In an era of immersive branding, where jingles, hues, and design placements resonate more than words or logos, the scope of what constitutes a “trademark” is evolving rapidly. Traditionally, trademarks in India have been restricted to visual identifiers, such as names, logos, symbols, or combinations thereof. However, sensory marketing has triggered a legal rethink, nudging jurisdictions like India to engage with non-traditional trademarks — notably, sound and color marks.
Under Section 2(1)(zb)1 of the Trade Marks Act, 1999, a “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”.
The requirement for graphical representation has historically posed a challenge for the recognition of non-traditional trademarks. However, with the digital economy creating space for brand signals that transcend the visual, the Indian legal system is gradually shifting away from a purely conservative interpretation.
Legal Basis for Sound and Color Trademarks in India
While the Trade Marks Act, 1999, offers a broad framework, it does not explicitly reference non-traditional marks, such as sounds and single colors. However, judicial and administrative interpretations, supplemented by the Trade Marks Rules, 2017, have carved out a procedural path, particularly for sound trademarks.
Under Rule 26(5) of the Trade Marks Rules2, applicants may submit MP3 recordings (up to 30 seconds) along with a graphical representation (usually musical notation) to apply for a sound mark.
In contrast, color marks, particularly single-color trademarks, are not independently codified under Indian law. While the Trademarks Act provides for registration of a combination of colors that are unique and unconventional, Courts have required applicants to prove that the single color has acquired secondary meaning—i.e., that consumers exclusively associate the color with a particular brand and the product offered. This introduces a higher burden of acquired distinctiveness, consumer recognition, and proof that the color is non-functional.
Key Judicial and Registry Milestones in India
India’s evolution toward recognizing non-traditional trademarks has been shaped by a handful of significant cases. Here are five key legal milestones:
Yahoo! Inc. (2008)3
India’s first registered sound mark, Yahoo’s iconic yodel, was accepted following submission of an MP3 file and musical notations. This case opened the door to the formal recognition of auditory identifiers.
ICICI Bank (2010)4
The bank’s corporate jingle became one of the early sound marks to be granted protection. It reinforced that auditory distinctiveness and consumer association are sufficient grounds for registering a sound as a trademark.
Colgate Palmolive v. Anchor Health (2003)5
The Delhi High Court upheld Colgate’s rights over its red and white trade dress, affirming the enforceability of color combinations under Indian trademark law. It stressed the risk of consumer confusion as the basis for protection.
Christian Louboutin SAS v. Nakul Bajaj (2018)6
The court recognized the red sole of Louboutin shoes as a single-color trademark with acquired distinctiveness in India. This judgment became a significant Indian acknowledgment of a color used on a product, as an intellectual property (IP) asset.
Levi Strauss & Co. v. Imperial Online Services Pvt. Ltd. (2021)7
The Delhi HC acknowledged Levi’s arcuate stitching as a valid position mark, citing over 150 years of use to establish secondary meaning. This expands legal protection to the visual positioning of marks on products.
Procedural Hurdles and Evidentiary Requirements
Despite these precedents, procedural and evidentiary hurdles persist for non-traditional trademarks in India.
Graphical Representation Challenge:
Marks like smell, taste, or texture cannot be represented graphically in a standardized manner, which continues to be a statutory bottleneck.
Lack of Uniform Criteria:
The lack of precise guidelines for sensory marks leads to inconsistency in acceptance and high refusal rates.
Requirements for Sound Marks:
Registering a sound mark, an increasingly vital component of brand identity, requires precise adherence to specific requirements. To secure protection for an auditory brand identifier, applicants must typically fulfill the following:
- MP3 File Submission8: A high-quality MP3 audio file, limited to a maximum of 30 seconds, must be submitted to provide an authentic and clear auditory representation of the mark.
- Visual Representation: This is critically supplemented by a clear visual depiction of the sound. For musical melodies, visual representation is through a succession of musical notes.
Requirements for Color Marks:
Securing trademark protection for a color, or a combination of colors, is a nuanced yet powerful strategy for brand differentiation in the global marketplace. Unlike traditional word marks, single-color marks are generally not considered “inherently distinctive.” This means that to qualify for registration, a color must have acquired “secondary meaning” or “distinctiveness through use” in the minds of consumers, unequivocally identifying the source of goods or services. The process typically involves satisfying three crucial requirements:
1. Clear Visual Representation
The applicant must provide a precise and unambiguous representation of the color (or) combination of colors being claimed. This is often achieved through the use of an internationally recognized color matching system, such as the Pantone Matching System (PMS). Specifying a Pantone code (e.g., Pantone 2685C for Cadbury’s purple or Pantone 1837 for Tiffany’s blue) ensures that the exact shade is defined, preventing ambiguity and facilitating consistent application across various media and product lines. This detailed specification is critical for the trademark office to accurately record the mark and for enforcement purposes.
2. Evidence of Acquired Distinctiveness
This is arguably the most challenging hurdle for single-color mark trademarks. Since a color is not inherently distinctive, the applicant must demonstrate that, through extensive and consistent use, consumers have come to associate that specific color exclusively with their brand and product. The burden of proof rests firmly on the applicant, who must provide substantial evidence to establish this “secondary meaning.”
Key types of documents often include:
- Market Share Data: Significant market share, particularly when the color is a prominent feature of the product or packaging, can indicate a strong association in the public’s mind.
- Advertising and Promotional Spend: A substantial investment in advertising and marketing campaigns that prominently feature the color can demonstrate efforts to build brand recognition and link the color to its source. Detailed records of ad placements, media spend, and campaign duration are vital.
- Duration and Exclusivity of Use: A long period of continuous and exclusive use of the color in commerce strengthens the argument for acquired distinctiveness. The longer a color has been used without others imitating it for similar goods/services, the more likely it is to have become a source identifier.
- Sales Figures and Commercial Success: High sales volumes and overall commercial success, directly linked to the products bearing the color mark, can serve as compelling evidence of consumer recognition and association.
- Media Attention and Recognition: Articles, features, and public commentary acknowledging the color as a distinctive brand element can also contribute to the evidence.
3. Proof that Color is Not Functional or Generic
The “functionality doctrine”9 is a critical limitation on trademark protection, particularly for non-traditional marks like colors. Trademark law aims to protect source identifiers, not to grant monopolies over features, that competitors need, to produce their goods or services effectively.
Therefore, the applicant must prove that the color does not serve a practical purpose or provide a utilitarian advantage to the product or service. For example, registering the color red for a fire extinguisher would likely be rejected on functionality grounds, as red is widely recognized as a safety color for such devices.
Case law frequently explores the nuances of functionality. For example, while Christian Louboutin has successfully defended its red sole trademark on shoes, the argument hinges on the specific placement and combination of the red with the contrasting shoe upper, rather than the color red itself being inherently functional for footwear.
In summary, while the allure of a distinct color for branding is significant, the path to obtaining trademark protection requires meticulous preparation and robust evidence demonstrating that the color has transcended mere aesthetics to become a recognized indicator of origin in the consumer’s mind.
Comparative Gaps and Global Influence
India’s intellectual property framework currently presents comparative gaps when viewed against more expansive global jurisdictions, particularly regarding non-traditional trademarks. The EUIPO, under Regulation (EU) 2017/1001, embraces multimedia marks and has removed the graphical representation requirement10, and Japan readily acknowledges motion and sound marks through visual and audio submissions; India’s approach remains more conservative. Similarly, the USA, via the Lanham Act, extends protection to non-visual trademarks like color marks, provided they unequivocally function as source identifiers and are not merely functional11.
This disparity in recognition, coupled with India’s limited harmonized procedures and international reciprocity agreements for non-traditional trademarks, significantly complicates cross-border IP enforcement and hinders the seamless globalization of Indian brands, underscoring a critical area for potential development to foster greater international competitiveness.
Key Takeaway
India has made meaningful progress in recognizing non-traditional trademarks, particularly in sound and color domains. Judicial activism has partially compensated for legislative inertia.
However, to truly modernize its trademark regime, India must:
- Codify clear standards for sensory marks
- Expand acceptable formats beyond graphical representation
- Train officials of the Trademarks Registry in handling non-traditional trademarks.
- Harmonize with international frameworks for reciprocity and enforcement.
Sensory branding is no longer an indulgence—it is a strategic asset. India’s legal system must evolve to reflect this shift in branding paradigm.
FAQ
1. What are non-traditional trademarks?
Non-traditional trademarks go beyond names and logos to include sound, color, smell, motion, texture, and position marks—any feature that identifies a brand’s source.
2. What is the requirement for a trademark to be registered in India?
It must be capable of graphical representation and must be distinctive. For non-traditional marks, this is often a high bar due to a lack of format flexibility.
3. What are famous examples of registered sound and color trademarks?
- Sound: Yahoo!’s yodel, ICICI’s jingle
- Color: Cadbury’s Purple (globally), Christian Louboutin’s red sole (India)
4. What are the challenges in registering non-traditional trademarks?
- Proving acquired distinctiveness
- Meeting graphical representation standards
- Lack of consistent examination guidelines
- Registry hesitance and limited precedents
5. Can non-traditional trademarks be licensed or assigned?
Yes, non-traditional trademarks, even if unregistered, can be assigned or licensed like conventional trademarks.
