What are Unconventional Trademarks and Challenges that are faced during Its Registration?

A trademark is a mark which is capable of being represented graphically and helps to distinguish the goods or services of one person from the others. Any mark such as logo, word, letter, design, numeral etc capable of distinguishing the goods or services can be registered as a trademark under the Indian Trademarks Act, 1999. Such trademarks are also termed as traditional trademarks. However, unconventional trademark is a type of mark which is different from traditional trademarks and can be identified in the form of sound mark, shape mark, smell mark etc. this article will discuss about what are unconventional trademarks and what are the challenges that are faced during registration of unconventional trademarks in India.

Understanding Unconventional trademarks

Traditional trademarks are the marks which are unique and are identified with the origin of the product. Such marks usually are device marks, word marks, numerals, letters etc. whereas, unconventional trademark are the marks which do not fall into the category of traditional or conventional trademarks. Such marks are mainly in the form of smell, sound, colour or shape marks.

For a mark to be unconventional, it must possess the communicative ability to be able to differentiate the products and services of one individual from the others. The unconventional marks should have the ability and potential to be distinctive; it must indicate the source and must be able to distinguish the goods or services from the rest.

Also, Read: Famous Trademark Cases from which Businesses can Learn

Indian Scenario of Unconventional Trademarks

The Trademarks act draw influence from both the UK and the US trademarks laws. The doctrine of functionality that subsists under US law can also be found under the Indian trademark laws as well.

On 6th March 2017, new trademark rules came into existence that brought in a new era for the registration of unconventional trademarks. The registration of sound marks is provided under Rule 26(5) in the new trademark rules. And the registration of sound marks can be done by submitting a sound clip along with the musical notations. The registration for colour marks can be done by submitting a reproduction of that combination of colours. The burden to shown that the colour or sound has distinctive character secondary meaning due to continuous bonafide usage is on the applicant applying for registration. There is no provision for smell mark registration till date.

The first entity to get the sound mark registration in India was ICICI Bank for its jingle. Even if there is no inherent distinctiveness in a mark, the brand owner can still apply for the registration of trademark if the mark has acquired distinctive character due to its use over a long period of time. This circumstance must apply with the colour marks, as it is not easy to establish inherent distinctiveness in the combination of colours or single colours.

The burden of proof lies on the applicant, while submitting the application for registration of unconventional mark that the colours or combination of colours is solely associated with them and entirely designated for their goods and the public can associate or link the colour with the goods of the applicant. The burden of proof is on the applicant to show that the colour has acquired distinctive character or secondary meaning.

Some of the challenges faced during registration of unconventional trademarks

The registration of trademark has mostly been done on the subject matters which are conventional that is, something that is visual and consists of devices, letters, words, logo or designs and etc. registration of unconventional trademarks like colour mark, smell mark, shape mark or sound mark are relatively difficult and are yet to have recognition.

There applicant comes across many challenges faced during the registration of unconventional trademarks. It is difficult to trademark sound or scents as compared to marks comprising words or devices. The problem arises when a sound mark or a smell mark has to be registered. The registration of colour mark is yet not difficult if the applicant proves that the colour or combination of colours used have acquired the distinctive character and secondary meaning after being used by the applicant for over a long period of time that the consumers can now associate the colour with the goods of the applicant.

For example, on 1^st October, 2012 the registration of colour mark was granted to Cadbury’s distinctive shade of purple packaging used for its milk chocolates, after a long drawn legal battle with Nestle.

While the graphical representation of colour is quite much possible by referring to any international system of colour, viz, RAL or Panton, it is hard or sometimes impossible for a colour to be having inherent distinctiveness.

In the case Colgate Palmolive Company vs. Anchor Health & Beauty Care Pvt. Ltd, the Indian Court has acknowledged colour as a part of trade dress and provided protection to it.

Graphical representation is mandatory for a mark to be registered under the Indian trademark laws.

Section 2(1) (zb) and 2(1) (m) of the trademarks act must be read together. The interpretation of these two sections helps to understand that the definition of trademark includes shapes, colour, packaging design etc. It is mandatory to fulfil all the criteria while registering trademarks like sound, colour, smell, shape etc.

Conditions that are needed to be fulfilled for registration of Unconventional Trademarks

The below mentioned conditions are required to be fulfilled for registration of unconventional trademarks:

• The trademark should have distinctive characteristics.
• Such unconventional mark should be able to distinguish the goods or services of the person from the other products or services of another person.
• Such unconventional mark should be capable of graphical representation.

Conclusion

The rules and procedure for the registration of unconventional trademark have been laid down under the new trademark rules. It is difficult to register unconventional trademarks and the challenges faced during registration of unconventional trademarks can overcome if one applies for its registration only after fulfilling its criteria. The unconventional trademarks will definitely attract a new variety of customers who are able to identify the trademark in different ways and not only through its visuals. It would also grant many incentives to the companies who are undertaking to develop innovative and new ways of branding and marketing their products and services.

Also, Read: Landmark Judgments on Intellectual Property Rights Law in India