Essay: Status of non-conventional trade marks in India and other jurisdictions

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  • Status of non-conventional trade marks in India and other jurisdictions
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“Intellectual Property is the oil of the 21st Century” – Mark Getty. This statement holds true in today’s day and age. Intellectual Property is gaining importance at an exponential rate as the days go by. Today, intellectual property laws offer immense protection to the owners and their rights over such properties, in turn enabling them to commercialise such creations of their minds. Furthermore, some of the biggest businesses in the world, including the likes of Apple Inc. rely heavily on the protection offered by Intellectual Property Right Laws. However, there seems to be a lacuna as far as protection to non-conventional forms of intellectual property is concerned. This article sums the status of non-conventional trade marks in India and other jurisdictions.

Non-Conventional Trade Marks and Graphical Representation

Section 2(1)(zb) of the Trade Marks Act, 1999 defines trade mark as “a mark capable of being represented graphically and which is capable of distinguishing the goods and services of one person from those of others and may include shape of goods, their packaging and combination of colours.”

Non-conventional trade marks have become the concern of creators fairly recently with the growth in use of innovative marketing and branding strategies. Non-conventional trade marks are those which are beyond the purview of the definition given in the legislation and originate from sounds, smells, tastes, textures, etc. While the legislation doesn’t explicitly exclude such trade marks, the use of the words “capable of being represented graphically” restricts the scope of the definition.

Earlier, in accordance with Rule 2(1)(k) of the Trade Mark Rules, 2002, ‘graphical representation’ simply meant representation in paper form. However, the latest Rule 2(1)(k) of the Trade Marks Rules, 2017 defines ‘graphical representation’ as representation of a trade mark for goods or services represented or capable of being represented in paper form and includes representation in digitised form. With the inclusion of representation in digitised form, the scope of the term ‘capable of being graphically represented’ has widened considerably. This amendment is a ray of hope for proprietors of non-conventional trade marks like odour marks or motion marks which are not capable of being graphically represented in the traditional sense.

The term ‘digitised form’ has a wide scope for interpretation and may be used by proprietors to their advantage. ‘Digitised form’ could be interpreted to mean a digital version of a graphical representation, say an illustration in a pen-paper format or it could even mean digital data like audio clips or mp3 recordings in case of sound marks. Allowing trade marks to be digitally recorded is a hugely progressive step for non-conventional trade marks and their registration.

Types of Non-Conventional Trade Marks

Sound Mark

Sound marks are a type of non-conventional trade mark wherein the distinctive sound or audio is an indication of the origin of the mark. Today a unique sound or combination of sounds or a signature sound, is one of the most powerful marketing tools. Catchy jingles are a brilliant way to ensure the consumer associates the product or brand with said jingle, i.e. sound mark. However, due to the use of the words ‘capable of being graphically represented’, sound marks are often not easy to get registered. Due to the inclusion of digital form in graphical representation, registration of sound marks is now relatively easier. Earlier, when graphical representation was limited to pen and paper format only, it was thought that an apparent solution would be to deposit a digital recording of the sound with the registrar. But this proposition was rejected by the International Trademark Association (INTA) as being impracticable, for firstly, sound cannot be published by the Trademark Registry and people would have to go to the registry to hear it, and secondly, it would be difficult for the registry to store so many sound samples. But these problems seemed to have been tackled by not only the new Trade Mark Rules of 2017, but also by general technological advancements. With access to the internet and unlimited cloud storage, the INTA’s apprehensions stand redundant. The first ever sound mark to get registered was way back in 1950 when the United States Patent and Trademark Office (USPTO) recognised NBC’s infamous three chimes as a trade mark capable of being registered. Over the years, a lot of sound marks have been registered all over the world, for instance, Metro Goldwyn-Mayer’s iconic lion roar, 20th Century Fox’s chime, Tarzan’s yell, Intel’s jingle, default ring-tone of a Nokia mobile phone and many more. In India the first ever sound mark was granted to Yahoo! Inc. in 2008 for a man’s voice yodelling yahoo. ICICI Bank was the first Indian entity to obtain sound track registration with the Indian Trade Mark Registry.

Colour Mark

Colour marks are those marks where a distinct colour or combination of colours is associated with a product or brand and takes us to the original source. Although graphical representation may not be a hurdle for colour marks, they are not easily granted. Section 10 of Trade Marks Act, 1999 talks about registration of a colour combination but only when such colour combination is present in an otherwise traditional logo or mark so that the colour is secondary and the design of the mark is the primary thing to get registered as a trade mark. Essentially the Act can protect a certain mark in a certain colour combination but not the colour itself. However, the Act doesn’t exclude colours and colour combinations from the purview of the definition of trade mark either. Another obstacle faced is the Functionality Doctrine. Its says that a colour cannot be a trademark if the colour is functional in nature. Under this ‘functionality doctrine’, if the feature of the product for which protection is sought is useful or affects the cost or the quality of the article, such that granting trademark protection to the feature would put competitors at a significant disadvantage, the feature is not entitled to trademark protection. For example, a court held that the colour black when used on outboard boat motors serves a functional purpose, since the colour black is compatible with all other boat colours and also because the colour black makes the motor appear smaller. The first successful case of colour trademark was in the US. In Qualitex Co. v Jacobson Products Company, Inc. the petitioner company had been using a special shade of green-gold for their dry cleaning press pads since the 1950s. In 1989, Jacobson Products Co. started using a very similar shade of green-gold on its own press pads. Qualitex Co. got it’s shade of green-gold trademarked and also sued Jacobson for infringement. Another issue faced by colour marks is the possibility of there being litigation over shades of the same colour. A solution to this problem is designation of a colour using an internationally recognised identification code like Pantone as such codes are deemed to be precise and stable. The Pantone is a commercial system that designates specific shades numerically and categorises over thousand such shades by unique codes. Tiffany and Co.’s unique shade of blue ‘Tiffany Blue’ has been a registered trademark since 1998 and also has its own custom Pantone number – 1837, the year the company was founded. T-Mobile’s colour ‘Magenta’, Mattel’s ‘Barbie Pink’, UPS’s ‘Pullman Brown’ are some more examples of colour marks. India is yet to set precedence as far as colour marks are concerned.

Smell Mark

Smell marks or Olfactory marks rely on their distinct smell to remind the consumers of the source i.e. the brand or the manufacturer of the product. Once distinctive, a smell is one of the most powerful manners to differentiate the goods of one merchant from those of the other. Smell marks are one of the most difficult kind of marks to get registered. However, smell being so subjective, may be perceived differently by different people. The subjectivity of smell acts as a hindrance in its distinctiveness. Another issue is the difficulty in graphically representing smells. One way to represent a smell could be to orally describe it so precisely that it doesn’t get confused with any other smell, but this is quite an arduous task. Writing the chemical formula for the substance is problematic as the formula represents the substance and not the smell itself. Samples of the smell could be stored but these may either vanish over time or change their nature when exposed to certain external factors like heat and humidity. Another important thing to note is that the scent must neither originate from the goods itself nor be functional. Functionality Doctrine again plays a role here and if any smell has a functional use, the registration of which could lead to significant disadvantage to competitors, such smell may be disbarred from registration. However, there is no clear-cut definition for functionality. For example, the smell of lemon for garbage plastic bags; the smell itself can be distinctive, but it can also be functional because it can mask the smell of waste and garbage. Fashion house Chanel’s application to get its iconic perfume Chanel No. 5 trademarked was rejected as it was the essence of the product. The first scent mark to be granted in the US was for a “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” for “sewing thread and embroidery yarn.” There were four reasons for trade mark to be granted – (1) no one else in the market was producing scented threads and yarns; (2) the scent was an added feature and was neither functional nor inherent to the goods; (3) the scented feature was advertised and promoted; and (4) consumers had come to associate the goods with the manufacturer. Some other smell marks are Sumitomo Rubber Industries Ltd.’s rose-scented tyres and Vennootschap onder Firma Senta Aromatic Marketing’s “smell of fresh cut grass” for tennis balls which has now lapsed. India is yet to set precedence as far as smell marks are concerned.

Some Other Non-Conventional Trade Marks

Position Mark

French luxury shoe designer Christian Louboutin’s legendary red-soled high-heeled shoes have received a trade mark in various countries. The outsoles of the shoes are red in colour, using a red pigment called Pantone 18 1663TP. The fashion house has also won several infringement cases in this regard.

Shape Mark

Coca-Cola Co. has a registered trademark for its Cola bottles. The shape of Toblerone chocolates and Zippo lighters is also trademarked.

Store Design and Layout

Apple Inc. has registered the layout of its retail stores as a trademark.

Landmark Building

Chrysler Building and Empire State Building in New York City are both registered trademarks in USA.

Motion Mark

The European Union has granted a trademark to Lamborghini for its car doors that open and turn upwards.

Some other types of non-conventional trademarks are gesture, touch, taste, hologram marks, etc.

Other Non-Conventional Intellectual Property Rights

Non-Conventional Intellectual Property Rights exist beyond Trademark too. In a recent US Case, the court declared that the defendants, Robin Thicke and Pharell Williams had infringed Marvin Gaye’s song “Got To Give It Up’ (the plaintiffs being Marvin Gaye’s heir). In a first for the world of copyrights, the similarity between the songs is not within the melody, lyrics or harmony, but rather in the overall sound, groove, and vibe. On appeal the court’s decision was reinforced and the plaintiff was awarded damages of $7.4 million.

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