An unconventional trademark is a type of trademark which does not fall into the category of conventional or traditional trademarks. An unconventional trademark is mainly in the form of sound marks, smell marks, shape marks or color marks.
The intellectual property regime has seen immense growth with the evolution of technology. With growing technology, business houses have been able to cater to a larger public. Their products are now being sold and advertised in a myriad of ways. With this and increased choice of consumers of choosing from a number of products, it has become essential to safeguard these brands’ selling power. Intellectual property rights are those rights that provide protection to a person’s creative thought and innovation. They are critical as they provide a way for businesses to keep a hold of their customer base and capitalize on their inventions. One of the important areas of intellectual property protection is the protection of trademarks.
In India, The Trade Marks Act, 1999 regulates and provides for the protection of trademarks. Section 2(1) (zb) of the Act gives the definition of what a trademark is. It provides for specific criteria to be fulfilled for a mark to qualify as a trademark. It lays down that any mark which is capable of being represented graphically and can be used to distinguish the goods and services of one person from the goods and services of another can qualify as a trademark. It also lays down that this mark can also be in the form of a shape of the actual product, packaging, a combination of colours, etc. Section 2(1)(m) lays down that a mark is inclusive of a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. With developments in the field, a new type of trademarks has emerged which are different from the traditional trademarks as given above. These trademarks have been termed as non-traditional or unconventional trademarks. This article aims to carry out a discussion on the unconventional trademarks and how they have been provided protection under both Indian and foreign laws, particularly the United States of America. The article also discusses the challenges which are generally faced by a jurisdiction while registering such trademarks.
WHAT ARE UNCONVENTIONAL TRADEMARKS?
An unconventional trademark can be defined as any mark which does not fall under the definition of traditional marks. Whereas the traditional marks can be in the form of a device, label, signature, etc., these unconventional marks are in the form of sound marks, shape marks, smell marks, touch marks, or colour marks. The motive of it is that the mark should be able to distinguish the products of one person from that of another. Though the term “unconventional” or “non-traditional” are not explicitly mentioned in the law, however, a plain reading of the provisions implies that the definition of marks has been defined in a broad manner, which is not exhaustive but indicative. This means that any mark which is capable of distinguishing goods and services of one from another and can be graphically depicted can qualify as a trademark under the definition. While viewing from a global perspective, unconventional trademarks can be broadly categorized in the following–
- Smell or olfactory marks
- Sound Marks
- Single or combination of colour marks
- Three dimensional Marks
- Taste marks
- Touch Marks
- Motion Marks
INDIAN LAWS WITH RESPECT TO UNCONVENTIONAL TRADEMARKS
The ultimate motive of providing protection to a trademark is to protect the importance of a commodity in the minds of the consumer. It is to preserve the uniqueness and perception of the product in the minds of the general public. However, it is not necessary that these marks can only be perceived by vision. It is in this regard unconventional trademarks came to be recognized in India with the coming in of the Trademark Rules, 2017. The first-ever sound trademark which was registered in India was the three-note “Yahoo” yodeling human voice. The ICICI jingle was also provided protection under the law. The rules have been provided for the recognition of sound and colour marks, provided that they can be presented graphically. Thus, in the case of sound marks, rule 26(5) of the 2017 rules provides that sound marks are capable of being registered as trademarks and in order to do so, a sound clip along with a musical notation has to be submitted, thus making it graphically depicted. In case of three-dimensional trademarks, rule 26(3) of the 2017 rules provides that the trademark is eligible for protection by reproducing the 3-D figure in a 2-D graphic or by giving a photographic representation. Section 26(2) and 26(4) provide protection of colour marks and shape marks respectively. An example of the colour trademark is Colgate’s registration of a combination of red and white as a trademark. Thus, in short, the criteria to be fulfilled under the Indian Law for registration of unconventional trademarks is twofold. Firstly, the mark should be distinctive and thus should be able to distinguish the products of one from another and secondly, that they should be capable of being represented graphically.
US LAW WITH RESPECT TO UNCONVENTIONAL TRADEMARK
In the United States of America, the criteria of visual representation as required under the Indian Law is not a pre-condition for registration of non-traditional marks. The registration of trademarks is governed by the Lanham Act of 1946. The act provides the definition of a trademark but does not include the requirement of visual representation as a prerequisite. Thus, trademarks such as smell marks or touch marks can be easily protected under US law. Hence, any mark that does not fall under the category of traditional trademark and cannot be represented in a visual form can also be protected. The only requirement as per the law is a detailed verbal description of the mark. The law under the Lanham Act does not explicitly mention that the unconventional marks fall under its ambit; however, it has been said that since it does not also expressly exclude such trademarks, therefore, they are eligible for protection under the current law. Thus, marks like scent marks can be registered under section 2(f) of the Lanham Act of 1946. The first-ever olfactory or scent mark registered was the plumeria blossom scented embroidery thread in 1990 by a Californian Business Company, OSEWEZ. Though the law in the United States makes it earlier for such trademarks to apply for protection, it has its share of challenges.
IMPEDIMENTS IN LAW
Under the Indian Law, it is not very difficult to register a trademark when it comes to traditional trademarks. However, in the case of nontraditional trademarks, a little difficulty is faced by the applicants. The laws have now provided for the registration of sound and colour marks, but provisions for the registration and protection of smell or touch marks have not been provided yet. This is because the laws lay down a criteria that any mark which is capable of being represented graphically can only apply for protection under the law. Such a standard is a hindrance for businesses to tap an area that can improve their market outreach. A provision can be made for smell or taste marks that the chemical composition of the same be provided in order to fulfill the criterion of graphical representation. However, this itself calls for a lot of challenges. A slight difference in the chemical formula in case of smell or taste marks or a slight variation in the musical notation of the sound mark can cause trouble in registering the marks.
Countries like the United States of America do not put graphical representation as a pre-condition for registration of unconventional marks, however, it is evident that not many have taken the opportunity of these provisions. This is because of the inherent challenges with registering a scent or touch mark. One of the challenges is the subjectivity involved while dealing with such marks. The motive of these marks is to create a distinction between two products, however, when it comes to individual perceptions of taste or scent, it is influenced by a number of phenomena such as temperature, humidity, etc. These variables can affect the potency of any smell.Other challenges of registering such marks are an individual’s perception of a scent, which also differs because of age and genetics. Thus, the subjectivity of individual perception is a challenge while registering such marks as any confusion that diminishes the point of difference between two products would defeat the law’s ultimate motive, which is to acknowledge the distinctness of the goods or services.
Unconventional trademarks are a newer concept in the field of intellectual property protection; however, it can be seen that it has become essential for businesses to reap the benefit of these unconventional trademarks in order to protect and improve their brand value. These trademarks in the form of smell, colour, touch, sound marks are nothing but a way by which they can stand out to their competitors. These marks are a way for firms to think out of the box and leave an indelible mark on the consumers’ minds. Till a few years ago, businesses and individuals have focused on traditional trademarks in order to improve their impression on the customer base. However, with time, these firms have come to realize the potential of unconventional marks and the impact they can create in order to improve their standing in the market. Thus, it is now time that these unconventional trademarks are given as much importance as that given to traditional trademarks because these are new and are capable of adding significant value to the businesses with the enhanced power of recollection they effectuate. Laws should also be receptive to changes and should provide for the protection of these marks and reduce any such hindrances in their registration.
 The Trademarks Act, 1999, s. 2(1)(zb).
 Supra 1, s. 2(1)(m).
 Lisa P. Lukose, “Non-Traditional Trademarks: A Critique” 57 Journal of the Indian Law Institute 197 (2015).
 Trade Marks Rules, 2017.
 Lubna Kably, “Jingles and chimes can make trademark noise” The Times of India, Mar. 27, 2017 https://timesofindia.indiatimes.com/business/india-business/jingles-and-chimes-can-make-trademark-noise/articleshow/57845491.cms (Last Visited on December 27, 2020).
 Supra 5, s. 26(3).
 Harsimran Kalra, “Unconventional Trademarks: the emergent need for a change” India Law Journal, 2007
https://www.indialawjournal.org/archives/volume4/issue_1/article_by_harsimran.html (Last Visited on December 27, 2020).
 The Lanham Act, 1946, s. 2(f).
 In Re Clark, 17 U.S.P.Q.2d 1238 (1990).
 Franco Galbo, “Making Sense of the Nonsensical: A look at Scent Trademarks and their Complexities”, Dec.21, 2017. Available at-
https://www.ipwatchdog.com/2017/12/21/scent-trademarks-complexities/id=91071/ (Last Visited on December 27, 2020).
Rajendra Misra, “Unconventional Trademarks-Trademarking the Taj!” 11 International In-House Counsel Journal 1 (2018).
BY- Swena Prashant | West Bengal National University of Juridical Sciences, Kolkata