ANALYSING NON-TRADITIONAL TRADEMARK AND ITS REGISTRATION – AN INDIAN PERSPECTIVE

Estimated Reading Time: 12 minutes

INTRODUCTION

For a long period, the definition of trademark consists of words, logos, symbols or any such kind of combination which captures the eye of the consumers, but since the pattern of the marketing has been changing, a lot of producers are adopting various other techniques to capture the consumer’s eye, and this aggressive market competition gave rise to non-traditional trademarks. Those trademarks which do not fall under the purview of the traditionally followed trademarks are called non-traditional trademarks or non-conventional trademarks like marks obtained from the shape, smell, sounds, taste, and texture – all these kinds of the trademark are called non-traditional trademarks. This kind of trademark is not specifically covered under the definition of ‘trademark’ in the India Trademark Act, 1999 but has been interpreted under the same domain.[1]

The courts have started receiving the registration application of trademark dealing with the trademark symbols like short cartoons, taste, scents, the position of the label on the product, and so on. Now the issue which comes into picture is the abstract nature of the legal definition of the term ‘trademark.’ On one hand the definition of the term ‘trademark’ as mentioned in the Trademark Act,1999 has a broader understanding which incorporates both functional and ontological status of the signs while on the other hand, the definition consists of the trademark for registration talks about the traditional form of trademark that is usually either visible or consists of words or characters. This kind of expressed form of trademark registration leaves a blank spot when it comes to legal interpretation. As there is a change in the change of the concept of the trademark, the legal authorities need to have an expressed incorporation of these terms under the definition of Trademark.

In this research paper the author will be analyzing the non-traditional trademarks, its registration, need of an expressed statute to deal with such kinds of trademarks, and the issues faced by the legal system while dealing with such kinds of trademarks. The scope of the research is only confined to the Indian legal system and certain important conventions.

While doing this research the author has divided the paper in four parts and has tried to cover maximum out of the above-mentioned topic.

WALKING THROUGH THE ROAD DOWN

We all know that the ‘trade name’ is presently characterized as an imprint that can be spoken to graphically and recognize the merchandise or administrations of one gathering from those of others, the corrections explicitly accommodate the enlistment of non-conventional brand names. These imprints are those which don’t fall under the classification of traditional stamps, for example, marks including letters, numbers, logos, pictorial portrayal, images, or those components which comprises the mixes of such components.

As per traditional understanding of the topic of “trade names” incorporates words, logos, images or a mix of words or images thereof. According to the Indian Trademarks Act, 1999 trademark is defined as “an imprint equipped for being spoken to graphically and which is fit for recognizing the products or administrations of one individual from those of others and may incorporate state of merchandise, their bundling and mix of tones.”[2]

An “unregistered brand name” is one which doesn’t have legitimate advantages. In any case, sometimes, an unregistered brand name may get customary law benefits. Unregistered imprints are characterized as imprints which are not enlisted according to merchandise or administrations (that is names, imprints or logos utilized comparable to a business) under the Trademark Act. In spite of the fact that under Section 27 no activity for encroachment is considered unregistered brand names, it can at present be secured by methods for custom-based law misdeeds of passing off. To prevail in such an activity, it is important to set up that unregistered imprint has equivalent generosity or notoriety regarding the item, administration or business with which it is utilized. Some kinds of non-traditional trademark are as follow:

  • Colour Mark

It is well known that an extraordinary and unmistakable brand name with snappy colour combination is probably going to remain on the psyche of the consumer even if he is that literate to remember the name of the brand. But then to regardless of whether a particular colour combination or pattern only is qualified has been a disagreeable zone of debate.

The Act of 1999 doesn’t explicitly accommodate the enlistment of a solitary colour combination and pattern, in spite of the fact that it doesn’t explicitly bar the thought of the same. So as to make sure about a solitary shading brand name enrolment, one must show to the Registrar the proof of obtained peculiarity in India, preceding the date of recording of the single shading brand name. Practically speaking, a blend of tones has a superior potential for success of enlistment, given that it is fit for recognizing the merchandise of one dealer from those of another.

In the case of Colgate Palmolive Company v Anchor Health and Beauty Care Pvt Ltd,[3] the court decided that a shading mix was a ‘brand name’ under the demonstration, as the demonstration’s definition incorporates no prohibition and even a solitary tone is qualified for assurance under the law of passing off. This debate concerned the litigant’s red and white shading blend for dental items, which was like the shading mix of 33% red and 66% white on the offended party’s item holder.

Also, in the case of Deere and Co. v S Harcharan Singh[4] Delhi High Court pronounced “the word mark JOHN DEERE, the jumping deer logo and the organization’s green-and-yellow shading imprint to be notable brand names. In Deere, John Deere got mindful of the assembling and offer of ranch gear across India under the exchanging name and imprint SURINDERA, which looked to some extent like John Deere’s items and joined its notable logo and shading blend. Surindera’s green and yellow shading mix was fundamentally the same as John Deere’s – the body of the vehicle had been painted green with the haggles seat painted yellow.”

  • Sound Mark
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The capacity of a sound brand name is to be exceptionally recognized by the business authorities, the origin of items/administrations by methods for a brief snippet. By and large, applications as melodic documentations depicting the sound meet these prerequisites, while onomatopoeic portrayals don’t. The Trademark Registry in India has allowed enrollment to ICICI Bank Ltd for its sound imprint by enlisting the very notes that structure the jingle. ICICI Bank is the main Indian organisation to acquire sound imprint enlistment.[5]

The main sound imprint to be conceded enrollment by the Trademark Registry was “Yahoo! Yodel.”[6] In an achievement exchange mark enlistment for India just as Yahoo, the nation’s exchange marks vault in 2008, conceded enrollment to India’s first “solid imprint” also known as “sound track” to Sunnyvale, California-based web firm Yahoo Inc’s. three-note Yahoo warble. Consequently, Allianz is accounted for to have effectively enrolled its sound imprint in India and the Trademarks Registry has additionally as of late acknowledged Intel’s application for enlistment of its sound imprint.[7] At the international level one of the most important cases which was in limelight for the registration of sound was the Metro Goldwyn Mayer (MGM) Corporation, for the registration of the sound of Lion roaring through the submission of the ‘Lion roar’ audio.[8] 

  • Smell

If we refer to the sound trademark and colour trademark, the quantities of smell or fragrance or olfactory brand names enrolled are essentially less. One reason could be expected its failure of realistic portrayal. The “graphical portrayal” of aromas up to this point has exclusively been through verbal mood. A verbal portrayal of smell can be abstract and can’t generally give a full-evidence strategy for recognizing and distinguishing one smell or aroma from another. Another usually utilized type of graphical portrayal of a fragrance is depicting the smell as a compound equation.

There have not been many smell brand names enlisted till date. The smell of newly-cut grass for tennis balls was enrolled as a European Trademark. A case of an enrolled smell brand name in the US is of a “vanilla” aroma or scent when applied to office supplies, along with certain other aroma trademark registration was also provided to the owners in US like flowery musk scent, bubble gum scent, pina colada scent.[9] The enlistment of non-customary brand names is still at its outset stage in India. Since the need of brand names is at its pinnacle in the present occasions, the extent of non-customary brand names is yet to be tapped. Different perspectives, for example, multi-dimensional images, movement/motion brand names and so on should be smoothed out so as to adapt up to the current real factors.

LEGAL ISSUES

  • Validity & Burden of Proof

Sec 31 of the Trademark Act talks about the “registration of the trademark based on the pima facie evidences and its validity.”[10] As per the current section the enrollment of any kind of trademark must be done with a ‘prima facie’ proof which can prove its legitimacy. This point makes it clear that the trademark may be effortlessly presumed that with the enrollment, the brand name forces a lot of advantages as far as its evidential worth.

Now it is also to make clear that the approval of the trademark to the act just on the basis of a brand name which is enrolled can be accepted. It is the obligation of the proprietor to demonstrate the worth and the altruism joined to the products or administrations if there should be an occurrence of an unregistered brand name. In countries like India where enlistment of a brand name isn’t required, an unregistered brand name may increase some security simply after the item acquires some degree of notoriety on the lookout, deals with an exceptionally persuading position in the business and gets notable among the huge level of public. Consequently, the weight of evidence lies with the owner when the legitimacy of an unregistered brand name is tested by somebody.

  • Remedies

It is a well proven fact that the enrolled brand name obviously gets a lot of insurance and priority in case any contest emerges identifying with the imprint and its legitimacy, the enlisted proprietor has an arrangement for legal cure under the Trade Mark Act, though, an unregistered imprint is less ensured and gets benefits under custom-based law.

In the event that any outsider uses the characteristic of the enrolled owner without his assent, the owner has a lawful cure in his grasp and he can make a move for such encroachment. An unregistered brand name, then again, doesn’t secure the legal right of encroachment yet can sue the outsider and make a move for passing-off. An unregistered brand name can look for cures under the customary law framework. In the famous case of State of U.P. v Ram Nath, Partner M/S Panna Lal[11] the court has clearly drawn the line between the registered and unregistered trademark. The court has “found it necessary to interpret Section 77, 78 and 79 of the Act, 1958, after interpreting these 3 sections the court has said that the word ‘registered’ which is not used by the legislature is an intentional act of the legislature authority, in case of dealing with the issue of penalties, offences, & procedure. Therefore, it is proven that the unregistered trademark owner also has a right to criminal action against the offender.”

  • Symbol or Logo Rights

The owner can utilize the trademark image once they apply the imprint on their products or administrations of all things considered which is the necessity for a registered mark. Registered image which is presented at the time of the registration, shows that the imprint utilized by the owner is a brand name of that specific owner and can only be utilised by the person who has asked for it. This logo is typically written in little textual style and is set alongside the imprint. While in the case of an unregistered brand name holder can utilize the TM or the brand name image but an unregistered brand name holder has no privilege to utilize the registered image. The registered image is a portrayal of the enrolled brand name. When a brand name is enlisted effectively with no complaint and the authentication is given, the owner can utilize the registered logo alongside the trademark logo.

  • Geographical Area
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In the case of already enrolled brand name gets cross country security coming about because of such enlistment and in the event that any candidate wishes to get his imprint enrolled universally, at that point he can do as such by making a worldwide application on the structure recommended by the Common Regulations for global enrollment of the brand name. So, enrollment makes it simpler for a brand name to make due on the lookout while then again, the owner of an unregistered brand name needs to demonstrate the geological zone in which his item has increased huge validity among the purchasers.

REGISTRATION OF NON-TRADITIONAL MARKS

As per international laws and globally recognised arrangements allude to an open-finished definition of an exchange mark. Article 15(1) of TRIPS recognizes that any “sign, or any blend of signs, fit for recognizing the products or administrations of one endeavour from those of different endeavours, will be fit for comprising an exchange mark.”[12] While as per Article 2(1)(m) of the Agreement, the term ‘mark’ is considered as something which “incorporates a gadget, brand, heading, name, ticket, name, signature, word, letter, numeral, state of products, bundling or mix of tones or any blend thereof.”

Now if we talk about the Indian perspective regarding the registration of the non-traditional trademark. It is a known fact that India is a perceived worldwide pioneer in data innovation and the Indian Intellectual Property Office creates extensive incomes through its enlistment exercises, so funds ought not be a deterrent. Ongoing years have seen a promise to digitisation and a restricted example of enrolments is by and by accessible online.[13] The cutting-edge innovation in the society as per their need, has created items more to see, smell, contact taste or hear in the actual world than individuals would somehow get past their non augmented resources. Be that as it may, these brand names are relatively hard to be enrolled in because of legal exclusions and absence of uniform practice.

Non-customary brand names are innovative approaches to convey with shoppers the wellspring of cause of merchandise/administrations. It offers dynamic chances to dealers in the worldwide market. These imprints bring a high capability of financial resources and leave on purchasers’ further extent of business impression with its interesting smell or contact. Elements to decide if these signs could be enrolled include: the business impression of the imprint, the significant practices in the exchange, whether the sign is remarkable in the specific field or is just a refinement of a typical element, regardless of whether there are any auxiliary employments of the sign. An imprint that didn’t inalienably work as an imprint in view of its temperament, proof of obtained peculiarity would be required. As examined previously, brand name laws of a few wards incorporate non-conventional brand names as qualified topics of assurance by not barring them from the meaning of brand name.

CONCLUSION & SUGGESTION

As per the above based discussion it can be said that in every case it is better to enrol a brand name regardless of whether it isn’t compulsory in India and numerous different nations. Enrollment of a brand name has a few motivating forces. Enrollment watches it from any activity of encroachment which to some degree offers alleviation to the enlisted brand name holders. The enrolled brand name holders can record a lawful suit for encroachment and since the brand name is enlisted, the weight of evidence doesn’t lie upon the holder. Enrolled reserved items make a superior brand picture on the lookout and get more inclination over the unregistered brand names by the purchasers. Furthermore, ultimately yet in particular enlistment likewise assumes an essential function in brand advancement which is incredibly vital for the development of exchange and business.

Subsequently we can say it is essential to enrol a brand name to make kindness in the exchange market framework. To get by in a simple way and for a more extended timeframe on the lookout, each person, associations, organization or association, worker’s guilds or legitimate affiliations ought to apply for the brand name, save the necessities of the Trademarks Act are met.


[1] Non-Conventional Trademarks: A Legal Analysis |, https://www.khuranaandkhurana.com/2019/04/15/non-conventional-trademarks-a-legal-analysis/.

[2] 1_43_1_trade-marks-act.pdf, http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf.

[3] Colgate Palmolive Company v Anchor Health and Beauty Care Pvt Ltd., 2009 (40) PTC 653

[4]

[5] Dev Gangjee, NON-CONVENTIONAL TRADE MARKS IN INDIA, 22 29 (2010).

[6] P. Manoj, Yahoo awarded India & first sound mark; Nokia in queue, mint (2008), https://www.livemint.com/Home-Page/5z2B1NQUy3YyPkpRDp789M/Yahoo-awarded-India8217s-first-sound-mark-Nokia-in-queue.html.

[7] Yet another Sound Mark Granted | SpicyIP, https://spicyip.com/2009/07/yet-another-sound-mark-granted.html.

[8] MGM’s Lion’s Roar and Sound Trademarks – Trademark Law Firm, http://trademarkspatentslawyer.com/trademark-law-firm/.

[9] The 10 Current Scent Trademarks Currently Recognized by the U.S. Patent Office, (2015), https://www.mentalfloss.com/article/69760/10-scent-trademarks-currently-recognized-us-patent-office.

[10] Section 31, Trademark Act, 1999

[11] State of U.P. v Ram Nath, Partner M/S Panna Lal, AIR 1972 SC 232

[12] WTO | intellectual property – overview of TRIPS Agreement, https://www.wto.org/english/tratop_e/trips_e/intel2_e.html.

[13] Trademarks Comparative Guide – Intellectual Property – India, https://www.mondaq.com/india/intellectual-property/788896/trademarks-comparative-guide.

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