Trademarks Act 1999 defines a trademark 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 colors[i].
So, generally a word or symbol that characterizes the product or service and provides it a distinguished identification in the market can be registered as trademark.
The history of trademark traces back to the ancient times in Europe around 5000 BC[ii] where Mark of ownership was used to be imprinted on paintings by the artists. With time as the trade and commerce flourished, people started making more sophisticated goods and items continued to bear marks for ease in recognition[iii].
In ancient Egypt and ancient China, many traces of trademarks in forms of unique signs, images and seals in order to prove identity and authorship were found.
King Edward 1 in 1300 enacted a law penalizing the counterfeit of hallmarks by the jewelers in England[iv] as Symbolizing and emblematizing were extremely popular. Thus trademark played an important role in industrialization and became a key factor in modern world of international trade.
Legal Protection: Need and Importance
Protection is essential in order to establish a fair trade and competition. In the absence of appropriate legal protection, consumers will be deceived and cheated while the manufacturer will undoubtedly suffer financial and reputational loss.
Paris Convention for protection of Industrial Property 1883 dealt with industrial property in the widest sense covering the aspects of trademark as well.
Not all marks can be registered as trademarks as marks lacking distinctiveness are difficult to register and more distinctiveness they lack, possibility of exclusion from registration increases. In United States, protection depends on this spectrum.
Generic mark
Generic mark doesn’t qualify for any sort of protection. It is essentially a term that is commonly used as the name of the kinds of goods or services to which it is referring. It is so descriptive that it is excluded from registration.
Delhi High Court in 2013[v] ruled that a generic mark requires greater degree of proof and burden of proof on one who claims the distinctiveness is much higher[vi].
Descriptive Marks
They only describe the related products or services they are applied to and the chances of protection are less but more than generic marks. If such marks achieve a secondary meaning, they can be protected and rights can be granted as they are not inherently descriptive[vii].
Suggestive Marks
They are inherently descriptive and there is more scope of protection but they require imagination or perception to connect. They describe quality or character of the product or services. Where a descriptive mark directly states about the product or service, a suggestive mark enables consumer to exercise his imagination or perception about the goods[viii].
Arbitrary Marks
Such marks have a common meaning but they have no relation to product or the services they are applied to. Since the application is in an uncommon and unexpected way, the protection is broader compared to suggestive Mark.
Fanciful Marks
Such marks are coined or invented for the sole purpose of Trademark for the Goods or services as they have no other meaning. Therefore it establishes distinctiveness in the widest sense and gets the widest scope of protection.
It doesn’t belong to the conventional category of Trademarks and is therefore difficult to register. With the increase in treaties on intellectual Property, they are being widely accepted and the nations are expanding the definition of trademark through their domestic legislations.
They are based on sound, smell, shape, Taste, Feel etc and since they lack the criteria to be visually represented, problem is faced in registering a non-conventional mark as there is a possibility that consumers might get confused. Since the graphical representation is a practical problem with these marks, not many non conventional marks have been registered in India.
Sound Marks
Graphical representation is possible by musical notations and written descriptions as sound is considered to be a popular means of identification, it has gained popularity in recent times. Some popular sound marks that are registered across the globe are Lion’s roar of MGM, Nokia Tune, and ICICI Jingle etc. Just by writing the sound will not satisfy the requirement of registration.[ix]
Smell Marks
Since smell is the source identifier, it is tough to be registered[x]. The problem is visual representation and storage but there are still instances of smell marks that are registered in the world.[xi]
Example: There has been a registration of Bubblegum Smell for sandals. A trademark can be registered if the graphical representation of the mark is self-contained, durable, intelligible and accessible.
Hologram Marks
A hologram is a cross between a photograph and reality as it records the scattered light and looks moving. It is also very difficult to register.
Motion Marks
An animated object or logo is made to move in a specific way through computer program and animation technique. Nokia Handshake on Mobile Phones, Microsoft animated sequence are some popular registered trademarks.
Texture Marks
There is again a practical problem to visually represent as just by touching the product, feel of product can be obtained. A leather wrap around a wine bottle has been registered but there is no registration yet in India.
Taste Marks and Color Marks[xii] are also very difficult to be registered as a trademark.
Trade Dress
It is basically the overall look and appearance of the product and is a major factor in the role of identification of the goods or services.
Sound mark has been registered in India. Indian trade mark registry has registered a sound mark for Yahoo[xiii], followed by another for Allianz Aktiengesellschaft[xiv], while the Delhi High Court had responded favorably to a trade mark infringement claim in order to protect the shape of a lighter manufacturing company Zippo lighters[xv].
Recently Cadbury had tried to register the purple color under Non Conventional Mark- Color Mark but was not accepted to be registered. In a Landmark case between Colgate and anchor, Where the color mark was a issue the Delhi High Court ruled that[xvi] color mark of one third of red and two third of white was registered of Colgate.
Trademarks rule 2002 makes it clear that three dimensional marks can also be registered with combination of colors[xvii]. Trade dress involves the total image of a product and "may include features such as size, shape, color or graphics and its protection is broader in scope than trademark protection, both because it protects aspects of packaging and product design and evaluation of trade dress infringement claims requires the court to focus on the entire selling image of the goods.[xviii].
In India, lack of explicit provisions makes the process of recognizing the Non- Conventional marks difficult. One another highlighted issue is the criteria of distinctiveness or secondary meaning along with the graphical representation that is required. This is especially difficult with regards to smell marks, taste marks etc. The written representation of the chemical formulas can be done for scent marks but in case of goods or services, it becomes tough.
Distinctiveness is essential as based on the spectrum of distinctiveness, protection is granted and therefore it plays a major role in registration of trademarks. It is intended to prevent consumer confusion as to the source of a particular good or service.
If Non-Conventional Marks are implemented as a traditional trademark, it would create monopoly and unfair competition into the market. In India, Non-Conventional Trade Marks still have a long way to go as the situation here cannot be compared with a developed country like US. The few obstacles with respect to Non-conventional trademark must not be considered as a discouragement to their use, but the adaptation should be slow keeping in account the technology and advancement.
[i] https://indiankanoon.org/doc/117176/ Section 2(zb)
[ii] http://respectfortrademarks.org/tricks-of-the-trademark/history-of-trademarks/
[iii] https://www.inta.org/INTABulletin/Pages/HistoricalTrademarksInUseSince4000BC.aspx Sub-Heading: Origins
[iv] https://www.altacit.com/publication/first-amongst-equals-review-of-the-historical-perspectives-of-the-trademark-legislation-and-registration/
[v] M/S Three- N-Products Pvt. Ltd. vs M/S Kairali Exports and Anr.
[vi]http://www.mondaq.com/india/x/670498/Trademark/Delhi+High+Court+Says+That+Protection+Of+A+Generic+Word+Requires+Greater+Degree+Of+Proof
[vii] https://www.justia.com/intellectual-property/trademarks/strength-of-marks/descriptive-marks/
[viii] T.V Venogopal Vs ushodaya Enterprises Ltd. &Anr 2011
[ix] Shield Mark B.V. vs. Joost Kist
[xi] Japan Rubber company has registered smell of Rose Fragrance in the product
[xii] Qualitex Co v. Jacobson Products Co
[xiii] P. Manoj, Yahoo Awarded India’s First Sound Mark; Nokia in Queue LIVE MINT, Aug. 22, 2008; Yahoo! Yodels into India’s Trade Mark Registry MANAGING INTELLECTUAL PROPERTY WEEKLY NEWS, Sep. 1, 2008.
[xiv] https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1555807 Paper by Dev Saif Gangjee
[xv] Zippo, IA 7356/2006, (High Court of Delhi) (13 July 2006). The decision is of symbolic importance but very limited precedential value since it concerns an ex parte ad interim injunction order, based on a prima facie case of infringement. There is no detailed analysis applying the infringement test to shapes and the validity of the shape mark was not challenged.
[xvi] Colgate-Palmolive (India) vs Anchor Health & Beauty Care
[xvii] https://lawtimesjournal.in/non-traditional-trademarks/#_ftn5
[xviii] Vision Sports, Inc. v. Melville Corp 1989
