A Research Paper On Non-conventional Trademarks

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Introduction

Trademarks act as the lungs of advertising or promoting a brand. Companies by providing satisfactory goods and services stand out in the market, earn goodwill and register their trademark for their consumers to distinguish its product from other products in the market. Considering the main aim of registering a trademark, which is to protect the goodwill and authenticity of a company and its product, the scope of what constitutes a trademark has been expanding as per the need of the hour.

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Traditionally trademarks comprise visible signs such as letter, word, brand, name, signature, device, heading but as the social media and digital marketing influenced the current market, companies have changed their way of approach towards marketing and are gradually shifting towards non-visible signs. Non-visible signs such as sound and scent are considered as non-conventional trademarks and can be registered under Trademarks Act, 1999. Though the Act states that a trademark means any mark that is graphically represented to distinguish goods or services of one person from another, non-conventional trademarks will fall under this ambit though they might not be graphically represented. Shape of goods, packaging and combination of colours shall also be entitled as non-conventional trademarks.

Types of Non-conventional trademark

Sound marks

Sounds or audio clippings can be registered as trademarks since they can be represented graphically in the form of musical notations and descriptions. Since there is a lack of pitch and the duration of notes, mere sequence of musical notes does fall under the condition of clear representation. The WIPO Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) has suggested that “offices may require that the representation of sound marks consist of a musical notation on a stave, a description of the sound constituting the mark, or an analog or digital recording of that sound – or of any combination thereof. Where electronic filing is available, an electronic file may be attached to the application. However, for some jurisdictions, only a musical notation on a stave may be considered to adequately represent the mark.” The major criteria to be evaluated while registering a sound mark is its distinctiveness. The average consumer should find exclusive association between the brand and the sound mark.

MGM’s lion roar, Intel’s music and Pillsbury’s “childlike human laugh” complies with these criteria and are trademarked. In India, the first registered sound mark was “a human voice yodeling Yahoo” in 2008. Similarly, Nokia’s sound, Tarzan’s yell, National Stock Exchange Bombay’s theme song and Raymond’s theme song have been registered as trademarks.

Sheild Mark BV v. Joost Kist in ECJ

In this case, Sheild Mark BV had registered a trademark on a melody from Für Elise (A composition of Beethovan) which was graphically represented by notes transcribed on a stave which was used for radio advertising campaigns. Similarly, in 1993 for the purpose of branding, Sheild Mark BV issued news sheets and the song was played every time it was taken out of the stand. He also registered a cockcrow that was played each time his software was started. In 1995, Kist a consultant used Für Elise and a cockcrow in his software leading Sheild Mark filing an infringement suit against him. The Court of Hagues, Netherlands claimed that the Government of Benelux can refuse to register sounds as trademarks. Hence, Shield Mark appealed to the Supreme Court and the following issues were brought to light.

  1. Does article 2 of Directives preclude sounds to be registered as trademarks.
  2. If it does, how to graphically represent sound or audio to be registered as trademarks.

To answer these issues, the court referred to the case where it was held that smell marks shall be included in trademarks since Article 2 does not expressly exclude smell marks from being registered. Hence the court held that sound marks, similar to smell marks, fall under the realm of Article 2 of the Directives. The court also held that sound and audio cannot be expressed by mere words such as “a cockcrow” or “child laughing” because it would lack precision and would make it difficult to determine the scope of protection.

The court came to this conclusion because the sound mark registered by Sheild Mark transcribed on stave cannot be trademarked since there is no clarity on pitch and the duration of notes forming a melody. Hence, a stave divided into bars and showing, in particular, a clef (a treble clef, bass clef or alto or tenor clef), musical notes and rests whose forms (for the notes: semibreve, minim, crotchet, quaver, semiquaver, etc.; for the rests: semibreve rest, minim rest, crotchet rest, quaver rest, etc.) indicates the relative value and where appropriate, accidentals (sharp, flat, natural) and the notations determining the pitch and time of music shall constitute a representation of melody that is required to register as trademark.

Colour marks

A colour or combination of colours can be statutorily registered as a trademark provided it exhibits strong and persuasive evidence to prove the nexus between the colours and the brand. Single colour can be a secondary trademark only if it is peculiar in nature and the nexus between the colour and brand should have been established earlier. The applicability of the colour also plays a major role in determining it as a trademark, for instance, functional colour cannot be trademarked. The registration of single colour mark has been limited due to less availability of colours. Victorinox, a knife manufacturer has registered the colour of the handle and Deutsche Telekom AG has registered a single colour as a trademark. Christian Louboutin’s red sole has been registered as a trademark because of the established nexus with the brand and distinctiveness. Standard Chartered Bank has registered the combination of blue and green as its trademark. In the case of Deere and Co. Vs S. Harcharan Singh, the Delhi High Court recognised yellow and green as in the colour scheme of John Deere’s logo as a trademark.

Parle Products Private Limited Vs J.P and Co.

Parle Glucose Biscuits had yellow and creme colour packaging with a small girl in it. The manufacturer has registered a trademark on the products. The defendant also manufactured biscuits which has similar packaging with the same colour combination but slightly different subjects in the wrapper such as a picture of a lady instead of the girl and of a cow instead of two calves. The appellant filed a passing off suit in district court which was then appealed to the High Court of Mysore and then to Supreme Court. It was held in the lower court that there were a lot of dissimilarities than similarities in the wrapper, hence it did not constitute an infringement. The High Court held that despite both the products having similar colour combination, that is, half yellow and half white, the other designs that the respondents bore were completely different.

The issue that the Supreme Court of India dealt in this case was whether the defendant’s product was passing off the plaintiff’s product. In the judgement it was mentioned that the court did not refer to the decisions referred to at the Bar and was judged on its own exclusivity of the case. The Supreme Court held that “an ordinary purchaser is not gifted with the powers of observation of Sherlock Holmes” and it would be easy to mistake both these products as one since the colour schemes are the same and the other subjects are deceptively similar. This law laid down in this case was upheld in the case Ramdev Food Products Ltd Vs Arvindbhai Ramabhai Patel in the year 2006.

Surya Food and Agro Ltd Vs Om Traders

“PriyaGold” has been a well-established biscuit since the year 1994. The manufacturers of the biscuit also have “Butter Delite” which has attractive packaging and reached huge sales in the year 2015. The defendant also manufactures a similar biscuit product under the name “Butter Krunch” and has similar packaging as that of the plaintiff’s. The plaintiff filed a permanent injunction restraining sale, advertising and promoting the product with the same packaging which causes passing off in Delhi High Court.

The major issue on which the Court acted upon was whether the defendant’s product infringes the trademark packaging of the plaintiff’s product. For a colour mark to be represented as a trade mark, the colour should be peculiar in nature making the consumers relate the colours with the brand.

In this case, though the defendant could not prove their prior establishment the court disposed off the suit on the basis of the case Mahendra Paper Mills Vs Mahindra and Mahindra that the Court should keep in mind the perspective of an ordinary man and non-discerning eye. It has also been stated that the colours used in the packaging of the defendants does not constitute infringement since many other biscuit manufacturers use the same color for packaging as it attracts kids. As these colours do not have distinctiveness and fanciful features, it does not fulfil the requirement for being a trademark.

Shape Marks

A shape of a product and its packaging shall fall under the realm of trademarks, provided the shape is not a result of the significant functional aspect of the product and an arrangement based on the nature of the good. Like sound mark and colour mark, shape marks shall also exhibit distinctiveness and uniqueness. The Trademarks Act, 1999 mentions that a shape mark should not be a mere result of the nature of the goods, or a shape to perform its function to obtain a technical result or a shape that gives substantial value.

The shape of Hershey’s Kisses and the shape of the bottles of Coca- Cola drink, Absolut Vodka and Bulgari are all registered trademarks. In India, Delhi High court recognised the shape of lighters from the company Zippo as a trademark.

Gorbatschow Wodka KG Vs John Distilleries

In this case the dispute arises over the shape of the bottle of vodka. The plaintiff Gorbatschow owned a visually appealing and distinctive shape of vodka bottle which was introduced in the year 1958. Later in 1999, after various changes, the image of a bird was embossed in the bottle. The plaintiff claimed that the shape of the bottle has acquired secondary meaning and has been a goodwill for the brand. The defendant on the other hand, has also been manufacturing and selling vodka in a deceptively similar bottle. The defendant had registered the shape under Designs Act, 2000 and claimed that the product was targeted at highly educated, rich and discerning and hence the test of passing off won’t be applicable since the consumers are not of average intelligence. The issues that concerned this court of law was

  1. whether the plaintiff has established goodwill and reputation by virtue of prior usage,
  2. whether the shape of the bottle was copied and does it cause deception and confusion in the market,
  3. whether the defendant had the intent to deceive and
  4. whether using such similar bottles cause confusion in the minds of the targeted market.

The court cited the case of Hiralal Prabhudas Vs Ganesh Trading Co. and held that the court must prima facie consider the broader and salient features of both the shapes. The essential feature of the plaintiff’s bottle contains bulbous dome making it novel and distinct. The defendant’s product is similar to the same bulbous dome. Though the defendant had registered the design in Designs Act, 2000 the true test is not to check whether the defendant did prior art research. The court also cited the case John Haig and company Ltd Vs Forth Blending Company Limited, and held that if the mark or getup gets known for the brand name in the market, the adoption of a deceptively similar mark will cause confusion and will lead to violation of the rights of the first trader.

The court held that if the defendant is allowed to sell his similar product, it would subsequently affect the goodwill and reputation of the plaintiff despite the defendant’s target market. Social and economic stereotypes cannot be used as a measurement to categorise consumers and a consumer shall buy brands irrespective of his/her economic class. The assumption made by the defendant in this regard seemed to be malicious.

Coca-Cola Co. Vs Narsing Rao

The plaintiffs in this case are the largest soft drinks company in the world and the company in India who is authorized to prepare, package and sell the products of the former company. The defendant produces carbonated water under the name of Kelby resonating the name and shape of packaging of product Kinley, trademarked by the plaintiff. The bottle of Kelby is virtually the same as the bottle of Kinley.

The Delhi High Court referred to Parle Products Vs J.S and Co and Gorbatschow Wodka KG Vs John Distilleries and held the defendants liable for passing off. A similarity in visual appearance can confuse a lay man with respect to the authenticity of the product.

Surya Food and Agro Ltd Vs Om Traders

“PriyaGold” being the plaintiff and “Butter Delite” being the defendant, the plaintiff filed a permanent injunction restraining sale, advertising and promoting the product with the same packaging which causes passing off in Delhi High Court.

The major issue on which the Court acted upon was whether the defendant’s product infringed the trademark of the plaintiff’s product and to answer this, the court referred the case Gemmy Industries Corp Vs Fun-damental Too Ltd, wherein it was held that a shape mark of a well-established industry custom is not protected and the size and shape of the product that already exist in the market are either rectangular or circular, so does the defendant’s. Hence the plaintiff cannot claim that the packaging infringes his product shape.

Motion Marks

Any sequence of pictures leading to a gesture or motion or a moving image shall be known as motion mark. Holographic images also fall under the realm of motion mark. This type of trademark has evolved as the multimedia technology kept growing. To register a motion mark, several frames or images are required to ascertain the motion. Nokia’s handshake, Lamborghini’s opening of the car door and Toshiba’s logo in motion are all registered trademarks.

Case R 2661/2017-5

Salt Bae, a Turkish chef applied for a trademark in the EU for his sprinkling of salt in his cooking videos that went viral in social media under class 25, 30 and 43. The EU rejected the application stating that there is no uniqueness or distinctiveness about the motion but it is a cook merely sprinkling salt in the food and hence it cannot be registered as a trademark according to Article 7(1)(b) of EU Trademark Regulations. The cook then filed an appeal and submitted YouTube views and subscribers and social media followers as evidence to show consumer recognition and identity of service. The major issues the Board dealt were

  1. whether consumer recognition and identity of the service was being served
  2. whether this motion can be constituted as a mark for the mentioned service

The Board held that social media platforms are used to promote one’s business and hence the numerical facts on social media cannot prove the original identity of the service. The evidence only proved that the sign had become famous and was in use. To answer the second question at hand, the evidence submitted by the appellant proved the origin of this mark. The Board allowed the appellant to register the trademark under class 25 and 30 but not 43.

Olfactory Marks

Olfactory marks refer to the uniqueness in smell. The products that usually use smell as an identifier of their brand shall be perfumes, cleaners, cosmetics and toiletries and fabric softeners. The wording of the description of the smell has to match the olfactory senses of a prudent person, nonetheless the olfactory senses differ from person to person. The fragrance will vary in different temperatures, humidity and the conditions of wind leading to variations in intensity of the smell. We could also infer from the abovementioned statement that a particular smell may be conceived differently in different geographical area. The applicability of smells as trademarks is slightly different from that of other non-conventional trademarks as functionality of the mark stays insignificant in case of smell marks. The smell marks are classified into functional and non-functional trademarks depending upon the inherent attributes for instance, the functional aspect of a perfume. The smell of fresh cut grass has been a smell mark for Tennis balls, though the trademark is not active right now. In India, though the law recognizes registration of smell marks as trademark, this aspect is in its infancy.

Sieckmann Vs Deutsches Patent

In this case, the applicant filed a trademark for smell and described it as “balsamically fruity with a slight hint of cinnamon” for a purely chemical substance methyl cinnamate. This was rejected on the basis that the mark failed to meet distinctiveness. The applicant filed an appeal and the court focused on the following issue whether a trademark consists of a visually perceived mark according to Article 2 of the Directive.

The court clarified that a trademark should be graphically represented and the provision mentions the registration of olfactory marks but it cannot be perceived visually per se though it can be graphically represented. Whereas, in the United Kingdom, any mark which has established a nexus between the product and the mark, which is of distinct nature and has established prior use can be construed as a trademark.

The court cited Case C-349/95 Loendersloot [1997] and Case C-39/97 Canon vs Metro-Goldwyn-Mayer and held that a chemical formula depicting this scent is not clear and precise. A written description of the olfactory mark was not sufficient to comprehend the smell. Hence the trademark was rejected.

Conclusion

Trademarks are as old as mankind but the non-conventional trademarks are of recent origin. In India, very few companies have identified the importance of registering their non-conventional trademarks. As the modern market for trade has been confined to social media and technology, there is an urgent need to protect non-conventional trademarks than conventional trademarks. Non-conventional trademarks such as the colour combinations of the logo of Starbucks, McDonalds and Dominos are easily identifiable even without the use of their brand name and hence it becomes easier to replicate any mark with the availability of technology. It is concluded that as the global market has widened, the need to protect the goodwill and reputation/ authenticity of brands and products has become the need of the hour. 

16 August 2021

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