In this blog post, Pramit Bhattacharya, Student, Damodaram Sanjivayya National Law University, writes about unconventional trademarks. The law in India regarding unconventional trademarks has also been discussed in this post.
Whenever we are talking about trademarks, whether conventional or unconventional, the concept of Intellectual Property Rights (IPR) comes in. IPR gives the ownership rights right to a person, who has created any creative or innovative product, to own innovation or creative idea in the same manner as any other physical product.[1] Trademark, like copyrights and patents, is one of the parts of IPR laws, and its function is to protect the “mark” of the product or the service. So, a trademark can be defined as any mark which can be represented which can be represented in some form and can distinguish the product or service which it is representing. A trademark can be any particular color, any particular shape, name, shape, signature, sound, etc.[2] 
In recent times, the field of IPR has seen a lot of development, especially with regards to trademarks. The TRIPS agreement recognizes various kinds of trademarks. India has also made necessary changes in its laws to comply with the provisions of the TRIPS agreement. There are certain kinds of unconventional trademarks which are beyond the current regime of trademark laws, both at the international and the local level. So it becomes important to know how these unconventional trademarks are recognized.
It is noteworthy that trademark laws in India have always kept its pace with the ever changing times.[3] The current trademark law in India is the third one and is in full compliance with the international standards. The legislature has been working constantly to create laws which are in compliance with the globally accepted TRIPS Agreement. 
Every day, new technology is being developed. New products are being created and sold. Nowadays, even the way to advertise the products has also changed. With the growing competition in the economy due to globalization and liberalization policy, the selling power of a brand is no longer limited to the quality of products. It also depends on how much people recognize a product, and how much customer base can a product create through its mark. Apart from marks, jingles, songs or stories which are related to the product can also create recognition of a product or a brand among its customers.[4]
In India, the earliest law relating to trademarks was the Trade and Merchandise Act, 1958. It was later replaced by the Trademarks Act, 1999, through which the law relating to trademarks was amended and consolidated. The introduction of the new Act was considered necessary by the legislature so that India could comply with the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement and to meet its obligation as the member of the World Trade Organization. Going by the old act, unconventional trademarks like any particular sound, color scheme, etc. couldn’t be registered.
Both, international treaties and national laws aim to provide a wide definition for the word trademark. According to Article 15 (1) of TRIPS[5] The agreement, Trademark means any sign or combination of signs which can distinguish the product from any other product. For instance, registration of sound as a trademark is very common in the US and the European Countries.
The Indian Legislature and the Judiciary have adopted a developing approach towards the Trade Mark laws and hence the position in India is not yet concrete. The Indian Judiciary is taking guidance from precedents where the matter is settled to develop its law.
What are Unconventional Trademarks?
When talking about trademarks, traditionally trademarks can be defined as any mark which is unique to the product and was identified with the origin of the product. An unconventional trademark is a new type of trademark which does not fall into the category of conventional or traditional trademarks. These trademarks fulfill the conditions of being a trademark but are difficult to register because of their unusual nature.[6]
In recent years, the registering authorities have faced many challenges due to the number of trademarks brought forth for being registered. These unconventional trademarks included texture, shape, scent, outline, body movement, and even Tarzan’s yell.[7] This rise in the number of unconventional trademarks can be attributed to the non-concrete legal definition provided for a trademark. On one hand, trademark laws emphasize on having an open definition for the term, where the function of the mark is given primary importance.[8] Any mark which fulfills the commercial function of differentiating the said product from other products can be registered as a trademark. On the other hand, the development of the law relating to a trademark has been in a way which gave more preference to traditional and conventional marks.
Certain conditions are required to be fulfilled to register an unconventional trademark-
- The mark should be intrinsically distinctive.
- The mark should be able to distinguish the particular product from other products.
- The mark should be capable of graphical representation.
These kinds of unconventional trademarks raise a fascinating question that what all can be included within the ambit of a trademark. Considering the Indian scenario, the laws are developing. It was reported that the sound marks for Yahoo![9] And Allianz Aktiengesellschaft[10] Were registered by the Indian Trade Mark Registry. The Delhi High Court also gave a favorable decision against a trade mark infringement which was claimed by “Zippo Lighters” to protect the shape of their products.[11]
It has been observed that earlier unconventional trademarks were thought to be unregisterable. But this situation has changed and even trademarks like shape, color, sound, smell, etc. are being registered as trademarks.[12]
Laws in India
The trademark law in India has developed a lot since the last decade. To meet its obligation under the Paris Convention for Protection of Industrial Property and the TRIPS Agreement, the Trademarks Act, 1999 was enacted (in force since 2003). After the enactment of the Act, a lot of further development was made, for instance, electronic filing of a trademark application.
Section 2 (1) (zb) and 2 (1) (m) of the Trademarks Act[13] Should be read together. Interpretation of these two sections shows that definition of a trademark includes packaging, shapes, color, etc. Notwithstanding these provisions, special care should be taken when registering trademarks like color, smell, sound, shape, etc.
It is not necessary that nonconventional trademarks can always be defined and represented in a graphical manner, but they still can be used to describe a product, provided that they clearly define the product.
The Indian Legislation, on the other hand, has laid explicitly the need for marks to be graphically represented. It is conditional that a mark should be graphically represented when-[14]
- The sign can be precisely determined by the graphical representation.
- The mark or sign can be replaced by the graphical representation.
- It is practicable for a person to understand what the trademark stands for.
Therefore, when India granted registration for sound trademarks, India simply borrowed the Shield Mark doctrine which was given in the case of Shield Mark BV v Joost Kist, by the ECJ. The ECJ regarded the description of sound by its written description and held that since the written description of a sound lacked the clarity and precision, it cannot be considered a graphical representation. But the Court also opined that if the sound was distinctive and people were able to recognize it, there was no reason why such sound couldn’t be registered as a trademark.
In India, the Trade Mark Registry has not explored much in the area of sound as a trademark. The government has turned its attention towards formulating clearer laws and efficient and transparent working of the Registry.
Concluding Remarks
Technically speaking, there exists no difference between conventional and non-conventional trademarks. The law clearly states that if a sign or a mark is capable of distinguishing a product from other products it can be considered as a trademark. Even unconventional trademarks fulfill that requirement. It is just that unconventional trademarks are of mystifying origin, and hence, it is just a bit difficult to register them. The law relating to trademarks is very dynamic. The law should also be flexible so that it can accommodate the changes taking place.
Footnotes:
[1] Anita Rao and V.Bhanoji Rao, Intellectual Property-A Primer(1st edition, Eastern Book Company)
[2] Source http://www.businessgyan.com/content/view/623/220/
[3] Introduction to Intellectual Property-theory and Practice(Kluwer Law International,1997)
[4] Rachna Bakru & Manav Kumar, “India’s Approach to Non-Conventional Trademarks”,http://www.worldtrademarkreview.com/Magazine/Issue/32/Country-correspondents/India-Ranjan-Narula-Associates
[5] Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh; Agreement Establishing the World Trade Organization, Annex 1C (1994) 33 I.L.M. 1197.
[6] Emerging Trends In Intellectual Property Law: Non-Conventional Trademarks by Institute of International Trade, available at www.iitrade.ac.in
[7] Non-Conventional Trade Marks In India By Dev Gangjee Vol. 22(1)
[8] Unconventional Trademarks: The Emergent Need For A Change by Harsimran Kalra
[9] P. Manoj, Yahoo Awarded India’s First Sound Mark; Nokia in Queue LIVE MINT, Aug. 22, 2008; Yahoo! Yodels into India’s Trade Mark Registry MANAGING INTELLECTUAL PROPERTY WEEKLY NEWS, Sep. 1, 2008.
[10] Yet Another Sound Mark Granted, available at, http://spicyipindia.blogspot.com/2009/ 07/yet-another-sound-mark-granted.html.
[11] Zippo, IA 7356/2006, (High Court of Delhi) (13 July 2006) (H.R. Malhotra, J)
[12] Vaver D, “Unconventional And Well Known Trademarks”, Singapore Journal of Legal studies, 1 (2005) 16.
[13] https://indiankanoon.org/doc/117176/
[14] http://www.lawctopus.com/academike/sound-unconventional-trademark/#_edn26
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