Acceptability of Registration of Unconventional Trademarks
Author: Deobrat S. Gaur
Designation: B.COM LL.B (H) Student, UPES Dehradun
Email ID: Deobrat11gaur@gmail.com
TRIPS agreement made obligation on India. for the express protection of Trademarks, which also includes different types of mark, acknowledgement of service marks, abolition of compulsory licensing of trademarks and etc.
With the advent of LPG reforms in the trade and economic sector of India i.e. Liberalisation , Privatization and Globalisation , several trade , goods and services were created , which have different brands, brand names , trade names, marks etc , hence the requirement to set minimum standards for the standards of protection and potent procedures for, recognition enforcement of Trade marks.
Trade mark is also known as Brand Name, it is defined under section 2(zb). As a layman it means , a symbol which can be a word , signature , device , name ,label , numbers , or which can also be a combination of colours used by one establishment , company etc to distinguish its goods and services from the other company’s similar goods or services.
The legal requirement which are of quintessential importance for the registration of a Trade Mark are as follows
The trademark should have capability or tendency of being graphically represented. i.e. in paper form
The trademark should have capability of tendency of being distinguished from the other goods and services which are provided by other company or establishment.
It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.
Abercrombie & Fitch Co. v. Hunting World, Inc. , this case law is land mark in the determination of the distinctiveness of the trade mark, it is also known as the spectrum of distinctiveness.
Now after having the basic understanding of the concept of trade mark let us now talk about non-coventional trademarks.
Conventional marks are marks which includes, numbers, letters , logos, symbols, pictorial description etc .
Non- conventional trademarks are basically the marks which are out of the ambit of conventional marks, they are illustrative in nature therefore they comprise of marks based on appearance, shape, sound, smell, taste and texture. Non-conventional trademarks may therefore be visible signs (e.g. colours, shapes, moving images, holograms, positions), or non-visible signs (e.g. sounds, scents, tastes, textures). These marks are beyond the purview of the traditional trademark but it is to be noted that the definition of trade marks includes non-conventional trade mark.
The relevance of the non-conventional trade mark came into picture as in contemporary market , different kind of techniques are adopted in order to capture the attention of consumer , it when they came into fair play, but it also triggers confusion as the consumer very well identifies certain non-conventional trademark eg., shape , colour, etc but with respect to smell and taste confusion devolves.
Further the major impediment in the way of these trademarks are , the quintessential requirement of graphical representation , as we know that the graphical representation is the sine qua non , for the registration of the trade mark in Indian jurisdiction. Graphical representation means, a mark should have capability or tendency of being represented in physical form, and are required to be published in the journal. The rules require it to be in paper form.
The international case on this subject matter is RALF SEICKMAN V GERMAN PATENT OFFICE. In this case the question of registration of the smell mark as trade mark ,i.e. the substantial issue which was raised in this case was whether an olfactory mark which is described as balsamically provided of cinnamon could be registered as a trademark with respect to certain services. ECJ in this case stated that graphical representation is not sufficient and it needs to be clear and precise to clear the right of exclusivity and also it must be considered intelligible to those persons who have interest in inspecting registers. was taken into the consideration after the critical examination , it was held that the application on the basis of odour in the instant case will be registered as the quintessential criteria of graphical representation was not fulfilled.
Registration of sound mark was taken into consideration it was held that the requirement of graphical representation is to be examined in case of sound , i.e. when the sound is is represented graphically by means of description using written language. When sound is shown as a stave divided into measures, musical notes etc then graphical representations are said to be accepted. It has also been stated that along with it a written description of the mark in the form of musical notes must also be needed to be filed with the registry.
Similarly Colour mark can also be given trade mark if it is being graphically represented i.e. when it is clear, precise and self-contained and easily accessible, durable and objective.
Postion in India
India has also imported the famous test laid down in the case of RALF SEICKMAN V GERMAN PATENT OFFICE, with respect to graphical representation of the sound mark In India, Yahoo!'s yodel is the first ever non-conventional mark to be registered. It was represented through musical notes. The Zippo lighter was also considered to be distinctive and was granted registration by Delhi High Court. Other non-conventional trademark to be recently registered in India is sound mark by Allianz Aktiengesellschaft. Indian Trademark Industry has also registered sound mark of ICICI Bank in the notes which forms the jingle. For people who are visually impaired or illiterate distinguishing character of the shape or sign plays an important role.