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

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[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]