The Beginning of a new Era – Non Traditional Marks

[Vol 4/ Issue 1/ November 2018] [ISSN 2394-9295]

“You can’t solve a problem on the same level that it was created. You have to rise above it to the next level.” – Albert Einstein

Abstract

The whole human race has advanced on this very guideline of “innovation”, beginning from lighting fire from rubbing stones to an age where lighters hit the start. This has additionally been found in the field of licensed innovation rights. This field has seen some radical changes, from the occasions where individuals didn’t know the significance of the term to a period when individuals are applying for trademarks for those things also which are only felt and not seen.When one goes for a walk out in the open and hears a jingle playing on the TV of some neighbouring house, one frequently does not realize what is being said in the advertisement yet knows which item the commercial is for on account of a novel tune related with it. Essentially, while passing a specific area, the smell of “Galouti Kebabs” noticeable all around influences one’s mouth to water consequently. It isn’t that one is really viewing the advertisement or sitting the restaurant serving the Kebabs, however there are certain sounds and scents that one as a rule associates with things that they know about.

Key Words: Intellectual Property, Non-Traditional, Innovation, Trade Marks Act, TRIPS

Introduction

“Intellectual Property Rights enables individuals to state possession rights on the results of their creativity and innovative action similarly the way they can claim physical property, Trademark is one of the zones of Intellectual Property and its purpose is to ensure the mark of a product or that of a service, Subsequently, a trademark is characterized as a mark equipped for 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, they include a device, brand, heading, label ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.”[i]

Trademark is a mark or symbol which is fit for recognizing the goods or services of one from those of others. It works like a weapon in the hand of registered proprietor of the mark to prevent different traders from unlawful utilization of the mark of the enlisted proprietor. Under Section 28 of the Act, the registration of a trademark will provide for the registered proprietor of the trademark, the exclusive right to the utilization of the mark in connection to the goods in regard of which the mark is registered and to acquire relief in regard of the trademark in the way provided under the Act.

In the recent past the field of trademark has seen a significant change which is worth to be talked about. It is critical to think about the distinctions in patterns in the field of trademark which has raised new sorts of trademark, for example, scent marks, collective mark, colour mark and feel marks etc. The adoption of the TRIPS agreement has perceived these new patterns in the trademark fields which have affected in the modern era, businesses which keeps running based on the portrayal made by the associated marks and the reputation and recognition acquired by those marks.

India has rolled out fundamental improvements in its trademark law to supplement the command of TRIPS agreement. There are certain non-traditional trademarks which are making rounds in the lance of trademark law which go past the present system of the trademark law both at international and national level. Along these lines, it is appropriate to know such new sorts of trademarks and non-traditional or non-ordinary trademarks to be perceived everywhere throughout the world due to the inventive and new patterns building up every day.

Graphical Representation

In the day and period of forceful marketing, various methods are embraced to catch the consideration of the consumers. This is the place the non-traditional trademarks become an integral factor. Non-traditional or non-conventional trademarks are those marks which are beyond the domain of traditional trademarks and therefore these lines comprise of marks beginning from shapes, sounds, scents, tastes and textures. Despite the fact that not particularly specified in the Act, the meaning of a ‘trademark’ incorporates the non-traditional marks also.

So as to be a subject of legitimate application for registration the sign must be represented graphically as required by Section 2(1)(zb) of the Act[ii]. The words “capable of being represented graphically” would imply that the mark ought to be such as, capable for being put on a register in a physical frame and furthermore being published in the Journal. The graphical portrayal gives a settled perspective, indicating what the mark is.

In SwizzelsMatlowLtd’s[iii] Application (No 2), the court clarified two main explanations behind the necessity of the graphical representation measure:

1. To empower traders to recognize, clearness, what different dealers (carrying on a similar business or something else) have applied for registration as a trademark, and for which product.
2. To empower the general population to decide, with exactness, the mark which frames the subject matter of the trademark registration.

In India, the Trademarks Act 1999 replaced the Trade and Merchandise Marks Act 1958 and amended and merged the law regarding trademarks in India. Basically, the new act was viewed as essential for India to conform to the Agreement on Trade-Related Aspects of Intellectual Property Rights and to meet its commitments as a member of the World Trade Organization. Under the old act, non-traditional trademarks, for example, colour combinations, three-dimensional marks, scents, sounds and tastes were incapable for being registered.

Be that as it may, the new act particularly accommodates the registration of the shape of goods, packaging and colour combinations as trademarks. Despite the fact that scents, sounds, tastes and multi-dimensional images are not particularly provided, the newly amended definition appears to recommend that the recently altered meaning of a ‘trademark’ is sufficiently wide to incorporate non-ordinary marks.

Graphical representation of a mark is the sine qua non for a trademark registration in India. A trademark application basically requires the mark to be represented graphically, that is, the mark ought to be fit for being put on register in a physical frame and furthermore being published in a journal. The Trademarks Rules, requires the trademark to be represented to in a ‘paper form’.

Non-Traditional Trademarks

“Non-traditional or non-conventional trademarks are generally new on the Intellectual Property scene. Any mark that does not go under the traditional classifications of trademarks, for example, letters, words, logos, numerals, pictures, and images might be named a non-ordinary/traditional trademark, Non-traditional trademarks along these lines comprise of marks starting from shapes, sounds, scents, tastes and surfaces.”

Trademarks are administered by international treaties like the Madrid Protocol which enable a trademark to be registered in any or all member nations through a single application filed at any of the member nations. Be that as it may, with regards to non-conventional trademarks most nations have their own laws in regards to what can be permitted and the degree to which the trademark laws can secure non-conventional trademarks.

In Colgate Palmolive Company v Anchor Health and Beauty Care Pvt Ltd[iv]the court saw that a colour combination is a ‘trademark’ within the meaning of the act, as there is no prohibition in the definition and even a single colour is qualified for protection under the law of passing off. This dispute concerned the defendant’s colour combination of red and white in regard of dental items, which was similar to the plaintiff party’s colour combination of one-third red and two-thirds white on its product container. Diverging from the view observed in Colgate Palmolive, in Cipla v MK Pharma[v] the court held that a single colour or a colour combination is not a trademark and is unequipped of protection under the law of passing off. The plaintiff party claimed that its packaging containing a distinctive orange-shaded, oval-formed tablet comprised a trademark. Be that as may, the judge reinstated that “regardless of whether there has been deliberate copying similar colour or colour combinations, that would not add up to passing off, since colour and shape are not indicative of the medications, nor are they connected with the trademark“. Such conflicting perspectives result in ambiguity surrounding the standards of protection that are applied to colour marks. It is trusted that things will progress toward becoming clearer as the courts analyse more cases.

Types of Non-Traditional Marks

1. Sound Marks

A sound trademark is a non-conventional trademark where the trademark capacity of remarkably recognizing the commercial origin of goods or services is accomplished by methods for a sound clips. Under most conventions and statutory provisions, the meaning of trademark either incorporates sound as a trademark, or at any rate, does not avoid such marks. Just a bunch of nations have a standard or a set of necessities to be met for sound trademarks. These benchmarks have advanced to a great extent because of the cases prosecuted, and since even in those nations the number of applications prosecuted has been less, rules, assuming any, are not explained in detail. [vi]In spite of the fact that trademark laws passed the European Union (EU) don’t expressly incorporate sound in the meaning of trademarks, the European Court of Justice (ECJ) felt that sound signs could be registered as trademarks insofar as their utilization made it conceivable to recognize the products or services of one undertaking from those of different undertakings. To be registered in the EU, sounds must take after conventional trademark laws as well as be represented graphically in a way that is clear, exact, independent, similarly available, understandable, solid and objective. In the United States, whether a sound can be registered as a trademark “relies upon the aural view of the audience which might be as momentary as the sound itself except if, obviously, the sound is so inalienably unique or distinct that it connects to the subliminal personality of the audience to be attached when heard and to be related with the source or event with which it associated.” Quite basically this implies if a sound waits in the brain of the audience and the audience therefore connects a source or event with that sound then the sound might be qualified for a trademark.

2. Colour Trademark

Colours attached with words, designs, images, logos and other such distinctive signs have been customarily qualified for a trademark, the question of whether colour alone is qualified has been covered in shades of dim. The uniqueness of colour and the capacity to separate between various shades of a colour have been points being referred to. Concerns developed that if colour alone was protectable, trademark infringement suits would prompt long prosecutions over ‘shades’ of colours which would back off the procedure of trademark.

Functionality Doctrine:

A colour can’t be a trademark if the colour is functional in nature. Under this ‘Functionality Doctrine’, if the element of the item for which protection is looked for is useful or influences the cost or the nature of the article, such that giving trademark protection to the element would put contenders at a critical hindrance, the element isn’t qualified for trademark protection.

3. Smell Trademark

“It for the most part refers to smell or olfactory trademarks which is by and large less in number in contrast with other non-traditional trademark, The primary explanation for that will be that these trademarks are exceptionally uncommon and representing them graphically is a relatively impossible and troublesome work thus without graphical representation, these are extremely uncommon,[vii] Yet, this isn’t the sole issue with these trademarks, the differentiation between two scents are additionally confusing hence the component of distinctiveness is likewise not present in this sort of trademark, The “graphical representation” of fragrances so far has exclusively been verbal, A verbal portrayal of smell can be subjective and can’t generally give a fall flat evidence technique for recognizing and recognizing one smell or aroma from another, Another ordinarily utilized type of graphical representation of a fragrance is depicting the smell as a chemical formula.”

4. Motion Trademarks

Moving images as a film cut, video, activity, logos and so on can likewise meet all requirements for trademarks in a few nations. Motion trademarks may likewise be known as animated marks, moving marks, or movement marks. The necessities of a movement trademark include the detailed description of the different parts or components of the trademarks and their collaboration with each other clarified in an arrangement of steps. The depiction of the Columbia motion trademark (USPTO TM 1975999) comprises of “A moving picture of a glimmer of light from which beams of light are discharged against a foundation of sky and mists. The scene at that point skillet descending to a light being held by a female figure on a platform. “COLUMBIA” shows up over the best going through the light and after that a round rainbow shows up in the sky encompassing the figure.” Just like the US, the European Union has additionally permitted registration of motion trademarks. The plan and opening of the doors of a Lamborghini has a motion trademark (CTM 1400092) which has the portrayal “The trademark alludes to a regular and characteristic arrangement of the entryways of a vehicle, for opening, the entryways are “turned upwardly”, to be specific around a swivelling pivot which is basically horizontal and transverse to the driving direction”.

5. Hologram Trademarks

Holograms have for long been utilized for security purposes on credit cards, show tickets, certain monetary standards and so forth. The reason for taking up holograms is to anticipate forging and fake replication, as replication of a hologram is viewed as more difficult. Holographic trademarks have been registered by a couple of European nations and furthermore in the US. The essential necessities for a trademark registration apply to a hologram as well, i.e., the mark ought to be distinctive enough to be utilized by a business to exceptionally recognize itself and its goods and services to buyers. The primary trouble emerges in the strategy for graphically representing the mark in trademark registration.Hologram by their nature have various pictures or colours that can be seen just when seen from different points. Subsequently, holograms are hard to catch in paper frame, on the grounds that the paper print won’t have the capacity to demonstrate the movement of the images. The image may work electronically, yet on paper, the advertised mark may be a substitute of the mark itself; a figurative mark needs graphical representation and satisfactory written description if that it is to succeed. Candidates wishing to register their holograms as a mark ought to in this manner look to depict the hologram in however much detail as could be expected, giving visual perspectives of the holograms in different frames with portrayals of angle and appearance.

6. Touch Mark

It is also a case where items are produced in such a way that the good or their packaging have a specific sensation to the touch, which can recognize them from those of competitors.  A specific feel may reflect the nature of the item as opposed to the origin, yet this kind of mark may include, for instance, tissues that are especially delicate or damp or items that might be held in the hand all the more serenely. Usually items to have writing in Braille are connected to them. Thus registerable features might be added to these items. In The United States: Touch (tactile) marks are registerable. The touch mark must be represented graphically. A case of a touch mark is depicted in U.S. Registration No. 3155702, for “a velvet finished covering on the surface of a bottle of wine” for wines in Class 33, registered in the name of American Wholesale Wine and Spirits, Inc. of Glenview, Illinois.[viii]While a touch mark may perhaps be characteristically different, it is more probable that confirmation of distinctiveness gained through use should be given before a touch mark is registerable as a trademark. The Functionality Doctrine may bar assurance if the touch is basic to the use and reason for the article or naturally influences its cost or quality.

7. Taste Mark

“In many case it will be hard to distinguish the natural flavour of an item and the recipe applied by a producer to distinguish its products from those of competitors, The taste of cola drinks is a decent illustration,[ix]The makers of such product would surely think about the taste of their items to be registered as a trademark of the organization, and the recipes are often kept safe as a Trade Secret, Taste is exceptionally subjective, and subsequently it would be to a very hard to characterize and compare one taste and another.”

Conclusion

Article 15 of the TRIPS Agreement characterizes Trademark as any sign, or any combination of signs, capable for recognizing the goods or services of one endeavour from those of different endeavours. It additionally expresses that Members may require, as a condition of registration, signs to be visually distinguishable. This implies it isn’t necessary for the Trademark to be visually detectable so far TRIPs Agreement is concerned. Further, Article 1 of the TRIPS Agreement expresses that Members are not obliged to implement in their law wider protection than is required in the aforementioned agreement. This implies the Member States might expect Trademark to be visually distinguishable or fit for graphical representation. The main important condition is that the given sign will be fit for recognizing the products or services of one endeavour from those of different endeavours. This is on the grounds that the essential function of a trademark is to recognize the goods or services of one endeavour from those of different endeavours, regardless ofwhether a mark is visually distinguishable or not doesn’t matters.

The Indian Trademark Regime has, up until this point, imitated the position of European Union to the extent prerequisite of graphical representation for a trademark is concerned. The Indian Trademark Act, 1999 puts obligation of capacity of graphical representation for the registration of trademark. In this way, it makes registration of non-conventional trademarks considerably more stringent in India than in the United States. The non-conventional trademarks have ability of source identifier despite not easily graphically representable. In any case, at first sight the question is that whether it is possible for a mark to perform the essential function of a trademark in spite of without any ability of graphical representation and as for these worldwide provisos it is exceptionally noticed that in India the ability of graphically representation is a deciding variable as well as a cardinal rule if there should be an occurrence of allowing Trademark or not. In this way, we can decisively hold that the Indian Trademark Act 1999 has put an unnecessary burden of capability of graphical representation on the globalized world, the use of sound, smell, colour, motion or holograms as a trademark will undoubtedly increase in the adjacent future. In this way, we ought to change our trademark regime by diluting the prerequisite of graphical representation for the non-conventional trademarks.

REFERENCE:

[i]Source – http://www.businessgyan.com/content/view/623/220

[ii] Trademarks Acts, 1999

[iii] SWIZZELS MATLOW LIMITED’S TRADE MARK APPLICATION- R.P.C. (1998) 115 (7): 244-249-Report

[iv] Colgate Palmolive Company v Anchor Health and Beauty Care Pvt Ltd 2003 VIIIAD Delhi 228

[v]Cipla v MK Pharma MIPR 2007 (3) 170

[vi] http://www.mondaq.com/india/x/472602/Trademark/NonConventional+Trademarks+in+India

[vii] http://journal.lawmantra.co.in/wp-content/uploads/2015/08/52.pdf

[viii] https://rostrumlegal.com/journal/non-conventional-trademarks-analysis-of-the-indian-structure/

[ix] Eli Lilly and Co., appeal relating to Community Trade Mark Application No. 1452853, Case R 120/2001-2 (OHIM Second Board of Appeal Aug. 4, 2003).