The Case of Unconventional Trade Marks — Does the Trade Marks Act, 1999 Need Reform?

Introduction

An interesting aspect of history first introducing the concept of trade marks records back to the blacksmiths of the Roman Empire making swords and in 1266, a distinctive mark was used by all bakers under the reign of Henry III. In ancient India, as long as 3000 years ago, craftsmen would engrave their signatures on their artistic creations before sending them to Iran. Trade marks, a part of intellectual property, can be an insignia, phrase, word, or symbol that gives a specific brand its own identity and facilitates the public at large to differentiate it from other products of its competitors.

With dynamic technology and ideas, come unconventional and unique concepts. Ever wondered how Yahoo’s yodel sound or even the colour combination of Colgate toothpaste has been trademarked in India? That is the beauty of unconventional trade marks.

In India, trade marks come under the Trade Marks Act, 1999¹. The Trade Marks Act, 1940², the first statutory law on trade marks in the country, was replaced by the Trade and Merchandise Marks Act, 1958³, to the current Trade Marks Act, 1999. The Amendment in 2010⁴ enabled the country to be a part of the Madrid Protocol. India complies with TRIPS (Trade-Related Aspects of Intellectual Property Rights), the international legal agreement between all the members of the World Trade Organisation (WTO). Moreover, the Trade Marks Rules, 2017⁵ was a welcome change to the range of trade marks that could be registered. The 1999 Act on trade marks does not have provisions for unconventional trade marks, however, the Trade Marks Rules, 2017 has been a welcome move for the same.

Unconventional trade marks

Trade marks that are different from the usual trade marks, namely, logos, words, phrases, and symbols are unconventional trade marks. Unique concepts of shape, smell, fluid, motion, and colour come into the picture. Because of their unusual nature, they are comparatively difficult to register, however, if the unique trade mark has been associated with the brand and is a product of original creativity, there are higher chances for it to be accepted by the Registry. Non-conventional trade marks may be visible signs (e.g. colours, shapes, motion, holograms), or non-visible signs (e.g. sounds, scents, tastes, textures).

Unconventional trade marks have gained significant prominence over the past few years with changing technology and branding. There is a need to have your own unique identity as a brand that the consumers at large can differentiate from a variety of similar products in the market. An unconventional aspect of a trade mark separates it from the rest, however goodwill and creative input put into the making of the trade mark are considered too.

Definition

Section 2(1)(m) of the Trade Marks Act, 1999 defines a “mark” which includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination while Section 2(1)(zb) defines “trade mark” as “a mark capable of being 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”.⁶

The 1999 Amendment of the Act saw addition of three new terms — “colour combination”, “shape” and “packaging”. The Act gives provisions only on combination of colours, motion, shape of goods and sound marks, however, unconventional concepts of smell, texture and taste are considered in some foreign countries.

Types of unconventional trade marks

Shape

The Delhi High Court in Carlsberg Breweries v. Som Distilleries and Breweries Ltd.⁷ held that design of a Carlsberg beer bottle, namely, the shape, pull caps and labels was not a novel concept and there is a distinction in both the designs. Carlsberg alleged that Som was imitating its distinctive trade mark registered bottle design and trade dress to sell Hunter beer. While in Zippo Mfg. Co. v. Anil Moolchandani⁸, the respondents were restricted from selling counterfeit lighters under the Zippo mark and 3D shapes similar to that of Zippo’s lighter. The Delhi High Court ruled in favour of Zippo⁹ stating such use constituted infringement of the plaintiff’s shape mark.

A benchmark in shape marks in India was created by the Indian Hotels Company Limited (IHCL) when their trade mark application for exterior design of the Taj Mahal Palace Hotel, Mumbai was registered back in 2017. This move meant no one can use the image of the magnificent Taj structure for commercial purposes without a prior licence from IHCL.

Section 9(3)¹⁰ of the Act lists down three restraints on shape marks, namely, the shape of goods which results from the nature of goods themselves; the shape of goods which is necessary to obtain a technical result and the shape of goods which gives substantial value to the goods shall not be registered. This ensures there is no monopoly with the shape of the goods giving the owner an advantage over competitors.

While Section 26(4)(i)¹¹ of the 2017 Rules cite that “Where an application for the registration of a trade mark consists of shape of goods or its packaging, the reproduction furnished shall consist of at least five different views of the trade mark and a description by word of the trade mark.”

Fluid

We all love the creative ads by Amul with their Amul girl on poster boards and newspaper advertisements. Every time, Amul never fails to capture current social and influential happenings around the globe with witty and hilarious puns. From India winning the cricket match to using “Modi jeet” as a catch phrase when the Prime Minister’s election results were announced, it is an example of not just a great marketing strategy but also fluid trade marks.

Marks that are usually based on an originally existing popular mark are called fluid marks. The nature of these kinds of marks are flexible and hence, they are fluid in nature. They are mostly used to garner attention and boost the influence of the brand. They are designed in a way that a consumer easily affiliates the fluid trade mark with the original trade mark of the brand and mostly well-known brands opt for it.

Open your Google search tab on any day of historical, cultural, or social significance and there will be a Google doodle encapsulating the spirit through their creative graphic design spelling “Google”. Right from highlighting the cultural elements of India during Independence Day to Audi’s recent advertisement showcasing four rings at a distance highlighting social distancing and the Starbucks mermaid with a mask during COVID-19.

On the legal forefront, the Act does not define fluid marks thereby leaving it to the understanding of common law and interpretation of the courts.

Sound

The Trade Marks Act, 1999 does not define sound marks and the registration of the same. The Trade Marks Rules, 2017 were a welcome move providing for the sound marks to be submitted in an MP3 format within a 30-second length duration and a graphical representation of the sound, according to Rule 26(5) of the 2017 Rules. Consequently, the amendment has increased the registration of sound marks in the country. US Rule 37 CFR 2.52 of the United States provides similar provisions of uploading the MP3 format. The US, Rule 37 CFR 2.52 states:

(e) Sound, scent, and non-visual marks. — An applicant is not required to submit a drawing if the mark consists only of a sound, a scent, or other completely non-visual matter. For these types of marks, the applicant must submit a detailed description of the mark.¹²

It is to be noted that “distinctiveness” is an essential factor, the ability of the consumers at large to recognise and differentiate a sound associated with a brand or service from the rest is crucial. We tend to associate the four-note bell sound with Britannia Industries and the popular iPhone’s ringtone with Apple. In India, Yahoo’s yodel, a man yodelling “Yahoo” was the first sound mark registered by the Trade Marks Registry.

We see mostly jingles and catchphrases associated with the brand being registered. Some of the well-known sound marks registered are tabulated below:

When the famous motor vehicle company, Harley-Davidson¹³ tried to register their distinctive exhaust sound of their motorcycles in the United States, it drew objection from nine competitors stating the sound was generic in nature. Failing to register their sound, Harley-Davidson withdrew the application.

Colour

Let us understand the situation of colour trade marks in India. In India, a single colour has not been granted protection. However, Rule 26(2) of the Trade Marks Rules, 2017 provides for registration of colour mark. However, it is limited only to a combination of colours. In this aspect, the red and yellow combination of McDonald’s has been protected. Therefore, scope of a single colour being protected is difficult.

Is a single colour inherently unique to be trademarked by a particular brand? Well, only in exceptional circumstances, when the colour is associated with the brand by the consumers at large. Usually, there are lesser chances a brand will protect a colour owing to how consumers do not associate colours with brands. Under Section 9(1)(a) of the Act, a single colour will be ruled out because it is not inherently distinctive.

In UK, one has to make use of colour identification systems like Pantone, Focoltone’s relevant colour code and a written description of the colour (e.g. dark pink) to file for a single colour.

Cadbury¹⁴ fought a long battle against Nestle in trying to protect their shape of purple, Pantone 2685C on their chocolate wrappers. The chocolate brand stated that the distinctive purple colour has been in use since 1914 as an ode to Queen Victoria’s favourite colour. In 2012, The UK High Court ruled in favour of Cadbury, stating the distinctive shade of purple is associated by the public at large with the well-known chocolate brand and hence, a registered colour trade mark could be granted. Nestle challenged this decision in 2013 and won on grounds that a colour trade mark if granted to Cadbury would create monopoly and an unfair advantage amongst other competitors.

The first colour trade mark ever registered by a company was the pink of Owens Corning¹⁵ for its fibreglass in 1987. It even went on to have Pink Panther as its mascot, considering the distinctive similar pink shade of both the fibreglass and the animated character.

An unusual case has been Christian Louboutin S.A. v. Yves Saint Laurent America Holding Inc.¹⁶, where the red colour of the Louboutin’s soles has been granted protection. We had to see the court ruling in favour of Louboutin which stated a colour which has acquired an association with a brand ought to be protected.

The jewellery brand, Tiffany & Company has its own colour trade mark in the shade robin’s egg. The turquoise shade was selected by Charles Lewis Tiffany in 1845 for the brand’s “Blue Book” catalogue and presently stands registered along with a custom Pantone PMS number, 1837, the same year Tiffany & Company came into existence. Registered colour trade marks are not available to the public at large and cannot be printed on the Pantone matching system colour shade books.

Mattel’s Barbie dolls have been a household favourite in almost all families around the globe. It is interesting to know that the bright pink shade, obviously named Barbie Pink (Pantone 219C) has been trademarked in hundreds of categories, ranging from toys, “Breakfast with Barbie” cereal, UNO card games, shampoos, deodorants, and even movies. When the famous pop music video for “Barbie Girl” by Aqua released, it faced opposition from Mattel. Not only did MCA Records use the registered shade of pink on their single cover, the song and its lyrics caused damage to the reputation of the toy brand. In MattelInc. v. MCA RecordsInc.¹⁷, the music production labelled claimed the music video was just a parody, thereby protected by the US First Amendment. The US Court dismissed the claim that the music video misled the consumers. Hence, the case was dismissed on “The parties need to chill” end note by Judge.

Something as common as a Post-it note colour, a shade of canary yellow is also protected by 3M¹⁸, the stationery brand. When Microsoft computers started displaying digital sticky notes of the same colour, 3M went on to file a suit in the US District Court, stating the software company’s Post-it notes are so similar to 3M’s notes, that it ought to be confused by the consumers.

Motion

We all vividly remember the lion roaring in a golden circle designed from microfilm stock while watching Tom and Jerry¹⁹ or even classic films like Gone with the Wind (1939), The Wizard of Oz (1939) and James Bond movies. Even UTV Motion Pictures’ silhouette of an Indian woman drawing tricolours of blue, green, and red paint before your film starts is a great example of motion marks.

However, it is unfortunate the Trade Marks Act, 1999 does not define motion marks. The need for graphical representation rules out a motion mark. Until 2017, it was impossible to register a motion mark. However, within the Trade Marks Rules, 2017, Rule 2(1)(k) states a trade mark can be represented graphically through a set of pictures, continuous snapshots of the moving mark and descriptions.

United States of America has been open to motion marks. In fact, one of the oldest moving marks registered in 1996 in the US is Columbia Pictures Lady with the torch at the beginning of their film. The two requirements for a motion trade mark are functionality and distinctiveness. The opening car door movement of a Lamborghini has been registered by the luxury car manufacturer.

In India, corporations like Nokia, Toshiba have been successful in registering their Connecting Hands in 2003 (Application No. 1246341) and red, blue abstract motion mark in 2019 (Application No. 4093005) respectively. However, Nokia’s Connecting Hands was registered as a device mark in India.

Smell/Olfactory

There is nothing as memorable as smell, aroma or flavours which takes you back to a certain thing, person, food, and cuisine. Knowing the importance of this, brands have tried to register scent/olfactory marks.

In India, the Act does not mention smell/olfactory trade marks. The definition does not rule out olfactory marks however graphical representation is difficult in case of such marks. The Trade Marks Registry released a Draft Manual on Trade Marks in 2009, a guide to the practice of registration of trade marks in India. It shed vis-à-vis to trade marks of “fragranced goods” which can be registered only if it can be graphically represented and the ability to be differentiated from other products.

The Draft Manual reads, “Consumers of such fragranced goods are unlikely to attribute the origin of the products to a single trader based on the fragrance. Whatever may be the case, for purposes of registration as a trade mark, unless the mark is ‘graphically represented’ it will not be considered to constitute as a trade mark.”

In countries like USA, UK, there have been instances of olfactory trade marks being registered. Scent of floral rose fragrance used in vehicle tyres by Sumitomo Rubber Company was the first olfactory mark to be registered in the United Kingdom. The first in the US dates back to 1990, on similar lines of a peculiar floral fragrance of plumeria blossoms²⁰ by Osewez used in embroidery yarn and stitching thread. An association by the consumers of the smell of plumeria blossoms with the yarn and this peculiar feature being highlighted in the advertisements were considered before granting registration.

The Lanham Act, 1946²¹ in the United States provides for effective registration of olfactory marks as they are eligible to be granted registration under Section 2(f) of the Act on two factors — non-functionality and distinctive features.

A search of the US Patent and Trademark Office lists some of the olfactory marks — Floral musk scent in Verizon Stores (Registration No. 4618936), Grendene’s bubble gum scented sandals (Registration No. 4754435), Japanese pharmaceutical company, Hisamitsu’s minty pain relief patches (Registration No. 3589348) among many others.

On 31-10-1994, three applications for olfactory trade marks were received by the UK Trade Mark Registrar – Chanel’s No. 5 perfume²², Sumitomo Rubber Company’s²³ rose-scented tyres, Unicorn Products’²⁴ scent of bitter beer applied to flight of darts. Only Chanel’s iconic perfume was rejected.

A scent of ylang-ylang, neroli, bergamot, lemon with middle notes of rose, jasmine, iris, orris root and lily of the valley with a base of musk, moss, vanilla, patchouli, amber, civet, and sandalwood. An amalgamation makes for the iconic Chanel No. 5 perfume from the house of Chanel, Coco Chanel’s mastermind. Considering the sheer popularity, having Marilyn Monroe and Keira Knightley as its brand ambassadors, it was believed the perfume scent would be granted registration. However, the UK Court refused the olfactory mark, to a fashion aficionado’s dismay. The smell of the perfume was good itself and therefore, rejected a registration.

A tennis ball manufacturing company from Holland, Venootschap onder Firma Senta Aromatic Marketing’s²⁵ tennis balls smell like freshly cut grass and the use of the olfactory mark is solely reserved by the manufacturer. The jurisdiction of European Union granted protection to this mark on the grounds that smell can act a source of identification in the scenario where the smell is widely recognised and appropriate smell for a tennis ball.

In the European Court of Justice (ECJ), in Sieckmann v. Deutsches Patent-und Markenamt²⁶, a scent of cinnamon was applied to be protected in Germany. Every effort went into registering the olfactory mark from providing the chemical formula to submitting a sample of the balsamically fruity hint of cinnamon in a jar and even a detailed written description of the scent. The ECJ ruled out all efforts to register the scent citing lack of graphical representation. The Court laid down the essential features of graphical representation to be “clear, precise, durable, objective, intelligible, easily accessible and self-contained”, also known as the Sieckmann seven-fold test for graphical representation. After this landmark judgment²⁷ in the ambit of unconventional trade marks, registration for olfactory trade marks almost seems impossible.

Taste

Taste is an essential feature of edible products. We describe our favourite chocolate as “sweet” while a lemon squeeze is totally “sour”. Let us discuss the position of taste marks in India and other foreign jurisdictions.

In India, there is no provision for a taste/flavour trade mark. A taste can be described in written form, but the graphical representation hinders the possibility of a registration. It cannot be classified unlike colour codes such as Pantone or set of musical arrangement notations. Doctrine of functionality also rules out taste marks since the functional feature of the product is taste.

New York pizzas with a crispy edge, thin crust and cheese are known to be the best pizzas in the world. But could the way a pizza taste could be protected? The US Court in N.Y. Pizzeria Inc. v. Syal²⁸ refuted the plaintiff’s claim for infringement of its pizza taste as “half baked”. N.Y. Pizzeria went on to file a suit against Ravinder Syal, its former employee for allegedly stealing the Pizzeria’s trade secrets and manuals by selling pizzas that tasted exactly like that of the plaintiff. The Court observed that the particular taste did not distinguish the source of the product and the protection for the functional feature ruled out N.Y. Pizzeria’s claim.

An application to register orange flavour by N.V. Organon, In re²⁹ for its anti-depressant drug, again due to the doctrine of functionality. It was argued as to how consumers can associate an orange flavour with a medical drug. Furthermore, an interesting observation on gustatory marks was made. How can taste function as a trade mark if the consumers have to purchase the product before accessing the flavour? It would act as a poor indicator to the source product.

Similar to India, a taste mark has not been registered in the United States yet. As discussed above, there have been failed attempts to register various kinds of taste marks.

Conclusion: Is reform needed?

The year 1999 seems like forever ago. With the advent of technology, social media and globalisation, the way consumers identify a product, associate it with a brand has changed. Though the Trade Marks Rules, 2017 provided relevant provisions only to sound marks, there are some aspects in the Trade Marks Act, 1999 which need a reform. Businesses can protect their distinct fragrance, a delicious mix of vegetables, spices and ingredients which result in a unique taste, jingles and much more. Having discussed features of shape, fluid, sound, colour, motion, smell, and taste as trade marks, in today’s age, some reforms need to be considered for ushering in registration of unconventional trade marks. It is very important to consider the goodwill, distinctiveness, public image, and association at large before granting a register to any kind of unconventional mark to avoid random smells, taste, colours to be registered. This would only create confusion and defeat the very purpose of trade marks.

Graphical representation

The need for graphical representation has been elaborated in the Trade Marks Rules, 2017, and it is essential to represent the trade mark for goods in paper format. Due to this, smell, sound, and taste marks face greater difficulty in getting a registration. Shape and combination of colour marks have it easier to represent their visual nature. After having discussed various marks in detail, non-conventional trade marks are very capable of identifying to the original source product or services, although it is difficult to demonstrate a graphical representation. With the advent of technology, applications for various kinds of untraditional marks will flourish and the strict requirement of graphical representation should be amended. Other intellectual property jurisdictions like the European Union Intellectual Property Office (EUIPO) have amended their regulation in October 2017 replacing the graphical representation criteria and leaving it to the competent legal authorities and the consumers at large to establish the grounds for trade mark protection.

Provision for motion marks

Neither the Act nor the Rules define a motion mark. However, through interpretation, under Rule 2(1)(k) of the Rules, representation of the moving form elements of the mark should be represented on paper. It is to be noted that only a few motion marks are registered in India. A provision to represent a motion mark in digital formats by the way of MP4 files should be introduced. Introducing a way to submit the representation of moving elements with the sound is required for an accurate representation and it can be concluded that the Act is passe.

Provision for providing a submission of the sample of the product

In the case of marks which are non-visual in nature like fragrance and taste, but very much a brand identifier, there is no provision to provide a sample specimen in a physical form. This reform can be very difficult to achieve but is relevant to the times businesses operate today. Looking at other jurisdictions like the United States, where the Trademark Manual of Examining Procedure (TMEP)³⁰ released in July 2021 under the purview of the United States Patent and Trademark Office (USPTO) provides for the option to mail the specimen³¹ of the mark to be registered in taste and smell marks, provided it matches the description provided for the same under the application.