Breaking the Mold: Exploring the Boundaries of Unconventional Trademarks – Part II

Part I of the article discussed what are Unconventional Trademarks, their categories and the Legal Position of Unconventional Trademarks around the globe. Part II will continue with Unconventional Trademarks in India.

The trademark regime in India is governed by the Trade Marks Act, 1999, which is TRIPS Agreement compliant and gives a very liberal definition of trademark. Section 2(1) (zb) defines “a trademark as any mark capable of graphical representation, which is capable of distinguishing goods or services”. Though the above-mentioned broad definition, in theory, may even permit unusual trademarks, Indian jurisprudence has taken caution in recognizing and enforcing the same. India has taken a progressive yet cautious approach when it comes to unconventional trademarks under the Act of 1999 regarding trademarks.

Sound Trademarks

India has recognized several sound marks, such as the Yahoo! yodel (Application No. 1270407) and Nokia tune (Application No. 1365394). Trademark Rules 2017 under Rule 26(5), which requires graphical representation of sound marks and the reproduction of the sound in an MP3 format not exceeding 30-seconds. It helps to achieve an appropriate level of innovation on the one hand and the necessary clarity on the other hand.

Shape Trademarks

Contour logos/ trademarks: Shape trademarks on products have been established in situations like in Lilly ICOS LLC and Anr. V. Maiden Pharmaceuticals Ltd where the trademark for almond like shape was considered for a product. In a like manner, in the case of MRF Ltd. Vs. Metro Tyres Ltd., it was held that distinctive tyre patterns are capable of being registered as trademarks. This legal precedent was established back in 2006 and another similar case came in 2011, in Zippo Manufacturing Company v. Anil Moolchandani and Ors.

Color Trademarks

The route of adjudication of colour trademarks has not been clear in India as there have been contradictory decisions. The Delhi High Court in Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd, restrained the Defendant from using the Plaintiff’s red-and-white color combination. On the other hand, in Cipla Ltd v MK Pharmaceuticals, an attempt to monopolize colors was criticized.

Christian Louboutin SAS vs. Abu Baker and Ors, was also a classic example on this aspect of the law. The Court ruled that single colors could not be trademarked, rejecting the plaintiff’s claim over the red soles of its footwear. This decision also highlighted the difficulties apparent in the attempt to secure similar consistency in color trademark jurisprudence.

The registration and protection of such distinctive signs are accompanied by certain difficulties. One important issue is the issue of graphical depiction still, which forms the basis of trademarks in most jurisdictions. For example, under the Indian trademark law, Section 2(1) (zb) inter alia provides that trademarks should be capable of graphical representation and must distinguish goods or services. Although it is not very difficult to satisfy this requirement in case with conventional trademark, this is a huge problem for non-figurative senses of trademarks including smells or tastes.

Further, the unusualness of an unconventional trademark usually becomes the issue of controversy. A single color is usually one of the most common failing cases, as it has been found to be in common usage and is not usually perceived immediately with a given brand name

India is cautious about the registration of unconventional trademarks because it is more concerned with consumer perception and preventing market monopolization. For example, sound marks such as the Yahoo! yodel (Application No. 1270407) and National Stock Exchange theme song (Application No. 2152242) have been successfully registered, and India has been able to adapt to emerging trends. However, the inconsistency in judicial interpretation, especially in cases of color marks, calls for greater clarity and uniformity. Despite the theoretical comprehensiveness of the current framework, it cannot register such abstract trademarks such as scents or tastes, as there are no higher forms of representation and protection. In this regard however, the United States and the European Union have been more liberal. While the United States, under the Lanham Act, concentrates on functionality and the degree of differentiation of marks, product-associated smells like scents can get trademark protection if they receive second meaning. These jurisdictions have illustrated that when directed by substantial administrative and judicial support, coupled with advance technology, unconventional trademarks can be effectively accommodated.

The new legal dispensation for unconventional trademarks also explains the necessity for more understanding and standardization of IP frameworks. For instance, India has made quite giant steps by incorporating sounds and shapes amongst the Trade Marks Rules, 2017. However, there are no laws or legislation which addresses issues to do with sensory marks such as smell or taste. More distinct rules and new legislation might leave the chasm between trademarks as are they defined and how they operate and branding in the present.

Worldwide, something can be learned from those legal systems that have managed to adopt unconventional trademarks to their legal systems. For instance, the European Union has recently softened its graphical representation rule under the EU Trademark Regulation. Measures of this nature could act as a reference point for India and other countries looking to incorporate other distinctive marks into their trademark regimes. Nevertheless, unconventional trademarks face lots of problems in branding. However, they provide other possibilities as a means for companies to differentiate themselves within a highly saturated marketplace.

Therefore, unconventional trademarks offer huge potential to businesses for them to use in carving a niche in the overly saturated markets. India has started taking steps in this regard, but it has to take more liberal and elastic steps when it comes to most of these distinctive kinds of trademarks. Closure of this gap with the world practices not only enhances India’s IPR regime but also opens a way forward to propel India into a more creative and innovative economy.

Adoption of unconventional trademarks will offer golden opportunities for companies to stand out in a world full of competitors. India has made progress when it comes to acoustical marks. However, there is still a pressing need for a clearer and more consistent legislation that conforms with contemporary trends. If implemented, progressive measures that have been addressed above with technological assistance can help India elevate and improve the IP system and subsequently promote branding innovation. In the long run, ensuring legal recognition to such trademarks strengthens consumer experiences, stabilizes brand personality, and positively contributes to the economy of all nations across the world.

About the authors: Bitika Sharma is a Senior Partner and Nandini Choudhary is an Associate at Singh and Singh Law Firm LLP.

Disclaimer: The opinions expressed in this article are those of the author(s). The opinions presented do not necessarily reflect the views of Bar & Bench.

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