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Non-Conventional Trademarks And The Difficulties In Extending IP Protection To Them

The field of IPR is known for asserting ownership rights to a person on an innovative idea/product created by their mind in a similar manner as any other physical property gets. One of the most significant area which has broadened its scope since the era of globalisation is termed as Trademark. Trademarks are the marks/symbols which makes the product distinctive from others and determines the products origin. Traditionally to get register under trademarks these were confined to words/devices/logos/designs etc in other words which could be graphically and visually perceptible, are recognised as Conventional Trademarks.

However with technological advances and since 1990s with adoption of TRIPS agreement has led to new trends in trademark fields as a result of which the definitions of Trademark in India[1] and foreign legislation[2] has grown extremely wide due to the standard legal definition laid down for Trademarks. [3] Consequently, marketplace has persuaded companies and individual to produce marks which are more sensory and non-visual in nature and have been labelled as non-conventional.

It includes marks based upon sounds, smell/scents, textures, tastes, shapes, colours, holograms, moving images etc. To differentiate their products these trademark focuses more on communicative ability feature. As it encourages new ways of branding there have been an increase in application for their registration. However due to legal implications of not having separate registration procedure and being beyond the domain of conventional trademark, they have become the most contemporaneous issue of advanced trademark system.

Practically, their representation can successfully serve the essence of trademarks however to be eligible for protection and registration there are several complexities which makes the registration process rigorous for these marks.

First and foremost from where the problem arouses is due to lack of explicit provision for Non-Conventional trademarks, as they fall within the ambit of trademarks traditionally they need to then fulfil the criteria of graphical representability. This requirement is the biggest impediment since it is recognised as sine-qua-non for trademark registrations in many different jurisdictions[4] i.e. the mark should be capable of being embodied in a paper form.[5] But on contrary Non-Conventional trademarks are non-visual (smell, touch, sound) which vary from person to person and becomes problematic to represent graphically.

The second problem is related to proving distinctive criteria. To prove distinctiveness of Non-Conventional trademark it takes longer and becomes costly to register. Though with visible-signs like shapes, colours still consumers can uniformly identify however with respect to non-visible signs sound/taste/smell marks due to personal variables the perception and recognition amongst human may vary leading to confusion amongst customers. Consequently, non-fulfilment of these essential criteria generates problem for Non Conventional Trademarks to get IP protection.

Moreover, because of unusual nature i.e. non-visual and sensory, they become more subjective to function as trademarks for which these trademarks faces a lot of criticism and have not reached high acceptance in all legal systems, some of which as judicially interpreted by different countries are listed below:

The ECJ in Ralf Sieckmann v. German Patent Office[6] case for odour-trademark registration though it held visual representation is not required for graphical representation however the smell-mark was rejected as description of odour did not satisfy graphical-representation criteria i.e. self-contained, durable, objective, intelligible, accessible. Similarly registration was rejected in other cases[7] as representation of smell by drawing/chemical formula/verbal is not clear and storing is not possible due to ability to change/deplete with temperature.

For sound marks registration the European Court of Justice in Shield Mark BV v Joost Kist gave a clear judgement that due to graphical representation being unsatisfied for sound mark it cannot be registered as by means of written language description not every person could read written music and written notes while demonstrating pitch, and normally would not demonstrate the tone as well thus causing ambiguity.[8]

For colour trademark problematic issue was how to differentiate between different shades of colour. Allowing single colour would lead to monopolisation and unjustified competition.[9] Further Indian Courts have recently addressed this issue and held single colour cannot be inherently distinctive and self-sufficient.[10] However with specific colour codes uncertainties can be resolved.

The other most common contention made for not extending IP protection to non-conventional-trademark used is that their inclusion are not only making undesirable restriction in free IP resources and but there can be possibility of overlapping protection.[11]

Lately, certain types of Non-Conventional Trademarks have been widely accepted and gained recognition by various countries however it still lacks formal identification for instance in India definition to non-conventional mark is made illustrative.[12] Thus due to no uniform and standard regulation for their examination, registration across globe inconsistencies still exist in some countries owing to the necessity of graphical representation it obstruct proprietors selling goods in international markets under Non-Conventional Trademarks.[13]

Furthermore the acceptance of different forms of non-conventional trademarks by different countries is another issue at hand as clear contradiction can be viewed between standards laid down for the same by countries. For instance for countries like Australia, Europe hold stringent approach by depending upon Sieckmann-test and US adopting a liberal approach due to Qualitex Co. v. Jacobson Prods [14] ruling. Additionally, in countries like U.S.A, Australia Nokia ringtone got registered as sound-trademark conversely Hong Kong rejected it.[15]

Thus, to avoid such conflicts I would strongly recommend a need for formal consolidation of law for non-conventional trademarks to ensure uniformity and. consistency. In my opinion these trademarks are the most positive phenomena of IPR and there is no difference between conventional and non-conventional trademarks, they not only perform essential functions of trademark like identifying source/origin, generating quality etc but also provide additional benefits to other segment of consumers where visual perception becomes restricted i.e. the visually impaired, illiterate and in low literacy areas who are unable to understand conventional marks.

Therefore, a non-visual nature cannot be an impediment in-fact it has more potential than conventional marks and facing few obstructions due to present legislation should not be viewed as discouragement for their use as distinctiveness is more of practical problem than legal impediment[16] and contention for undesirable restriction is also unreasonable as McCarthy remarked until properties have exhausted all avenues of IPR, it cannot be supposed free.[17] Non-Conventional trademarks can be an important breakthrough for development of global trade hence it is desirable to incorporate standard rules for their protection and registration like inherent distinctiveness can be made sole criteria or stating visual perception requirement should not be sine-qua-non for these trademarks etc.

  1. Trade Marks Act, 1999 defines Trademark under Section 2(1)(zb) means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those others and may include shape of goods, their packaging and combination of colours. In fact, Mark has also been defined in the act in section 2(1) (m), in an inclusive fashion
  2. In US, Lanham Act definition for trademark consist of non-traditional marks. It includes any word, name, symbol, or device, or any combination thereof and Supreme court in the case Qualitex Co. v. Jacobson Prods. Co have clarified this position.
  3. Article 15 of TRIPS Agreement defines Trademark as any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings. This signifies that for registration purpose member states may or may not require trademark to be visually perceptible.
  4. Article 2 of the European Directive and UK Trademarks Act,1994 and UK court in the case SwizzelsMatlow Ltd Application have also clarified it to be a necessary criteria.
  5. Trademark Rules, 2002 : Rule 2(k)1
  6. Ralf Sieckmann v. German Patent Office (C- 273/00) (2003) E.T.M.R 37
  7. Eden vs Ohim (Case T-305/04) ; R v. John Lewis (2001)EWCA Civ 1529
  8. Shield Mark BV v Joost Kist (Case No. C- 283/01)
  9. Shilpi Jain, Protection and Enforcement of Colour Marks
  10. G.M Pens International v. Cello Plastic Products (2005)
  11. For instance in case of shape trademarks with patents and design and in case of motion trademarks with copyright.
  12. With inclusion of the words shape of goods, packaging and combination of colours under the section 2(1)(zb) of Trade Marks Act, 1999 and as per Rule 26(5) of trademark rules, 2017 sound marks can also be registered
  13. Lisa Lukose, 'Non-Traditional Trademarks: A Critique' (2015) Journal of the Indian Law Institute, Vol. 57
  14. American Supreme Court in Qualitex Co. v. Jacobson Prods 514 U.S. 159, 162 (1995) held almost anything at all that is capable of carrying meaning can function as a trademark
  16. As Section 9(1) of trademark Act though it mandates that with lack of distinctiveness it is an absolute ground. for refusing registration. But, the said section proviso also virtually obliterates its effect by stating that for obtaining registration the requirement of distinctiveness is done away if mark has attained distinctiveness through use, in that case the trademark cane be registered. Thus requirement can be met even if it is not inherently distinctive.
  17. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (II) (4th edn)

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