UNIVERSITY OF PETROLEUM & ENERGY STUDIES

SCHOOL OF LAW

B.TECH (CSE) + LLB (CYBER LAWS) – SEM X

ACADEMIC YEAR: 2017-18 SESSION: FEBRUARY - MAY

PROJECT

FOR
INTELLECTUAL PROPERTY LAW

TOPIC: NON CONVENTIONAL TRADEMARK

Submitted By:
Ashutosh Verma Shubham Choradia
R120213009 R120213024
500030428 500029190

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 I. INTRODUCTION
Traditionally, the subject matter of trademark includes words, logos, symbols or a
combination of them. The trademark is defined as “a mark capable of being represented
graphically and which is capable of distinguishing the goods or services of one person from
those of others and may include shape of goods, their packaging and combination of colors.”1

In the current scenario of aggressive marketing, numerous techniques are adopted to

capture the attention of the consumers. This is where the non-conventional trademarks come
into play. Non-conventional or non-traditional trademarks are those marks which are beyond
the purview of traditional trademarks and therefore consist of marks originating from shapes,
sounds, smells, tastes and textures etc. Although not specifically mentioned in the Act, the
definition of a ‘trademark’ incorporates the non-conventional marks as well.

II. IMPORTANCE OF TRADE MARK

The best example to understand why and how Trade Marks are important is to take a look
at the Plain Packaging Case. It all started when the Australian government through extensive
research decided to change the appearance of the cigarette boxes. They introduced several
changes which were to be followed by all the tobacco companies carrying out business in
Australia such as: text, font, pictures, logo and color of packaging. Through there R&D the
Australian government found out that packaging plays a very crucial role in trade i.e.
appearance helps in attracting the consumers. Consumers were observed and interestingly it
was found that majority of the consumers disliked consumption of plain packaging cigarettes.
This chain started by them was aimed at reducing tobacco consumption by the people.

But, the tobacco companies teamed up, like: Phillip Morris Asia, British American Tobacco
and Imperial Tobacco and started their own campaigns. They also funded other governments like:
Ukraine and Honduras, in order to file against the Australian government in the WTO on the
ground that Australian government is not in confirmation with the agreement. Many countries
sided with Australian government and launched similar chain in their countries.

1
S. 2(zb) of Trademarks Act, 1999

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 Finally, case was decided in Australian governments favor but, with jurisdictional issues.
Case was backed by several big entities and millions of dollars were invested in it. This clearly
shows that Trade Mark has a crucial role to play when it comes to trade or any other business
related aspect.

III. GRAPHICAL REPRESENTATION OF THE MARK

Graphical representation of a mark is the sine qua non (an essential condition; a thing that
is absolutely necessary) for a trade mark registration in India. A trademark application
essentially requires the mark to be represented graphically, that is, the mark should be capable
of being put on register in a physical form and also being published in the journal. The Trade
mark Rules, earlier required the trade mark to be represented in a ‘paper form’ only but, it has
changed now as e-filing has come in picture. Graphical representation is important for
following reasons:-

a) Subject of protection can be determined.

b) Authority should be clear about the mark in conflict.
c) Economic traders should have a right to consult the register so that they may look up
the marks in it and avoid future infringement.

Guidelines for Graphical Interpretation

Any mark which confirms with the following guidelines clears the 1st stage of getting the mark

registered:-

1. Clear
2. Precise
3. Intelligible
4. Easily Accessible
5. Self-Contained
6. Durable and Objective (Perception of people)

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 IV. SMELL
In comparison to sound trademarks and color trademarks, the numbers of smell or scent or
olfactory trademarks registered are significantly less. One of the reasons could be due its
inability of graphic representation.

The “graphical representation” of scents thus far has solely been verbal. A verbal description
of smell can be subjective and cannot really provide a full-proof method of identifying and
distinguishing one smell or scent from another.

Another commonly used form of graphical representation of a scent is describing the smell as
a chemical formula. However the European Court of Justice has been of the view that a
chemical formula does not represent the smell of the chemical itself and that few people would
be able to get a sense of the smell based on its chemical formula.

Further, a sample of the scent provided as evidence of the scent in question may degenerate
over a period of time as the chemical composition may deteriorate.

There have been very few smell trademarks registered till date. The smell of-freshly cut grass
for tennis balls was registered as a European Trademark. An example of a registered smell
trademark in the US is of a “vanilla” scent when applied to office supplies.

In the case, Ralf Sieckmann v. Deutsches Patentund2 the plaintiff wanted to get his scent
registered so, on account of graphical representation he gave the following:

1. Methyl Cinnamate
2. Chemical Formula
3. Odor Sample
4. Description of smell i.e. balsamically fruity with a slight hint of cinnamon.

ECJ denied registration by simply saying that grounds weren’t objective and clear. Since, it
couldn’t be graphically represented so, no registration

2
Sieckmann v. Deutsches Patent - und Markenamt, (C-273/00) [2003] E.T.M.R. 37, 43- 45 (European Court of
Justice).

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V. SOUND
The function of a sound trademark is to uniquely identify the commercial origin of products/
services by means of an audio clip.

In general, applications in the form of musical notations describing the sound meet these
requirements, whereas onomatopoeic (onomatopoeia literally means "the name (or sound) I
make." That is to say that the word means nothing more than the sound it makes. "Boing," for
example, means nothing more than what it sounds like.) descriptions do not. This means that
musical notes that can be represented in the form of musical notations are acceptable whereas
noises like a dog barking which cannot be represented by a musical notation but has to be
described onomatopoeically or through a sonogram cannot be eligible for a trademark.

The Trademark Registry in India has granted registration to ICICI Bank Ltd. for its sound mark
by registering the very notes that form the jingle. ICICI Bank is the first Indian entity to obtain
sound mark registration.

The first sound mark to be granted registration by the Trademark Registry was the Yahoo!
Yodel. In a milestone trade mark registration for India as well as Yahoo, the country’s trade
marks registry in 2008, granted registration to India's first “sound mark” to Sunnyvale,
California-based internet firm Yahoo Inc.'s three-note Yahoo yodel. Subsequently, Allianz is
reported to have successfully registered its sound mark in India and the Trademarks Registry
has also recently accepted Intel’s application for registration of its sound mark.

Internationally, the most celebrated case in this regard is that of Metro Goldwyn Mayer (MGM)
Corporation who had applied for the registration of a sound, that of a Lion roaring, by
submitting a sonogram for the “Lion's roar”. The application has been refused in the EU.
Interestingly, the same trademark has been granted in the US. In the United States, whether a
sound can serve as a trade mark “depends on the aural perception of the listener which may be
as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive
that it attaches to the subliminal mind of the listener to be awakened when heard and to be
associated with the source or event with which it struck.” Quite simply this means that if a
sound lingers in the mind of the listener and the listener subsequently associates the source or
event with that sound then the sound may be eligible for trademark registration.

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 VI. COLOR
A unique and distinctive trademark with catchy colors is likely to stay on the mind of the
consumers. However, whether a specific color exclusively is eligible has been a contentious
area of dispute. The Act does not specifically provide for the registration of a single color,
although it does not expressly exclude the notion. In order to secure a single color trademark
registration, one must furnish to the Registrar the evidence of acquired distinctiveness in India,
prior to the date of filing of the single color trademark. In practice, a combination of colors
stands a better chance of registration, provided that it is capable of distinguishing the goods of
one trader from those of another. As per S. 10 of Trade Marks Act, 1999.

The Indian Registry and Courts follow the color depletion theory, which is based on two
arguments- First, there is a concern that with the limited number of colors, to grant exclusive
rights to colors would sooner or later deplete the available stock and, thus, be anticompetitive.

Second, if a color alone was protectable, trademark infringement suits would lead to lengthy
litigations over ‘shades’ of color which would slow down the trademark registration process.
However, the theory only bars the registration of the seven basic colors but not any shade
thereof.

In the case of Libertel Groep BV v. Benelux-Merkenbureau3, the plaintiff has telecom related
goods and services and for that he filed an application for pure orange color. Court initially
denied him the grant of the required color saying that it isn’t durable and that it’d fade. But,
court took resort of an external source known as international color code and gave him an
option that, if color could be identified out of that then registration was possible. The ECJ
stated: “[An abstract] colour per se cannot be presumed to constitute a sign. Normally a colour
is a simple property of things. Yet it may constitute a sign. That depends on the context in
which the colour is used”.

In Heidelberger4, the court considered the related issue of a combination of two pure colours.
Here it was “necessary to establish that in the context in which they are used colours or

3
Libertel Groep BV v. Benelux-Merkenbureau, (C-104/01) [2003] E.T.M.R. 63 (European Court of Justice).
4
Heidelberger Bauchemie, (C-49/02) [2004] E.T.M.R. 99 (European Court of Justice).

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 combinations of colours which it is sought to register in fact represent a sign”.5 Therefore, to
satisfy graphical representation, a mere statement such as ‘Blue and Red’ would not be
sufficient. For an application concerning “two or more colours, designated in the abstract and
without contours, [these] must be systematically arranged by associating the colours concerned
in a predetermined and uniform way”.6 Even single colours are always applied to particular
surfaces in specific ways and the application form should contain this limitation.

Adopting this reasoning, the Draft Manual also suggests that unless “the colours are used… in
a special or particular pattern or arrangement, it is likely to be more difficult to prove that in
such cases colour would lend distinctiveness as a badge of origin”7 i.e. the colours may be
considered generally decorative or a mere property of things, and not sufficiently distinctive
as a trade mark.

The US position is that a pure colour can never have inherent distinctiveness; it can only
acquire distinctiveness over time: According to the Supreme Court “A ‘product’s colour is
unlike “fanciful,” “arbitrary,” or “suggestive” words or designs, which almost automatically
tell a customer that they refer to a brand… [Instead] over time, customers may come to treat a
particular colour on a product or its packaging (say, a colour that in context seems unusual,
such as pink on a firm’s insulating material or red on the head of a large industrial bolt) as
signifying a brand.”8

Under the new trade marks regime, the Indian Registry and judiciary retain the flexibility to
adopt the US approach. Careful thought should be given to this choice and it is submitted that
the preferred approach is to always ask applicants to demonstrate acquired distinctiveness in
the marketplace before granting registration. The Registry should firmly close the door to the
inherent distinctiveness possibility. As far as acquired distinctiveness for colours is concerned,

5
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995).
6
Graphical representation is an essential element of the definition of a trade mark in S. 2(1) (zb) and specifically
defined in Rule 2(1)(k) to mean “the representation of a trade mark for goods or services in paper form”.
Presumably this will include e-filing forms as well.
7
Draft Manual Ch II, at 5.2.1.
8
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-163 (1995).

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 the Manual is clear: “Wherever the exclusive right to colour is sought, weighty evidence should
be necessary to overcome objection under Section 9(1) (a) of the Act.”9

The US has a general doctrine of functionality which includes colour marks, but Indian
legislation only explicitly refers to functionality based objections for shapes in section 9(3). It
is open to the IPAB or the courts to adopt this general doctrine of functionality – used
defensively to prevent the registration of marks or revoke them – and apply it to all types of
non - conventional marks. The second issue considers the possibility of litigation over whether
one colour infringes another. Here interpreting the scope of the rights narrowly under sections
28 and 29 will be important, as will defences like descriptive fair use under section 30 (2)(a).10
Certain colours, such as Green for environmental goods and services, should never be
registered11 and even if they are, others should be allowed to continue using them descriptively.
Litigation concerning the use of colour marks has already commenced. BP has litigated on the
basis of its registration for a particular shade of green for its service stations,12 while Cadbury’s
has been involved in extensive litigation in Australia over the use of purple for chocolates.13
Once such marks are registered, applying the principles of comparison developed for words or
images under infringement provisions will also have to be adapted for colours, shapes and
sounds.

VII. SHAPES
When it comes to shapes, from a comparative perspective two main clusters of issues can be
observed. The first cluster concerns establishing distinctiveness for shapes, while the second
concerns functionality based objections to the registration of certain types of shapes. Beginning

9
Draft Manual Ch II, at 5.2.1.3.
10
The use is non-infringing under S. 30(2)(a) if “the use in relation to goods or services indicates the kind, quality,
quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services
or other characteristics of goods or services”.
11
As noted in the Draft Manual Ch II, at 5.2.1.2.
12
BP Amoco Plc v. John Kelly, [2001] F.S.R. 21 (High Court of Justice in Northern Ireland); BP Amoco Plc v. John
Kelly, [2002] F.S.R. 5 (Court of Appeal in Northern Ireland) (on appeal).
13
Cadbury Schweppes Pty Ltd v. Darrell Lea Chocolate Shops, [2006] F.C.A. 446 (Federal Court of Australia);
Cadbury v. Darrell Lea, [2007] F.C.A.F.C. 70 (Federal Court of Australia); Cadbury v. Darrell Lea, [2008] F.C.A. 470
(Federal Court of Australia)

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 with distinctiveness, the Indian Registry has adopted the EU’s position that the same
distinctiveness criteria – as required by section 9(1) – should apply for all types of trademarks,
including shapes.14 Here establishing acquired distinctiveness for shape or 3D marks, under
the proviso to section 9(1), is relatively straightforward.15

The Manual adopts the Windsurfing factors16 to help structure the evidence required: the
applicant’s market share under that mark, the intensity and geographically widespread usage,
investment in promoting the mark, evidence of consumer recognition of the sign as a mark and
evidence from the trade that the sign is considered to function as a mark.

In general badge of origin isn’t affixed to shapes but still, shape is considered as a relevant
parameter for granting trade mark registration.

The Trade Marks Act, 1999 talks about it in S. 9(2):-

It gives certain conditions based on which registration can’t be granted and so it becomes an
implied fact that in all the other cases registration would be granted.

1. Shape arising out of nature of goods.

2. Shape is necessary to obtain technical results
3. Shape gives away value of goods.

CASE:

1. Dyson Ltd. v. Registrar of Trade Marks17

Plaintiff claimed trade mark registration for the transparent bin which formed the
external body of their vacuum cleaner. UK officer denied saying that it lacked acquired
distinctiveness and also, communicates its function.
Case initially went to H.C. and later was transferred to ECJ on the confusion as to
whether it had inherent distinctiveness or not.

14
Draft Manual Ch II, at 5.2.5.3.
15
Draft Manual Ch II, at 5.1.3. A mark that is said to have acquired a distinctive character must be shown to have
come to operate as a guarantee of origin. For that to be so consumers must rely on it as a means of returning to
the same undertaking if their experience of its products is positive, or to avoid that undertaking if their experience
is negative.
16
Windsurfing Chiemsee GmbH v. Boots- und Walter Huber, (C-108/97) [1999] E.T.M.R. 585 (European Court of
Justice)
17
[2007] Bus LR 787

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 ECJ held that it wasn’t a mark and so, no registration was given.
2. Coca Cola
Plaintiff’s bottle shape had a patent which got expired in 1940. Later, they filed for
registration under Trade Marks Act, 1938. But, House of Lords held that bottle wasn’t
a mark and so, denied registration.
But, places like Malaysia and Singapore etc. gave it registration based on acquired
distinctiveness.

VIII. CONCLUSION
The registration of non-traditional trademarks is still at its infancy stage in India. Since the
need of trademarks is at its zenith in today’s times, the scope of non-conventional trademarks
is yet to be tapped. Various aspects such as holograms, motion/gesture trademarks etc. need to
be streamlined in order to cope up with the current realities. In reading interviews of Indian
practitioners on the registration of non-conventional shape marks in India, one is immediately
struck by the sense of excitement at the possibilities. There is a palpable sense that Indian trade
mark law has finally caught up with modern marketing techniques. Registries and court around
the world are adopting a cautious approach to such subject matter. The Draft Manual picks up
on several of these issues and provides a robust structure within which to allow the gradual
evolution of principles in this area. It should prove to be a valuable and flexible resource. Non-
conventional marks are remarkably unsteady badges of origin and rarely used without
additional word or figurative marks to back them up.

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