Registration of Unconventional Trademarks in India

A trade mark may be a word signature, name, device, label, numerals or combination of colours used by an undertaking, on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking. Under the Trade Marks Act, 1999, goods and services are classified according to the International Classification of goods and services. Schedule IV of the Act provides a summary list of such goods and services falling in different classes: but this is merely indicative. The Registrar is the final authority in the determination of the class in which particular goods or services fall.

The different types of trademarks available for adoption are:
# Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
# An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
# Letters or numerals or any combination thereof.
# The right to proprietorship of a trademark may be acquired by either registration under the Act or by use in relation to particular goods or service.
# Devices, including fancy devices or symbols
# Monograms.
# Combination of colours or even a single colour in combination with a word or device.
# Shape of goods or their packaging.
# Marks constituting a 3- dimensional sign.
# Sound marks when represented in conventional notation or described in words by being graphically represented.

The Trade Marks Act, 1999 replaced the Trade and Merchandise Marks Act 1958; comprehensively amending and consolidating the law relating to trade marks in India. The new Act was considered necessary in view of the developments in trading and commercial practices, increasing globalization of trade and industry, the need to encourage investment flows and transfer of technology, the need for simplification and harmonization of trade mark management systems and to give effect to some important judicial decisions. Non-conventional trademarks like combination of colours per se, three-dimensional marks, smells, sounds, and taste, were not capable of being registered under the Act of 1958.

The new Act specifically provides for the registration of the shape of goods, their packaging and combination of colours as trademarks. Although smells, sounds, taste and holograms are not specifically mentioned, the predominant legal opinion seems to suggest that the newly amended definition of trade mark is wide enough to include these non-conventional marks within its ambit. Since the definition of mark is inclusive in as much as it states specifically includes a device etc., it is submitted that the mark would also include smells, sounds, moving images and holograms.

With respect to colours, the definitions of trade mark and mark only refer to a combination of colors. The difficulty arises when an applicant chooses to make an application for a single colour only. My submission is that the definition of mark and trade mark does not exclude a single color.

Sub Rules (3) and (4) of Rule 29 of the Trade Marks Rules, 2002 provide that where the mark is a three-dimensional mark, the reproduction of the mark must consist of a two dimensional graphic or photographic reproduction as follows, namely:

i) The reproduction furnished must consist of three different views of the trademark.

ii) Where, the Registrar considers that the reproduction of the mark furnished by the applicant does not sufficiently show the particulars of the three dimensional mark, he may call upon the applicant to furnish up to five further different views of the mark and a description by words of the mark.

iii) If the Registrar is still not satisfied, he may call upon the applicant to furnish a specimen of the trademark.

iv) Where the application for the registration of a trade mark consists of the shape of goods or its packaging, the reproduction furnished must consist of at least five different views of the trade mark and a description by word of the mark. If the registrar considers that these views do not sufficiently show the particulars of the shape of goods or its packaging, he may call upon the applicant to furnish a specimen of the goods or packaging as the case may be.

Smell or scent is not directly referred to in the definitions of mark or trade mark under the 1999 Act. However, the definitions do not exclude smell or scent. No smell or scent trademark has been advertised in the Trade Marks Journal since the Act and Rules framed there under came into force on 15th September 2003.

A precise written description can represent a scent. The application should include the trademark, which is represented graphically, for example, the scent of roses. It should be followed by a clear an accurate description, as for instance, the scent of roses applied to cycle tyres and this must be set out in the application for registration. Such a written description is the only practical way to describe a scent or smell and conveying an easier understood meaning to a person who wants to search the Register of Trade Marks.

There is nothing to prevent sounds from being registered as trademarks as well, even though sounds have not been specifically mentioned in the definitions of mark or trade mark. These sounds must be capable of graphical representation. A musical notation for instance, would be acceptable as graphical description of a sound mark. If the sound emanates from a musical instrument, then this should also be mentioned. Onomatopoeic words, sonograms or spectrograms may also be accepted as graphical representations.

Even holograms or moving images are not specifically included in the definition of mark or trade mark. However, there appears to be no reason why they may not be registered as trademarks. A portion of the sequence comprising the entire moving image, such as the first or last frame could be provided as long as the description of the mark clearly references the entire sequence. A single image may not adequately represent the mark, and it may be preferable to juxtapose several representative frames, to give a better sense of the overall sequence.

There is nothing to show in the Act or Rules there under to treat non-conventional trademarks different from traditional trademarks. In fact, the inclusion of shape of goods, packaging, or combination of colors in the definitions of mark and trade mark seems to show that there is no different treatment to accord to non-conventional trademarks. The test of registrability of the trademarks is whether the mark indicates a source or origin. Tests for deciding whether a trademark is inherently distinctive have been laid down in India, U.K. and Australia and would be applicable on a case-to-case basis since the Trade Marks Registry is yet to publish a Manual of Practice and Procedure.

Such a manual would considerably assist an applicant to lead proper evidence of distinctiveness. It will take considerable effort on part of Organizations such as AIPPI (Indian National Group) and IPLPA (Intellectual Property Law Practitioners Association), particularly in terms of capacity building. Officials of the Trade Marks Registry can be trained in the modern law of trademarks including the registration of non-conventional trademarks.

The  author can be reached at: aamit@legalserviceindia.com