A trademark is an intellectual property which is used for distinguishing a product or a service. In India, Section 2(1)(zb) of the Indian Trademarks Act specifies that any mark which is distinctive i.e. capable of distinguishing goods and services of one undertaking from another, and capable of being represented graphically can be a trademark.
Generally, a trademark comprises a name, word, phrase, logo, symbol, design, image, or a combination of these elements, these are referred as traditional trademarks.[1] However, there are certain other ‘non-traditional’ trademarks which have gained prominence in recent times and include sound marks, odor marks, color marks, shapes and taste marks.
Traditionally, the trademarks were restricted to the graphical representation and therefore only a certain logos/ designs could be registered. But with the evolution of technology and the perception of the consumer mind sets, it was felt that the trademarks are lacking a certain crucial aspect. Increasingly all over the world, recognizing the potential contained therein, different combinations have been sought to be trademarked.[2] This includes a variety of things ranging from the Intel jingle to the shape of the Coca Cola bottle. The common feature of the non traditional trademarks is that they are not visually perceptible but yet they have been trademarked because of certain level of identification involved from the consumer point of view because market-savvy companies want to design and advertise their products in such a manner that it appeals to the consumer’s aesthetic sense.
Types of non conventional trademark
Smell Marks
The unique thing about olfactory or smell marks is that though they cannot be perceived visually yet they are considered as a valid trademark which was laid down in the case of Ralf Seickman v. German Patent Office[3], where the court held that the visual perception is not necessary for as far as the mark can be graphically represented. A trademark is registrable if the graphical representation of the mark is self-contained, durable, objective, intelligible and accessible. The requirement of a mark being perceived unambiguously by one and all thus becomes a mandatory requirement for registration, absence of which might lead to infringement.
Further, the European Court of Justice, expressed doubts if a given description of the smell was precise enough to indicate its distinctive character. This was also questioned in the case of R v John Lewis[4], where the court refused an application for ‘the smell, aroma or essence of cinnamon’ as a trademark for furniture as the verbal description of a smell was not enough to make a graphical representation. But the case would have been different if this had been done with reference to certain standards.
However, these trademarks registrations have been criticized on the ground that the sensory perceptions are subjective.
In US, however, in the case of the Re Celia Clarke[5], the Court recognized that smell marks can also be registered as trademarks when it accepted an application for registration of ‘a high impact, fresh floral fragrance reminiscent of Plumeria blossoms’ for sewing thread and embroidery yarn. Here the Court made a distinction between a fragrance that is used which is not an inherent attribute of the product and fragrances for products like perfumes, cologne etc. where the smell is an essential ingredient of the product. The argument was premised on scents being comparable to colors and hence being registrable.
But this also ensued a debate where it was contended that the judgement given by the court was in the ignorance and no knowledge about the osphresiology, the science of smells and scents as the scientific evidence suggests that the comparison between smell and color is misleading.[6] Temperature, humidity, and wind conditions can all strengthen or weaken the potency of a scent Further, scents have no independent identity, but rather must be associated with other memories to enable recall. Detection and recognition of scents depends on individual sensitivity, which is affected by ‘personal variables’ that include natural predispositions, such as physical and mental abilities, and state of an individual’s health.[7]
Neither TRIPS nor EC Directive, nor community trademark (CTM) address protection for scent marks. Some countries like Australia, France, Germany do not prevent such kind of registration, leaving the options open. However, in other jurisdictions like Mexico, South Korea, Brazil, Japan, India, etc. scent marks are neither registrable nor have the courts considered protection of scent marks under intellectual property rights regime.[8]
Sound Mark
While unique sounds do not require to be proved to have a secondary meaning, the same would not be true for commonplace sounds. The ECJ in the Shield Mark case[9] dealt with the registration of sound marks. The Court held that sound marks were registrable but the requirement of graphical representation along with distinctiveness of sound had to be met with. It further stated that written description of a sound, onomatopoeia and musical notes were not enough. In the given case, however, the Court did not lay down appropriate mode of representation for the sound of a cockcrow or any other sound, leaving it to a particular country to decide on its particular requirements. However, the Court indicated that whatever be the mode of representation, it should be clear, precise, self contained, easily accessible, intelligible, durable and objective.
For example, the exhaust roar of Harley Davidson’s motorcycles seems to be very characteristic, but the Japanese manufacturers, Suzuki, Kawasaki, Yamaha, and Honda, as well as American manufacturer, Polaris objected saying that other motorcycles can also make similar sounds. Further, it was not necessary that all motorcycles of Harley Davidson would produce a similar sound.[10]
The TRIPS Agreement, EC Directive and CTM are all silent on sound marks. However, More or less, INTA seems to have maintained the position that sound that is connected with a product or service may serve as a trademark and therefore, in appropriate circumstances, should be entitled to trademark recognition, protection and registration in the same way and subject to the same standards as any other trademark. Sounds can be an important element in branding and corporate identification. Sounds can help consumers distinguishing a particular service or product from another. Whether a specific sound has the ability to function as a trademark, is a question of fact in each case.[11]
Color Marks
Color marks which are combination of colors are recognized by the legislatures as they are distinct in nature[12] but the problem arises where a single color is being used as a trademark. This issue was addressed in the case of Libertal[13], where the court emphasized on the geographical representation of the color marks. Here, though the court rejected the single sample of a color but said that in certain circumstances it would accept the verbal description.
Further, the Court recognized existence of an internationally recognized color identification code like the Pantone Code which is a commercial system that designates specific shades numerically and categorizes over thousands of shades by unique codes. Further, since the Court made a requirement of distinctiveness for color marks, a need for prior use came into being. Thus, it becomes clear that in order for a color to be a trademark, the test is three fold functionality, source indication and distinctiveness.[14]
In order to determine whether the color has acquired secondary meaning following criteria were issued in the case of Qualitex Co v. Jacobson Products Co[15]:
(a) Extent of third party use;
(b) Any kind of sales and advertising of the product should direct the attention of the consumer towards the color of the product; and
(c) Consumer studies and surveys should indicate towards the importance of the color. Even for something like drug capsule colors, the trend seems to be to see not whether the color is functional in the utilitarian sense but rather whether the color has become a generic indication of a type of drug regardless of source.
Taste Marks
Taste Marks are treated similar to the smell marks. However, enforcement of flavor marks is functionality because they need to be available to all competitors. Examples would include mint toothpaste for adults and bubble gum toothpaste for kids. Flavors may also be found to be generic because they are used frequently by different manufacturers. Only an unusual flavor like melon or caramel or peanut butter added to a toothbrush or dental floss would be more likely to be protected than the same for cookies or bread.[16]
In Eli Lilly’s case[17] where a company tried to register artificial strawberry flavor as a gustatory trademark for pharmaceutical products.33 In that case, the Court implicitly recognized that taste marks could be registered as trademarks. However, particular trademark application was not allowed as it was found that most pharmaceutical companies added artificial flavors to their medicines to disguise the unpleasant taste and therefore, granting exclusive right to the appellant to use this ‘sign’ would unduly interfere with the freedom of appellant’s customers. The other important issue was that most customers would not recognize the strawberry taste as a trademark for a product but only regard it as a method of disguising the unpleasant taste of the medicine.
Shape
In US the shape of the product can be regarded as a trademark if it has acquired secondary meaning and is not functional in nature.[18] One of the most popular shape trademarks of all times is that of the Coca-cola bottle. The unique contour bottle, familiar to consumers everywhere, was granted registration as a trademark.
Similarly, in the case of Walmart Stores[19], the Supreme Court distinguished between product design and packaging and held that the former can never be inherently distinctive. Thus, in order to register a shape as a trademark, it has to considered if the shape has acquired distinctiveness or if it is functional in nature.
In UK Section 3(2) of the act lays down certain guidelines regarding the registration of shape as a trademark
- which results from the nature of the goods themselves,
- of goods which is necessary to obtain a technical result, or
- which gives substantial value to the goods.[20]
Indian Position on Non Traditional Trademark
Section 2(1) (m) of the Trademarks Act defines mark to be an inclusive definition consisting of shapes and packaging of goods or a combination of colors. According to Rule 25(12) (b) of the Trademark Rules, 2002, the application for registration of a trademark for goods and services has to be such that it can be depicted graphically. Further, Rule 28 makes it clear that the trademark should be such that it can be represented on paper. Rule 30 further makes a specification to the effect that the graphical representation made should be durable and satisfactory. In addition to this, what needs to be remembered is that Rule 29(3) makes it explicit that three-dimensional marks can also be registered and so can a combination of colors. Section 9(3) makes exceptions to registrability of shapes as a trademark if it results from the nature of goods, or to obtain a technical result or where the shape gives substantial value to the goods.
In the light of these provisions, it can be stated that the concept of the non traditional trademarks can be included with the only exception of graphical representation as an essential.
The Indian courts have mostly maintained their silence on this subject only with the exception of William Grant & Sons Ltd v. Mc Dowell & Co Ltd.[21]This case dealt with an action of passing off and for the first time recognized importance of trade dress vis-à-vis a trans-border reputation. With regard to shapes, the settled position of law is that trade dress needs to be distinct and must have acquired secondary significance. The Indian Courts have also addressed the issue of use of a single color and has categorically stated that a single color cannot be inherently distinctive.
Recently, Cadbuary tried to register the purple color but it was not accepted[22] yet the red and white color of the Colgate was accepted as a trademark because it had acquired secondary meaning. [23]
Thus, it can be concluded that the apart from the necessity of graphical representation, this area has been essentially left unexplored. It is very important to explore more about this as the technology is always changing and the law should be updated to keep in pace with these changes.
Edited by Sakshi Raje
References:
[1] Kerly D M, Law of Trade Names and Trademarks ( Sweet and Maxwell, London), 2005, p.12.
[2] David Vaver, Intellectual Property: The State of the Art, 116 L.Q. REV. 621, 625 (2000).
[3] Ralf Sieckmann v German’s Patent Office, Case No. C-273/00.
[4] [2001] RPC 28.
[5] USPQ 2d 1238(1990) (TTAB).
[6] The complexity of molecular structures and chemical bonds, and the physics that define their associations, dictate that the energy transfer plots for various scents are at the same time random and discrete. As a result, there exists no spectrum among scents which allows for relational comparative analyses of either individual scents or series of scents. Simply put, each scent is discretely unique, and only random vibrational similarities between different molecule types offer the potential for comparative analysis.’ Churovich Douglas, Scents, sense or cents? Something stinks in the Lanham Act, St Louis University Pubic Law Review, 20 (2001) 293.
[7] Id.
[8] Susan Binsy, Recent developments in non-traditional trademarks, http://www.manupatra.com (21 November 2006).
[9] Shield Mark BV v Joost Kist h o d n Memex, Case No. C- 283/01.
[10] Honda AG v Harley-Davidson Inc, 108 F 3d 1393 (Fed Cir 1997); Harley-Davidson Inc v William Morris D/B/A Bill’s Custom Cycles, 19 F 3d 142 (3d Cir 1994); Harley-Davidson Inc v Selectra International Designs, 861 F Supp 754, 754 (E D Wis 1994).
[11] Amicus Letter of the INTA in Shield Mark BV v J Kist, Trademark Reporter, 91 (2001) 1269.
[12] Smith Kline and French Laboratories Ltd v Sterling Winthrop Group, (1975)2 All E R 578.
[13] Case No. C-104/01.
[14] Londe Anne Gilson La, Cinnamon burns, marching ducks and cherry-scented racecar exhausts: Protecting nontraditional trademarks, Trademark Reporter, 95 (2005) 773.
[15] 514 US 149.
[16] Londe Anne Gilson La, Cinnamon burns, marching ducks and cherry-scented race car exhausts: Protecting non traditional trademarks, Trademark Reporter, 95 (2005) 773.
[17] ICSID Case No. UNCT/14/2, 16 March 2017
[18] Wal-Mart Stores Inc v Samara Bros Inc, 529 US 205, 2130214 (2000).
[19] Id.
[20] Anand Ruth, Look-alikes under the new UK Trademarks Act, Trademark Reporter, 86 (1996) 142.
[21] 1997 (17) PTC 134.
[22] http://www.trademarkregistry.cadbury/application (12 November 2006).
[23] These traditional theories have also been overruled by the Indian Court in the case of Colgate Palmolive Co v Mr Patel, MANU/DE/1641/2005.
