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In recent years, trademark registries and courts have grappled with applications for silhouettes, shapes, scents, textures, short cartoons, single colors, body movements, etc as trademarks. This invasion of the unconventional is due to the abstract nature of the legal definition of a trademark. On one hand, the trademark law has embraced an open-ended definition that emphasizes the functional, rather than the ontological status of a sign. Any sign which does the communicative work of a trademark, distinguishing goods or services on the basis of trade origin, can be registered as one. On the other hand, the trademark registration systems have historically developed around paradigmatic subject matter: a conventional or traditional trademark that is visual and consists of words, devices, or a combination of the two.
While such new types of marks raise interesting conceptual questions, they are of more immediate and pragmatic concern to an Indian audience. It has been widely reported that the Indian trademark registry recently registered a sound mark for Yahoo, followed by another for Allianz Aktiengesellschaft.
The Indian Trade Mark Registry in its revised Manual for Trade Mark Practice and Procedure. Several sections of the manual have started considering new types of marks specifically referring to the non-conventional subject matter, in contrast to the Trade and Merchandise Marks Act of 1958. Experience across jurisdictions suggests that the tribes of signs prepared to take advantage of this hospitality can be divided on the basis of sensory perception. These separate into visible signs:
1. 3D marks
and non- visible signs:
1. Sounds Musical and Non- Musical
The Manual acts like a guide to the Examiners who apply the law while ensuring transparency for the users of the registration system.
At present, the demand for Non- Conventional marks is relatively modest in India. Yet interest in such marks is gathering pace and this promises to be a future growth area, as producers and advertisers strive to stand out from the crowd through innovative marketing techniques. For example, the triangular shape of Toblerone Chocolate has acquired trademark significance over time. This open-ended approach to the subject matter is also evident in the Act of 1999. A trademark is defined in section 2(1)(ZB) as follows:
“ trademark’ means 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 the shape of goods, their packaging, and combination of colors.”
Graphical Representation and Procedural Requirements:
The first set of challenges arises when an application is made to register unconventional subject matter. It becomes impossible to represent a sound or scent on a paper. The draft manual, therefore, devotes several pages to the graphical representation for color, scent, hologram, and shape marks. it specifies that the graphical representation should be independently sufficient to identify the applicant’s mark; the representation should stand in place of the mark, and it should enable those inspecting the register to understand what the mark is. In doing so, it expressly maps on to UK registration practice and adopts the Sieckmann criteria. Ralf Sieckmann applied to the German trademark registry to register a scent mark for various services. He attempted to represent the mark by:
(i) Indicating the name of the Chemical Substance. Methyl Cinnamate
(ii) The Structural Formula for that substance (C6H5-CH=CHOOCH3)
(iii) Indicating laboratories where samples may be obtained
(iv) Submitting an Odour Sample in a container
(v) Describing the Scent in words as “Balsamically fruity with a slight hint of cinnamon” was easily accessible and intelligible, it was not clear, precise, or objective. On the other hand, the chemical formula was objective and a layman won’t have understood the same. On closer scrutiny, the Sieckmann criteria seem to have been developed with traditional visual marks in mind, and in satisfying some criteria an applicant may lose out on others.
In the Liberal case, where the court confronted an application for the pure color orange for telecommunications-related goods and services, it decided that merely reproducing the color on the sheet of paper was not sufficient and the written description might be imprecise. However, the UK Registry has accepted these color codes along with the written description of the color as an adequate graphical representation. By contrast, the draft adopts a curiously worded and ambiguous approach for representing single colors. It acknowledges the UK position in permitting color codes, the states:
“the law or practice in India does not provide for such interpretation”
It goes on to refer to a case where the applicant used extremely technical terminology to explain color and thereby failed the graphical representation requirement, as the basis of Indian Law, without specifying what will satisfy graphical representation criteria for color marks.”
Finally, there are two concluding points:
1. Flagging up of non-conventional marks on the application form, so that special rules can be applied. The Trade Mark Rules and Manual are very clear that in certain cases, the application form must indicate the manner in which the mark is non-conventional. A drawing of a 3D mark should not be treated as a simple device mark at the time of registration, since this allows the applicant to escape the stricter scrutiny applicable to shape marks.
2. Trade Mark Examiners are entitled to ask for further and better particulars, including a written description of the trademark being applied for. Under Rule 29(3)(ii) “Where, however, the registrar considers that the reproduction of the mark furnished by the applicants does not sufficiently show the particulars of the 3D mark, he may call upon the applicant t furnish… a description by words of the mark”. While the written description requirement is not compulsory, under Rule 25(12) for suspected non-conventional marks this should be liberally used to request additional information so the sign being applied for can be defined appropriately. The aim of this section of the article has been to highlight the importance of procedure when it comes to non-conventional marks.
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 with distinctiveness, the Indian Registry 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. Here establishing acquired distinctiveness for shape or 3D marks, under the proviso to section 9(1), is relatively straightforward. The Manual adopts the Windsurfing factors to help structure the evidence required: the applicants’ market share under that market, the intensity and geographically widespread usage, etc. however, one of the fundamental requirements is that the shape must have been used as a trademark. It is not sufficient to claim a shape mark based on evidence of general advertising containing pictures of the product shape and consumer recognition of the associated mark. The evidence must specifically show that the relevant public trusts the shape to indicate a commercial origin in the same way that they would trust a mark.
Manual echoes Henkel’s decision. As a practical matter, it is difficult for shape marks to establish inherent distinctiveness. According to ECJ, such distinctiveness is still attainable for a sign “which departs significantly from the norm or customs of the sector thereby fulfills its essential function of indicating origin”. The Manual also adopts this position. The trademark registry no doubt will be approached by applicants with the novel, well designed, or highly stylized products claiming that they also function as trademarks. However, a shape that is simply different or varies from that of competing products is not inevitably a trademark. The requirement that a shape departs significantly from the norm and thereby fulfills its origin indicating function needs to be taken seriously.
In the EU, unsuccessful arguments to lower this inherent distinctiveness threshold have included suggestions that:
a) the 3D sign is simply a variant of a common shape
b) the distinctiveness threshold is crossed if a 3D sign is simply novel
c) if its components such as geometric shape and color, albeit individually commonplace, combine in non- obvious ways
d) there is sufficient difference between the features of the sign and that of products, which is not attributed to a technical reason
e) the relative public are specialist and sensitive to minor differences
f) where the 3D mark is for everyday consumer products
Thus the formula for inherent distinctiveness for shapes mandate that it;
a) departs significantly from the norm and thereby indicates the origin
b) it is applied to goods for which consumers are unusually sensitive to this difference.
Thus there is a palpable sense that the Indian trademark law has finally caught up with modern marketing techniques. Registries and courts around the world are adopting a cautious approach to such subject matter. The 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. Non-conventional marks are remarkably unsteady badges origin and rarely used without an additional word or figurative marks to back them up. No manufacturer of mineral water is likely to do away with the company name or brand and rely solely on the shape of the bottle when selling the product. Such marks should therefore be given a cautious reception.
About the Author: Ms. Sheetal Tiwari, Trademark Attorney at Khurana and Khurana and can be reached at email@example.com