Section 2(1)(zb) of the Trademarks Act, 1999 (hereinafter referred to as the Act) defines trademarks 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 shape of goods, their packaging and combination of colours”.
In addition to this definition under the Indian law which although being broad in scope is not very explanatory, a look at the internationally accepted definition of the trademark under TRIPS is useful to gain a better understanding of the term. Article 15 of the 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, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks”.
The objective of protecting any sign or combination of signs through Trademark law is primarily to recognize the capacity of that sign to distinguish products of one person from those of the others. Therefore, this distinguishing capability is considered to be the sine qua non for the protection of any words, signs, or combination thereof under trademark law. Apart from words, signs, letters, and such other similar things which have been consistently used by people as their trademark to distinguish their products, a new category of trademarks has gained popularity in recent years. These marks are referred to as unconventional or non-traditional trademarks, due to the fact that they haven’t been used for this purpose until now. Examples would include, sound marks, shape marks, scent marks, taste marks, etc.
In this article, the author will analyse the extent of protection available to such unconventional trademarks in India limiting my focus to shape marks and sound marks. The author will look at the manner in which the law has evolved in India through time and the impediments which still exist with respect to protecting such marks under Indian law.
Shape & sound marks protected in India- an Overview
Non-traditional trademarks such as sound marks or shape marks came into vogue due to the desire of the companies to distinguish their products from those of others through different ways of promoting a distinct brand image while appealing to the aesthetic sense of the public.
Shape marks and sound marks are some of the prominent unconventional trademarks which received protection under Indian trademark law after coming to the fore in the trademark law jurisprudence across the world.
The first sound mark to receive protection under Indian trademark law was Yahoo’s yodel, which was granted to Sunnyvale as a sound mark by the Delhi branch of the Trademark Registry. The registration of this sound mark started the ball rolling with respect to sound marks in India. This case was soon followed by the Allianz Aktiengesellschaft, a German Company (Allianz) which was also successful in registering its trademark in India. In 2011, ICICI became the first Indian entity to obtain a sound mark for its corporate jingle granted by the Trademark Registry, Delhi. With the protection granted to this sound mark, a new chapter started under the trademark jurisprudence in India with respect to unconventional trademarks, although till now sound marks have not been examined before the Courts.
Apart from sound marks, shape marks have also been successful in gaining protection under the Indian trademark law. The jurisprudence of shape marks started in India with the protection given to Zippo for its lighters’ rectangular shape. In Zippo Manufacturing Company v. Anil Moolchandani, the Court granted the plaintiffs’ (Zippo) plea for permanent injunction restraining the defendants from using the wordmark and the 3-dimensional shape of the lighter manufactured by the plaintiffs. The Court stated that the use of the 3-dimensional shape of the plaintiff’s lighter by the defendant may cause confusion in the minds of the public and make them believe that they were buying the products of the plaintiff causing damage to the goodwill and reputation of the plaintiff. In this decision, the Court referred to Section 2 (1)(zb) of the Act to state that as per the definition of trademark given thereunder “the shape of goods is now statutorily recognized as being a constituent element of trademark.” They further opined,“a manufacturer who markets a product may assert the distinctive nature of the goods sold in terms of the unique shape through which the goods are offered for sale”.
Another case where the Court looked into the protection of shape marks is Gorbatschow Wodka KG v. John Distilleries Ltd. Here the plaintiff claimed that the shape of its vodka bottles was “distinctive and formed an intrinsic part of its goodwill and reputation”. In light of this, the plaintiff had brought an action of passing off among other things against the defendant since they had adopted an allegedly similar bottle shape causing dilution of goodwill and reputation of the plaintiff. While granting an injunction to the plaintiff, the Court observed, “Under the Trademarks Act, 1999, the shape of the goods is now statutorily recognized as being a constituent element of a trademark…. Parliament has therefore statutorily recognized the shape in which goods are marketed, their packaging, and combination of colors for part of what is described as the trade dress. A manufacturer who markets a product may assert the distinctive nature of the goods sold in terms of the unique shape through which the goods are offered for sale.”
Similarly, the analysis undertaken under the Zippo case of various earlier decisions was later also relied on in Apollo Tyres Ltd. v. Pioneer Trading Corporation. This case was brought about by the plaintiff against the defendants for the infringement of their tyres’ tread patterns, which were a prominent and distinguishing feature of their tyres used to set them apart from other manufacturers. While determining whether the tread patterns can be made a ground for passing off of trademarks (against the defendant’s argument that they were merely functional), the Court stated thus, “…. However, it does not mean that the unique pattern of the tread adopted by a particular manufacturer which constitutes its unique design and shape would not be entitled to protection as a design- if it is registered and also as a trademark- of the tread pattern has been exploited as a trademark i.e. a source identifier. What is functional in a tyre are the “treads” and not the “tread pattern.”
The analysis undertaken in this section shows the various instances wherein unconventional trademarks such as shape marks and sound marks have been recognized in India by the Trademarks registry or the Courts.
The next section will look into the gradual evolution of Indian law and how it has slowly become more welcoming towards unconventional trademarks.
How has the criterion for protection evolved?
In order to fully appreciate the way the law of trademarks has evolved in India to garner better protection to the unconventional trademarks, it is necessary to look at certain definitions given under the Act as well as the Trademarks Rules of 2017 which replaced the Trademarks Rules of 2002. These laws are to be analysed along with the Draft Manual for Trademark Practice and Procedure.
As mentioned at the beginning of this article the definition of the trademark under Section 2(1)(zb) of the Act gives a broad definition of a trademark which includes the “shape of goods, their packaging, and combination of colours.” Furthermore, Section 2(m) defines marks as, “includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;”
Therefore, in order to qualify for registration under Indian law, as per the above-mentioned definitions, two main requirements which need to be fulfilled are:
- The capability of being graphically represented; and
- The capability of distinguishing goods or services of one person from another.
These requirements were further substantiated by the Trademark Rules, 2002. Rule 25 under the Trademark Rules, 2002 stated under clause 12 that “an application for registration of a trademark, for goods or services, shall be able to depict the graphical representation of the trademark.” Additionally, a reading of Rule 28 shows that the application for registration of a trademark was supposed to be on paper and Rule 30 states that such representation shall be “durable and satisfactory.” Furthermore, Rule 29(3) talks about the procedure to be followed with respect to three-dimensional marks.
Although the definitions given under section 2 of the Act include the mention of the shape of goods, there is no further acknowledgment of any other unconventional trademarks. Furthermore, since the procedure and the specific steps to be undertaken to bring about the protection for unconventional marks as laid down in the Trademarks Rules 2002 only referred to the combination of colors and three-dimensional shapes, there was a lot of speculation regarding the protection available to unconventional marks under Indian trademark law. Some of these concerns were clarified through case laws as discussed above when questions regarding shape marks for instance came before the courts. However, enough jurisprudence has not developed till now to clarify all the ambiguity surrounding the protection of unconventional marks in India.
Some steps have been taken in this direction with the notification of the Trademark Rules, 2017 which replaced the 2002 Rules. Under these rules sound marks as a category of trademarks has been mentioned for the first time. Sound marks find mention under Rule 26 (Representation of trademarks) clause 5 which talks about application requirements of sound trademarks wherein reproduction of the sound is required to be submitted in the MP3 format not exceeding 30 seconds length accompanied with a graphical representation of its notations.
Furthermore, with respect to sound marks and their registration, the Draft Manual of Trademarks Practice and Procedure also lays down certain clarifications. Under Chapter II, (Examination of Application filed for Registration of Trademarks) it is stated that the acceptability of a sound mark would depend on its “factual distinctiveness”, that is whether it has become capable of being perceived by the consumers as being exclusively associated with one specific undertaking. The Manual also specifies a list of sounds that are not considered to be distinctive and thus cannot be registered.
This analysis of the various legal provisions present under the Indian trademark law shows how the law has gradually changed in answer to the arrival of unconventional trademarks in the Indian markets. These provisions also demonstrate that the Indian trademark law is primarily ruled by the two broad principles of graphical representation and distinctiveness which play a very crucial role in determining whether a trademark would be granted registration or not.
The presence of the requirement of graphical representation has in fact precluded the registration of certain other unconventional marks such as scent marks in India. This point is exemplified by the Draft Manual wherein it was stated that “in order to constitute a trademark it should be represented graphically and since smell marks do not meet these requirements, they cannot be protected under Indian trademark law.”
Furthermore, even with respect to sound marks and the requirement of graphically representing its notations it has not been made clear whether the same should be intelligible to everyone or whether it is all encompassing.
The analysis undertaken in this article shows that although many significant steps have been taken with respect to the protection of unconventional marks in India, especially with respect to sound and shape marks, a lot of work remains to be done with respect to other non-traditional trademarks. Steps need to be taken to harmonise the requirement of graphical representation of trademarks with the nature of unconventional marks, in order to extend the legal protection to them as well.
 The Trademark Act, 1999, s. 2(1)(zb).
 Agreement on Trade Related Aspects of Intellectual Property Rights, Article 15, available at https://www.wto.org/english/docs_e/legal_e/27-trips_04_e.htm ( last visited on 18th October, 2020).
 Neha Mishra, “Registration of Non-traditional trademarks” 13 Journal of Intellectual Property Rights 43-50 (2008).
 Dev Gangjee, Non Conventional Trademarks in India, 22(1) National Law School of India Review (2010).
K R Srivats, “ICICI Bank gets ‘sound mark’ registration”, The Hindu Business Online, March 13, 2011, available at https://www.thehindubusinessline.com/money-and-banking/ICICI-Bank-gets-lsquosound-mark-registration/article20108922.ece ( last visited on 18th October, 2020).
 Ranjan Narula & Rachna Bakhru, India: A shift in the protection of non-traditional trademarks, World Trademark Review (2016).
 2011 SCC OnLine Del 4562.
 47 PTC 2011 Bom 100.
 SCC OnLine 2017 Del 9825.
 Trade Marks Act, 1999, s. 2(1)(zb).
 Id, s. 2(1)(m).
 Trademark Rules, 2002, r. 25(12)(b).
 Id, r. 30.
 Id, r. 29 (3).
 Trademark Rules, 2017, r. 26 (5).
 Draft Manual of Trademark Practice and Procedure, 2015, Ch II, 12.2.5.
 Id, Ch III, 3.2.4.
 Vatsala Sahay, Conventionalizing Non-Conventional Trademarks of Sound and Scents: A Cross Jurisdictional Study, 6 NALSAR Stud. L. Rev. (2011).
BY APOORV PRAGYA | NALSAR UNIVERSITY OF LAW, HYDERABAD