In a conventional sense, trademarks generally consist of words, letters, numerals, logos or include a combination of these elements. A trademark acts as a source of commercial origin and helps in identifying the products (or) services of one entity from that of another. They play a crucial role in branding by establishing recognition and trust among consumers. Trademarks ensure that customers associate specific qualities and characteristics with a particular product or service. 

In today’s competitive market, there is a growing trend of businesses adopting new branding strategies to stand out from the crowd. One among these strategies is the utilisation of unconventional trademarks. Unconventional trademarks, also referred to as non-traditional trademarks, go beyond traditional symbols and include colours, smells and sounds among many others. These unconventional elements offer innovative ways for companies to connect with consumers and set themselves apart. 

In India, the perspective on unconventional trademarks is evolving within the legal framework. As businesses explore new branding strategies, the Indian legal system is adapting to accommodate the protection of non-traditional trademarks. Understanding the significance and challenges of unconventional trademarks is crucial for businesses navigating the dynamic landscape of Intellectual property rights in India.

What are Unconventional Trademarks?

Unconventional trademarks encompass both visible and non-visible signs and include sounds, smells, colours, shape of goods, touch/texture, taste, motion/moving images, position marks etc. Apart from relying upon visual cues, unconventional trademarks rely on sensory experiences to evoke brand recognition. Unconventional trademarks engage other senses such as hearing, smell and touch to create memorable brand associations with consumers. 

The significance of unconventional trademarks lies in their ability to offer innovative branding strategies in today’s competitive market. With increasing consumer sophistication and evolving marketing trends, businesses are leveraging unconventional trademarks to create memorable brand experiences. For example, distinct sounds associated with brands like Netflix or NBC help consumers identify and connect with these companies beyond visual cues.

In modern branding strategies, unconventional trademarks play a crucial role in establishing emotional connections with consumers. They go beyond mere identification to evoke feelings, memories, and associations, enhancing brand loyalty and differentiation. By tapping into sensory experiences, unconventional trademarks enable brands to stand out in crowded markets and resonate with target audiences on a deeper level. 

Legal Framework and Challenges

The legal landscape governing Trademarks in India is primarily regulated by the Trademarks Act, and the corresponding Rules. As per the Act, the definition of a “Mark” includes a device (logo), heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.  While the definition comprises a few unconventional trademarks, the Indian legal framework does present a few difficulties and challenges in obtaining registration for unconventional trademarks. 

The Trademarks Act defines a ‘Trademark’ as a mark capable of being represented graphically which means that the primary requirement for a mark to be registered is that it  must be capable of being represented graphically in paper form (or) digital form in order to qualify for registration. This poses a significant hurdle for unconventional trademarks such as smell and taste marks which are non-visual in nature and incapable of effective graphical representation. In other instances, such as a motion or multimedia mark, the representation may include a series of still images which, combined together, depict movement. The lack of specific guidelines on representation of such marks leads to uncertainty among practitioners. As a result, many unconventional trademarks struggle to meet the primary criteria for registration in India. 

Another aspect that poses a challenge is the criteria of distinctiveness. Apart from a very few instances where an inherently distinctive mark is registered, non-traditional trademarks must have acquired distinctiveness to be considered eligible for registration. In such a scenario, proving distinctiveness is an arduous task since these types of mark often deviate from conventional visual signs. The burden of proof in demonstrating consumer recognition and association becomes difficult as compared to conventional trademarks. 

Furthermore, conducting searches for unconventional trademarks is a challenging endeavour since there are no consistent search terms or codes available in the search database. There are no practical guidelines or measures to undertake searches for such marks and therefore, it proves to be a tough assignment. Moreover, providing precise definitions for unconventional trademarks is of paramount importance while applying for registration. Defining an unconventional trademark plays a crucial role since imprecise definitions might result in greater or lesser extent of protection than intended for the mark. 

Coupled with the challenges mentioned above, the lack of established precedents and guidelines for non-traditional trademarks adds to the ambiguity surrounding their protection in India. While some jurisdictions have adopted a liberal approach towards unconventional trademarks, India’s legal framework remains rigid and takes a relatively conservative approach towards such trademarks. 

Types of Unconventional Trademarks

Sounds: Sound trademarks are unique auditory elements used to identify the source of products or services offered in commerce. In India, a sound mark should be graphically represented through a succession of musical notes, with or without words. It must be submitted in MP3 format and should not be longer than 30 seconds. Sound marks have become popular over time and they now play a crucial role in branding, contributing to consumer recognition and brand loyalty. Examples of famous sound trademarks include the iconic jingles of companies like Intel and Nokia, which are instantly recognisable to consumers worldwide.

Over time, sound marks have gained recognition and protection under trademark law worldwide. Most jurisdictions have established frameworks for the registration and enforcement of sound trademarks, acknowledging their significance in modern marketing strategies. In India, Some notable examples of sound marks include the Yahoo yodel and the corporate jingle of ICICI Bank.

Colours: Colour trademarks involve the use of specific colours or colour combinations to identify the source of goods or services. Colours can be powerful marketing tools and enable businesses to create memorable associations with consumers. Nevertheless, there are specific criteria that must be met for registration of colour trademarks. While the Trademarks Act provides for registration of a combination of colours that are unique and contemporary, a single colour must have gained secondary meaning in connection with a product or service for which it is offered in order to qualify for registration.  

In a landmark judgement and for the first time In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985), the U.S. Court of Appeals recognized that a single colour trademark could be registered if it had acquired distinctiveness with respect to a particular product. This was the first instance where a single colour was recognized to perform the functions of a trademark. The Court ruled that Owens Corning had acquired the right to prevent third parties from using the colour Pink in their fibreglass insulation products since it had come to be solely associated with them.  

In India, a few notable examples of a single colour trademark is the Purple colour of Cadbury, Red for Christian Louboutin Soles, Turquoise on Jewellery for Tiffany & Co. An illustration of a trademark consisting of a combination of colours include Green and Yellow for Tractors manufactured by John Deere. 

Smells: Smell trademarks, though less common, are used to distinguish the olfactory characteristics of products or services. The registration of smell marks presents unique challenges, particularly concerning their graphical representation and distinctiveness. Unlike visual or auditory elements, smells are inherently subjective and may vary in perception among individuals. Another prerequisite for smell marks is that the scent must be a novel feature of the product and it should not perform a functional feature of the product or service. For example – a scent or odour applied to a perfume (or) cream cannot be trademarked. 

Despite these requirements, in jurisdictions such as the United States and United Kingdom, companies have successfully registered smell trademarks. Most recently, a Dutch company registered the scent of freshly mown grass for its Tennis balls. Other notable illustrations include Bubble-gum scented shoes and sandals, Strawberry scented toothbrushes.  

In the Indian scenario, the legal position of smell trademarks remains largely unexplored, and there are limited precedents or guidelines governing their registration and enforcement. At present, there are no registered smell marks in India. 

Shape of goods/3D marks: These types of unconventional trademarks basically form the aesthetics of a product consisting of the shape of a product or its packaging. It does not comprise two-dimensional marks such as a word, numeral or logo. The Trademark Act provides for registration of the shape of goods and packaging since it fulfils the criteria of graphical representation. However, there are certain restrictions to the registration of a shape mark and the first condition is that the shape must not be a part of the nature of the product itself. It must not be a means to obtain a technical result and should not add substantial value to the product. For example- the round shape of a cricket ball cannot be protected since it would form the very nature of the ball. While the registration of a shape mark is challenging compared to conventional trademarks, these marks tend to have a higher visual appeal and create an indelible impression among consumers. 

In Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd. European Union Court of Justice [2002] ECR I-5475, Case C-299/99 (2002), Philips had initiated infringement action against Remington Consumer Products for selling trimmers with three headed rotary shavers for which Philips had obtained registration. Consequently, Remington filed for revocation of the said trademark. The Court cancelled the registration of Philips by reasoning that the shape was necessary to obtain a technical result and that it was functional in nature.

Some notable examples of shape and three-dimensional trademarks include the packaging of Toblerone chocolate, the shape of the Coca-cola bottle for its contours and lines, the Zippo lighters iconic shape. 

Motion/Multimedia: Motion trademarks comprise of a series of moving elements not limited to movie clips, moving logos of television shows, videos and elements that keep changing position. When these trademarks are combined with a sound, they are referred to as Multimedia marks. While the Indian Act does not prohibit registration per se, it struggles to accommodate motion trademarks due to lack of established guidelines on graphical representation of such marks. At present, a motion mark can be represented only through a series of still images. It is imperative that the Indian Office starts accepting video clips of such marks to better understand the nature of the mark. 

The first motion trademark to be registered was in 1996 when the USPTO granted protection to the famous Columbia Pictures logo of a Woman carrying a torch. In India, motion trademarks are recognized and the first one to be granted protection was Nokia’s Connecting hands in 2003. Other notable illustrations include Asian Paints “AP Motion mark” and Toshiba’s application for its motion mark “TOSHIBA”. 

Position: A position trademark is a trademark that consists of a specific way in which a mark is affixed or placed on a product. This includes both figurative and colour elements where owners can claim exclusive rights over the way in which a label or a sign is positioned on a particular part of a product. The first and foremost requirement is a detailed description of the position in the product. An example of a position trademark is the red colour at the sole of the bottom of Christian Louboutins shoes.  

There is limited literature on position trademarks and even in jurisdictions abroad, the guidelines are in short supply. In the Indian scenario, a recent development was in Levi Strauss & Co. v. Imperial Online Services Pvt. Ltd. & Ors.,CS (COMM) 657/2021 & I.A. 16736/2021, where the Delhi High Court held that Levis had acquired secondary meaning in its ‘Arcuate Stitching Design’ on its Jeans due to extensive use spanning over 150 years. 

Touch/Texture: When a product has a specific and distinct recognizable structure, the surface of the product when touched must have a unique texture in order to be granted protection. These types of marks are felt using the fingertips and include patterns and shapes as well. This is a marketing tactic companies have adopted in recent times to appeal to visually impaired consumers. 

The first texture mark to be registered was when the Ecuadorian Institute of Intellectual Property in 2004, granted protection to a famous beverage and alcohol manufacturer Diageo, exclusive rights over the surface texture of its Old Parr Scotch whisky bottle. 

In the Indian context, the legal position is still at its nascent stage but was first discussed in Louis Vuitton v Malik (CS (OS) 1825/2003. Louis Vuitton initiated a suit for infringement of its “EPI STYLE” trademark and surface pattern before the Delhi High Court. The EPI STYLE is the unique pattern of the leather’s grain on its handbags. The court recognized Louis Vuitton’s long and extensive use of the EPI pattern since the mid-1980s granted an ex parte interim injunction in their favour. 

Taste: When a particular flavour is applied to a product, it is referred to as a taste trademark. The taste must be inherent to the product itself and must not perform the utilitarian function of the product. For example- a trademark for the taste of Biryani is not viable since it performs the function of making the Biryani. Another challenge in the registration of a taste trademark is graphical representation. The only manner in which a taste can be represented is through written description which is not yet accepted in India. Moreover, a practical hurdle is that for a consumer to experience a taste, the product has to be purchased first and it is impossible to taste the product before purchase. On account of such challenges, taste trademarks in India remain unexplored and there are currently no registrations for taste throughout the world. 

Future Prospects and Challenges

Trademark law in India is undergoing continual evolution to adapt to the changing landscape of marketing strategies and branding practices. As non-conventional trademarks gain prominence in modern marketing strategies, the legal framework must evolve to provide adequate protection and recognition.

Potential changes and reforms in India’s trademark law may include streamlining the registration process for unconventional trademarks, providing precise guidelines for graphical representation, and through judicial precedents. Additionally, the need for enhanced awareness and understanding among stakeholders, including businesses, legal professionals, and consumers, is paramount to ensure effective implementation and enforcement of trademark rights.

Emerging trends in branding, such as sensory marketing and experiential branding, further underscore the importance of protecting unconventional trademarks. As technology continues to advance, new challenges and opportunities may arise, necessitating proactive measures to safeguard intellectual property rights in the digital age.

Frequently Asked Questions (FAQs)

1. Can smells and tastes be protected as trademarks in India?

Smells and tastes are currently not recognized as trademarks in India. This is due to challenges such as the requirement of graphical representation. While there is no explicit prohibition against registering smell or taste trademarks, the practical difficulties in representing these sensory experiences proves to be an obstacle. 

2. What are the challenges in registering sound trademarks in India?

Registering sound trademarks in India faces hurdles primarily related to the requirement of graphical representation. Sound marks must be represented graphically with musical notations, which can be complex and subjective. Additionally, demonstrating distinctiveness and association with a specific product or service poses challenges during the registration process.

3. Are there any successful examples of colour trademarks in India?

There have been successful examples of colour trademark protection in India. Some well-known examples include the distinctive purple colour of Cadbury’s chocolate packaging and the unique Red colour associated with the packaging of Colgate toothpaste.

4. What are the limitations of protecting unconventional trademarks in India?

The primary limitation in protecting unconventional trademarks in India lies in the requirement of graphical representation. Non-traditional trademarks like smells, motion marks and tastes present difficulties in meeting this criterion, which affects their registrability. Moreover, establishing distinctiveness and association with a particular product or service can be challenging, limiting the scope of protection.

5. What steps should businesses take to safeguard their unconventional trademarks in India?

Businesses seeking to safeguard their unconventional trademarks in India should prioritise thorough documentation of the mark’s distinctiveness and association with their products or services. It’s essential to maintain records of consumer recognition and market presence to support trademark registration applications. Additionally, businesses should stay updated on relevant legal developments and seek professional guidance to ensure that trademark protection is handled efficiently.

As businesses explore innovative branding strategies, it becomes imperative to adapt trademark laws to accommodate these changes. Careful consideration of the challenges and opportunities presented by unconventional trademarks is vital. Embracing these changes can foster creativity and promote brand differentiation in the competitive market environment.

Gautham Balaji

Trademark Attorney

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