What are unconventional trademarks?
The Trademarks Act, 1999 (“Act”), defines a ‘trademark’ as being a mark that is capable of (i) being represented graphically; and (ii) distinguishing the goods and services of one person from those of others.
Therefore, any mark that can be represented in a graphical form and can be used to identify the source of goods or services can be registered as a trademark under Indian law. Conventionally, this includes devices, names, logos, brands, labels, words, letters and numerals.
However, there are also certain trademarks that do not fall under the umbrella of conventional or traditional trademarks. Proprietors often use creative and unconventional trademarks like the shape of their product or a particular colour, sound or smell to distinguish their products and services from those of others. These are considered unconventional trademarks but are still protected under trademark law, as long as they can pass the dual test of being able to be represented in a graphical form and being capable of distinguishing the goods and services of the oner from those of others.
What are the different types of unconventional trademarks?
Although sound trademarks have not been specifically defined under the Act, the Trade Marks Rules, 2017 make provision for the representation of sound marks in trademark applications, by specifying that applications for registration of sounds mark must include the reproduction of the sound in the MP3 format and a graphical representation of its notations. Therefore, it follows that as long as a sound mark is capable of being represented in graphical form and can distinguish the products or services of the owner form others, it can be registered as a trademark under the Act.
Some examples of sound trademarks registered in India are National Stock Exchange’s “NSE Theme Song,” Britannia Industries’ “Four note bell sound” and Nokia’s “guitar notes while turning on the device.”
As per the Act, the definition of a trademark includes a ‘combination of colours.’ While the Act does not specifically mention whether single colours can be registered as trademarks, there have been cases where the registration of a single colour as a trademark has been allowed.
Some examples of colour trademarks registered in India are Victorinox AG’s brown colour mark and Tata Sia Airlines Limited’s dual colour mark.
The Act doesn’t specifically address the question of whether smell trademarks are registrable in India. However, to register a smell mark or a scent of a product as a trademark, the applicant must be able to graphically represent the scent and must prove that the mark can be used as a source identifier. As it is not possible to graphically represent a product’s smell, it follows that smell trademarks are not recognized as trademarks under Indian law, as of now.
As per the Act, the definition of a trademark specifically includes the ‘shape of goods.’ The Act also lays down certain grounds for absolute refusal of shape marks for registration, that is, a mark shall not be registered as a trade mark if it (i) consists exclusively of the shape of goods which results from the nature of the goods themselves; or (ii) the shape of goods which is necessary to obtain a technical result; or (iii) the shape which gives substantial value to the goods. Therefore, shape marks that can be graphically represented, are capable of distinguishing the products of the owner from those of others and are not explicitly barred from registration under the Act, can be registered as trademarks.
Some examples of shape trademarks registered in India are the Toblerone “3-dimensional shape” and the Coca-Cola “device mark with bottle.”
Motion marks are marks that are represented by a moving image or video. Motion marks have not been specifically defined under the Act and although there is no explicit bar to the registration of such marks, the requirement of trademarks having to be graphically represented makes it difficult for such marks to be registered in India. Having said that, there have been instances when motion marks have been successfully registered in India under the category of device marks. However, in these cases the mark being registered is a frame of the motion mark and not the motion mark in entirety.
Some examples of such marks registered in India are Nokia’s “connecting hands” mark and Toshiba’s “movement trademark” .
The law in relation to unconventional trademarks is still developing in India. As society develops and technology advances, the needs and requirements of trademark protection are changing and it will be interesting to see whether the law is amended to make room for more protection for unconventional trademarks, in the future.