and their copyright effects by analyzing the case of Sedlik v. Von Drachenberg.

Now, let us quickly get into the facts of the case, a lighting technician tattooed a photo of legendary jazz musician Miles Davis onto his arms. That particular photo of Miles Davis was photographed by a Californian photographer Jeff Sedlik and further he copyrighted the image owing to its iconic representation of Miles Davis. The tattoo artist, in this case, is Katherine Von Drachenberg, who is a world-renowned celebrity tattoo artist and she is apparently the principal defendant in this case. It was alleged by Jeff Sedlik that Kat von D has committed a copyright infringement by reproducing the photograph of Miles Davis onto her client’s skin since it is an unauthorized derivative work and then displaying it on her social media handle with a motive to promote her business.

**The iconic photograph of Miles Davis captured by Sedlik**

Kat von D sought the plea that her tattoo work is a fair use of the copyrighted photograph. The court is tasked with determining two issues whether or not, Kat Von D employed copyrightable elements from Sedlik’s photograph in the creation of her tattoo, and if it is in affirmation, then whether or not her work is protected by the copyright law’s fair use doctrine.

On the question of substantial similarity, Kat von D argued that the protectable elements of the copyrighted photograph were not copied. The Central District of California Judge Dale Fischer left the question for the Jury to deliberate upon since the tattoo contained certain differences such as light, shading on Miles Davis face, the hairline on his head, and the background. On the question of fair use as well the issue is left to the Jury to decide upon.

It is certainly a complex issue to decide upon since it touches the boundaries of an individual’s fundamental rights to bodily integrity and personal expression. On the basis of lack of evidence, the summary judgment was granted in favor of Kat von D’s company. Thus, the intricacies involved in a tattoo of a copyrighted photograph can be well understood in this case.

AISHWARYA. N

3^rd year BA LLB (Hons)

UPES School of Law

WEIGHING FOOD FOR JUSTICE

INTRODUCTION

The study of measurements is known as metrology. The Legal Metrology Act of 2009 was enacted in order to enhance transparency between merchants and consumers by regulating uniformity in weights and measuring devices. In layman’s terms, if a consumer purchases 1 kilogram of rice, it should also weigh 1 kg at the shopkeeper’s end.

The preamble of the Legal Metrology Act says that it is an ‘An Act to establish and enforce standards of weights and measures, regulate trade and commerce in weights, measures and other goods which are sold or distributed by weight, measure or number and for matters connected therewith or incidental thereto.’

Legal metrology gives rules for how to keep measurements and estimating tools under control. Legal metrology also protects public safety, the environment, shoppers, and merchants, and it is important for fair trade.

How the Act restricts the fraudulent practices?

The Act restricts the shopkeepers from indulging in unfair trade practice and from committing any kind of fraud or misrepresentation. Under the Act, the Department offers licenses to manufacturers, dealers, and repairers of weights and measures. A licence is required to conduct business in weighing and measuring devices.

Furthermore, each weight and measure is made in accordance with the specifications and models established by the Government of India. The weights and measures used by traders are validated and stamped by an Inspector of the Legal Metrology Department, who then seals the stamp with a seal to ensure the stamp’s integrity and the quarter in which it is verified.

Lastly, in case of any violation is found by a person, he may file a complaint with the Controller of Legal Metrology, Assistant Controller of Legal Metrology, or Inspector of Legal Metrology of the District/Sub-Division in question. And if such a complaint is found to be true, the person giving short deliveries would be punishes with a fine, which may extend up to 10,000 rupees. The Act also punish any person who charges more than the given MRP of pre-packaged commodity with a fine of 2000 rupees.

Ekta Dixit

LLM (IPR & Tech Laws)

JINDAL GLOBAL Law School

EFFECTS OF REGISTRATION OF TRADEMARK

INTRODUCTION:

The owner of the trademark becomes entrusted with certain exclusive rights as a result of registration of the trademark. There are two different rights that are granted as a part of the exclusive rights that are, firstly, the right to exclusive use of the trademark and secondly is prohibiting the others from using the trademark.

The owner of the trademark is conferred with the following rights on registration of trademark

Right to exclusive use of the trademark
Right to Apply it on the goods and services
Right to transfer the rights on the mark
Right of Assigning (with or without goodwill)
Right to authorize other person to use the mark
Licensing

INFRINGEMENT:

Any unauthorized use of a registered trademark, exploitation of registered trademark and violation of rights conferred on the owner of trademark constitutes infringement. The section 29 (1) of the Trademarks Act, 1999 talks about infringement of registered trademarks. In the case of DM Entertainment v Baby Gift House[1]it was observed by the court that section 29 of the Trademarks Act, 1991 lays down the aspects of infringement of trademark. In order to determine whether there is an actual infringement, there are certain ingredient that are as below:

Use of a registered mark in whole
Taking out the essential features of a mark with additions or alterations
Use of a similar or identical mark to that of the registered trademark owner
Use of the mark in regular trade similar to that of the registered trademark owner
Use of the mark in respect of similar goods and services to that of the registered mark

In such cases of infringement, a suit can be filed by Proprietor/Owner, assignee, exclusive licensee, agent, representative and registered user before the appropriate forum not below the rank of District Court.

DETERMINATION OF INFRINGEMENT:

In the case of Durga Dutt Sharma v Narayan Pharmacy Laboratories[2], the court observed the test to determine infringement of marks. It held that firstly the similarity between the registered mark and alleged mark is to ascertained by following rules of comparison. The court also laid down the comparison postulate as given below

Comparison of the marks visually, phonetically and conceptually.
Comparison of the exact words, letters and numbers used in the mark.
Comparison of the business and goods of the parties.

DEFENCES IN CASE OF INFRINGEMENT:

The following are the defenses that are available against infringement. The section 30 to 35 of the Trademark Act, 1999 talks about the same.

Ineligibility of the plaintiff to institute the suit
Fair use of the mark (non-commercial purpose)
Generic mark (common in course of trade)
Prior use of the trademark
Concurrent registration of trademark
Using the trademark with the consent of the owner of the mark
No knowledge of registration by the proprietor

Thus, the registration of the trademark becomes quite important but certainly there are also remedies that are available against infringement of unregistered trade mark (passing off). But registration of trademark confers upon the owner of the trademark exclusive rights that are highly inevitable.

AISHWARYA. N

3^rd year BA LLB (Hons)

UPES School of Law

[1] DM Entertainment v Baby Gift House MANU/DE/2043/2010.

[2]Durga Dutt Sharma v Narayan Pharmacy Laboratories AIR 1965 SC 980

PAPARAZZI AND THEIR COPYRIGHTED PHOTOGRAPHS OF CELEBRITIES

It is well evident that there is a tug of war between the celebrity’s privacy and the paparazzies with their cameras. All of us must have come across the videos of paparazzies running behind celebrities chanting their name to take their pictures outside of gyms, restaurants, weddings, functions and where not. But have you ever wondered what would be legal effects of those photographs if the celebrity who is the subject of the photograph shares those pictures that were clicked by paparazzies? Well, this article analysis the same.

A photograph is an artistic work going by the definition of section 2(c)(i) of the of the Copyright Act, 1957 and going along with section 2(d)(iv) of the Copyright Act, 1957, author in relation to a photograph is the person taking the photograph. So, it is apparently clear that a photographer is the author of the artistic work but herein something that is noteworthy is that many of the commentators are advocating for co-ownership of the photographs between the photographer who is the author and the celebs who are the subjects of the photographs.

The co-ownership of a photograph was claimed in the case of Gigi Hadid who is a famous model, she was sued by an agency namely Xclusive lee for copy right infringement for posting a picture clicked by paparazzi on her social media without consent. Surprisingly, the court in this case accepted the claim of co-ownership but that is only on the basis that the status of the copyright application was pending. So, this brings us to understand the effect of photograph which not copyrighted.

On the other hand, there is an argument of invasion of privacy of the subjects, its is quite known that French president Emmanuel Macron sued paparazzi for the same. One such event is when a French magazine which published Duchess of Cambridge, Kate Middleton’s photographs without her consent was ordered to handover all of the digital copies of photograph and was even ordered to pay € 2000 as fine.

On the question of whether celebrity can use the defence of fair use, the case of Garware Plastics and Polyester v. Telelink and Ors[1] is to be analysed wherein the court brought in the element of commercial aspect behind sharing of a copyrighted photograph into the picture in consideration of fair use or fair dealing under section 52 of the Copyright Act, 1957. Hence, the court struck down fair use as a valid defence.

Hence, it can be concluded by saying that there is a need to consider the co-ownership of the subjects of the photographs since they play an inevitable part of the photograph but the Indian Copyright Act and the judicial precedents strict in this aspect.

AISHWARYA. N

3^rd year BA LLB (Hons)

UPES School of Law

[1] Garware Plastics and Polyester v. Telelink and Ors AIR 1989 Bom 331