THE CONTOURS OF NON-CONVENTIONAL TRADEMARKS IN INDIA:

A STUDY

Fundamentals of Intellectual Property Rights

Submitted by

Udit Singh

SM0114034

3rd Year (VI semester)

National Law University, Assam

 Contents

Page No

Table of Cases....................………………………………………………………...................ii

Table of Statutes........................................................................................................................ii

Table of Abbreviation………………………………………………………………………...iii

Introduction………………………………………………………………………....................1

Aim(s)…………………………………………………………………………….....................1

Objectives (s)……………………………………………………………………......................1

Scope and Limitations…………………………………………………………........................2

Review of Literature……...………………………………...…………………….....................3

Research Questions........................................………………………………...….....................4

Definition Clause under Indian Trademark Statute.............................................................4

Concept of 'Graphical Representability'................................................................................6

Sound Marks- Practices Across Jurisdictions.......................................................................8

United States of America.........................................................................................................8

European Union......................................................................................................................10

Ralf Sieckmann Case............................................................................................................10

Registration of Sound Marks: Global Issues.......................................................................12

Developments in India...........................................................................................................12

Colour Marks..........................................................................................................................13
Conclusion…...…………………………………………………………………....................14

Bibliography………...…………………………………………………………......................iii

i
Table of Cases

1. In re Celia, d/b/a Clarke's Osewez

2. In re: General Electric Broadcasting Co. Inc.

3. In re: Morton-Norwich Prods Inc.

4. In re: NV Organon, 79 USPQ 2d 1 639

5. Libertel Groep BV v. Benelux Trade Mark Office.

6. Oliveira v. Frito Lay Inc.

7. Playboy Enterprises Inc v Germain

8. Qualitex Co. v. Jacobson Products Co.

9. Ralf Sieckmann v. German Patent Office

Ride the Ducks LLC v. Duck Boat Tours

Shield Mark BV v Joost Kist h.o.d.n. Memex

Smith Kline and French Laboratories Ltd v. Sterling Winthrop Group

Swizzel's Matlow Ltd's Application (No. 2)

Table of Statutes/Convnetions/Agreements

1988- Lanham Act (US Legislation)

1994- Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)

1994- The Trade marks Act

1999- The Trademarks Act

2002- TheTrademarksRules

ii
Table of Abbreviation

S. No. Abbreviation Explanation

1. edn. Edition

2. Intellectual Property
IP
3. IPR Intellectual Property Rights
4. Ltd. Limited

5. TRIPS Trade-Related Aspects of Intellectual Property Rights

6. v. Versus

7. Vol. Volume

8. WIPO World Intellectual Property Organization

iii
Abstract
The development of 'non-conventional' trademarks, in the arena of trademarks as far as
intellectual property rights are concerned has been immense. With the genesis of such
trademarks in varied forms, as an alternative to conventional trademarks- of sound, colour,
taste, smell, motion, hologram, etc.- opens a wide range of possibilities as far as such marks
being the symbol of upcoming business ventures are concerned.
With the Union government, making entrepreneurial development the centre of its attention,
among other varied agendas- its "Make in India" and "Start-Up India "campaigns, being its
prime programmes, it creates a plethora of possibilities for young entrepreneurs to incline
towards non-conventional trademarks, for their businesses to attract the "distinctiveness"
and "goodwill", the factors determinative of the very substance of a trademark, in the
conventional terms, in other words.
However, while the developments across the world suggest that 'non-conventional
trademarks' are fast gaining ground, India's approach towards adopting this upcoming
concept in the trademarks arena, makes for an interesting study. For howsoever niche 'non-
conventional trademarks' may sound, the legal hurdles witnessed as far as their registration
is concerned (graphical representability and distinctiveness, the fundamental criterion ),
tests which are conclusive of determining the legal status of 'non-conventional trademarks'
and the approach of the Indian judiciary and Trademarks authorities towards the same, over
the last few years makes it an intriguing study. The author shall also attempt to provide a few
solutions to problems identified.
Introduction
As technological advancement grows with leaps and bounds, aggressive forms of marketing
to carve out a place for products, which caters to the needs of the consumers- be it of any
kind- is fast gaining ground too. With multiple players, in each consumer sector, it becomes
extremely imperative that such corporations create a 'space' for themselves- which qualifies
their goods or services as the case may be. This is where the function of a 'trademark'
becomes of utmost significance. A 'trademark' plays that definitive role of creating a 'space'
for a corporations goods or services, by adding 'distinctiveness' and 'goodwill' to such goods
or services. But just 'visual perception of trademarks', to an extent restricted the scope of
trademarks in the authors' opinion. For instance, would a blind individual be able to
distinguish a Mercedes Benz car from that of a Volkswagen car, based on their respective
trademarks?

1
This argument augments the need for alternate forms of trademarks which can be perceived
by other forms of sensation as well. And probably this realization led to the conceptual
formation of non- conventional trademarks. If a trademark could be perceived by other senses
such as taste, smell, etc. what was the possibility of ruling such a scope out? The opinion of
the global community here becomes pertinent to examine.
It was only as far as Article 151 of the Trade-Related Aspects of Intellectual Property Rights
(TRIPS) Agreement is concerned, that the world community chose to keep an expansive
definition as far as a 'trademark' is concerned. The phraseology of the Article (Any sign, or
any combination of signs, capable of distinguishing the goods or services of one undertaking
from those of other undertakings) chose to keep it quite expansive.
Whether a trademark is truly effective or not depends upon its ability to create an impact
upon the minds of potential customers. The abstract nature of the legal definition of a
trademark2 and its open ended character have led to the growth of unique and unconventional
trademarks which have also been supported by the rapid growth in technology. Technology in
such a scenario becomes a credible driving force. As an instance, sound marks and motion
marks would capture the attention of users on the Internet, and the impact which be much
greater than the conventional or traditional trademarks.3

Aim: To study the impact of development of non-conventional trademarks in India.

Objectives:
1. To find out if the arena of non-conventional trademarks has developed in India, with
rapid advent of technology.
2. To investigate if the Indian Trademark registration authorities have been favourable to
the concept of registration of non-conventional trademarks.

1
Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from
those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words
including personal names, letters, numerals, figurative elements and combinations of colours as well as any
combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently
capable of distinguishing the relevant goods or services, Members may make registrability depend on
distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually
perceptible.
2
Dev Gangjee, ‘Non-Conventional Trademarks in India’, National Law School of India Review, Vol. 22(1),
(2010).
3
Beyond Tradition: New Ways of Making a Mark, WIPO Magazine (2004)
http://www.wipo.int/export/sites/www/sme/en/documents/wipo_magazine/7_2004.pdf

2
Scope and Limitations:
The basic premise will deal with the hurdles in the registration of non-conventional
trademarks in India, solely restricting it to sound marks and colour marks among other
prevailing forms of non-conventional trademarks. As a limitation, no empirical study has
been carried out to test the findings of the paper. The study is solely doctrinal in nature.
Review of Literature
Negi & Thakuria: ‘Damages In Trademark Infringement’, J Intellec Prop Rights, Vol. 15,
September 2010, pp. 374-379

Award of damages as a relief in trademark infringement, has increasingly assumed

importance in the modernized economies of the world; though grant of punitive damages is
more recent. Initially, in order to restrain infringers, the courts usually granted injunction and
in rare cases, granted damages. Damages are awarded to monetarily compensate the
aggrieved party that has suffered injury. However, with increasing instances of piracy and
growth of counterfeit goods, the courts have come to realize that awarding punitive damages
may be a necessary deterrent to protect the interest of trademark holders. This article
compares the principles governing damages in trademark infringement in United Kingdom,
European Union, and United States of America while rendering an insight into the principle
of damages as conceived under the Indian trademark law.

Mary Wong, ‘Trademark Infringement Under The 1994 UK Trademarks Act In The
Singapore Context’, 10 S.Ac.L.J., (1998), 157.

With respect to trademark infringement, it should be clear from the above discussion that the
language of infringement adopted by the new UK Trademarks Act is different from that
under the old law. An important question this raises is whether or not trademark infringement
under the new law has also been changed. It would appear that while much that constituted
infringement under the old law remains actionable, particularly “classic” infringement cases
now dealt with by section 10(1), liability for certain other types of infringement may well
have been expanded or, in the case of comparative advertising, lessened.

Anamika Bhaduri, ‘Trademark: Infringement and Passing Off’, Vol. 1 Issue 1 RGNUL
Student Law Review, 121

Trademark law protects a trademark owner’s exclusive rights to use the mark, thereby
preventing any unlawful use of the mark by an infringer. Trademark protects the mark from

3
any unauthorized use of the mark which shall cause confusion in the minds of the general
public. Whenever the plaintiff proves that the defendant has caused confusion in the minds of
the public by using same or similar mark, a trademark infringement claim shall prevail. The
purpose of trademark is to give exclusive recognition as well as protection to a trademark
owner. A claim for infringement will take place in case of a registered trademark whereas
common law recognizes the act of ‘passing off’ which prevails in the case of unregistered
trademark. Whenever the trademark owner proves that the infringer’s mark would cause a
depreciation of value of his mark or would harm the reputation, goodwill of the prior mark,
the trademark owner shall establish his right to protection of the mark. The first and foremost
task of the trademark owner is to prove that the prior mark has a very high degree of
reputation and the infringed mark is similar to his mark and which would cause a confusion
or deception regarding the product in the market. A trademark is generally protected to get
maximum protection although unregistered trademarks also get protection under other
circumstances. In case of passing off, the registration of the trademark is irrelevant and it is a
common law remedy which is completely dependent on the goodwill acquired by the
property.
Research Questions:
1. If Indian Statutes pertaining to law of Trademarks allows the possibility for
registration of non-conventional trademarks (sound marks and colour marks)?
2. If owing to absence to applicable principles in India, what are the prevailing positions
of popular common law jurisdictions such as United States, United Kingdom and
institutions such as the European Union is concerned?
3. What are the prominent prevailing tests existing as regards non-conventional
trademarks (if any)?
4. If there have been cases of registration of non-conventional trademarks (sound marks
and colour marks)?
Definition Clause under Indian Trademark Statute
India repealed the erstwhile Trade and Merchandise Marks Act, 1958 and replaced it with the
Trademarks Act, 1999 in an attempt to consolidate the laws as regards the law of trademarks
in India. However, the prime objective for a new statute was felt in order to comply with the
requirements of the TRIPS Agreement, as India was obligated to as per its membership of the
World Trade Organization.4 Under the previous Act, non-conventional trademarks such as

4
Rachna Bakhru, & Manav Kumar, ‘India's Approach to Non-Conventional Trademarks’ (March 16, 2016,
09:47 PM),

4
colour combinations per se, three-dimensional marks, smells, sounds and tastes were
incapable of being registered. However, the new Act specifically provides for the registration
of the shapes of goods, packaging and colour combinations as trademarks. In India, a "mark"
includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape
of goods, packaging or combination of colours or any combination thereof.5 Furthermore, the
Trademarks Act, 1999 defines a "trade mark" as a mark capable of being represented
graphically and which is capable of distinguishing the goods or services of one person from
those of others and may include shape of goods, their packaging and combination of colours. 6
This definition seems to be influenced by the United Kingdom7. Therefore, the list is not
construed to be exhaustive, and the Draft Manual8 provided by the Controller General of
Patent Designs and Trade Marks (CGPDTM) indicates that marks which are not visually
perceived will be given special consideration on a case-by-case basis.9
Although smells, sounds, tastes and holograms are not specifically mentioned, the prevailing
legal opinion seems to suggest that the newly amended definition of a ‘trademark’ is wide
enough to include non-conventional marks.10Thus, what becomes categorically clear that
there are two essential requirements, which are the sine qua non for a mark to be categorized
as a 'trademark': (a) graphical representability, and (b) distinctiveness.
Thus, if a trade mark is capable of satisfying the above mentioned requirements, non-
conventional trademarks such as sound marks and colour marks too can be considered to be
trademarks for the purposes of the Trademarks Act, 1999. However, a huge drawback to
these requirements however, is that the Trademarks Act, 1999 does not specifically define
what actually constitutes 'graphical representability'. This single handed drawback cripples
the possibility of registering non-conventional trademarks, for how does one graphically
represent sound marks is a glaring lacuna prevalent in the Act of 1999. The Trademarks Rule,
2002 fills in this void, which we shall see in due course. This mandates that the Courts in

http://www.worldtrademarkreview.com/Magazine/Issue/32/Country-correspondents/India-Ranjan-Narula-
Associates
5
Section 2(1)(m) of the Trademarks Act, 1999.
6
Section 2(1)(zb) of the trademarks Act, 1999.
7
Supra note 2, at 68.
8
Infra note 31, Ch II, at 3.1.
9
"The word "mark" is thus intended to be broadly interpreted and no type of sign is automatically excluded
from registration. Marks which will require special consideration are colours, shape of goods, sounds and
smells." See more at Roberto Carapeto, A Reflection About the Introduction of Non-Traditional Trademarks, 34
Waseda Bulletin of Comparative Law Review at 55. (March 17, 2016, 17:57PM)
http://www.waseda.jp/folaw/icl/assets/uploads/2016/02/c35688e10d1c61201172065546b98301.pdf
10
Supra note 4.

5
India have to resort to the views of Courts in other jurisdictions across the world to adjudicate
matters aptly in this developing arena of trademark law in the country.

Concept of 'Graphical Representability'

For a registration form of a trademark to be treated as valid and in consonance with law, the
sign must be capable of being represented graphically, and should be distinctive as mentioned
previously, as per the mandates of Section 2(1)(zb) of the Trademarks Act, 1999. The words
'capable of being represented graphically' would mean that the mark should be such as
capable of being put on the register in a physical form and also being published in a
journal.11 The basic essence behind the need of graphical representability being, that it
appropriately provides a 'fixed point of reference', showing what the mark is.12

The reasoning put forth by courts for the need of graphical representability is worthy of an
examnation. In Swizzel's Matlow Ltd's Application (No 2), 13 the Court went onto elucidate
two fundamental reasons why graphical representation is a chief criterion in such cases, as:

a) To enable traders to identify, with clarity, what other traders (carrying on the same
business or otherwise) have applied for registration as a trademark, and for which
product.
b) To enable the public to determine, with precision, the sign which forms the subject
of the trademark registration.

Graphical representability is not an objective criterion because the degree of precision, which
will render it identifiable is not spelt out anywhere. In other words, the trademark, registered
successfully, must be so concrete in nature, that its representation in the course of trade,
firstly and to realize the object of the Trademarks Act, 1999, secondly are not precarious and
volatile in nature. As an example, clear and unambiguous representation of trademark
provides an evidentiary benefit for successfully maintaining a case for infringement of
trademark under Section 29 of the Act, in an appropriate Court of Law.14

11
K C Kailasam & Ramu Vedaraman, LAW OF TRADEMARKS AND GEOGRAPHICAL INDICATIONS
(2nd edn. 2005) at 132. (Wadhwa and Company, Nagpur)
12
Kitchin David, Llewelyn David et al., KERLY’S LAW OF TRADEMARKS AND THE TRADE NAMESL
(13th edn 2001) at 10. (Sweet & Maxwell, London)
13
Swizzel's Matlow Ltd's Application (No 2), (2000) ETMR 58.
14
§ 29. Infringement of registered trade marks.- (1) A registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark
which is identical with, or deceptively similar to the trade mark in relation to goods or services in respect of
which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as
being used as a trade mark.

6
However, the wide subjectivity for adjudging whether a mark has been graphically
represented or not has been hedged in with certain guidelines in the United Kingdom, and a
mark is said to be graphically represented upon satisfaction of three broad criteria 15 laid down
as:

i. From the graphical representation itself, it is possible to ascertain the mark without
the need for any supporting examples.
ii. The graphical representation can stand in place of the mark itself.
iii. The persons inspecting the trademarks register or reading the trademark journal can
be reasonably expected to understand the nature of the trademark from its graphical
representation. Any colour standards, musical notation, or scientific measurements put
forth to represent marks must be precise and:
a. make it reasonably practical for users of the system to be able to obtain a clear
understanding of the mark, and
b. be able to accurately compare the sign, the applicant uses or proposes to use
with other similar signs.

The aforementioned guidelines, though not 'binding' in the Indian context, nonetheless
provides some credible insight as to how the term solely- graphical representability- is to be
construed by authorities for the purposes of a trademark registration. In the Indian Context
however, the term has to be liberally interpreted, not only to accommodate non-conventional
trademarks, but also while keeping in mind the legislative intent in laying down the wider test
of graphical representability instead of 'visual perceptibility' as used in TRIPS. 16 The mandate
for graphical representation, must always be construed in light of the Trademarks Act, 1999
and the allied Trademarks Rules, 2002 framed under it. Quite pertinent it is to note that Rule
2(1)(k) of the Rules, 2002, defines ' graphical representation' as the representation of a
trademark in 'paper form'. That makes it abundantly clear, that an attempt in registering a
trademark successfully, has always to be done on paper, that is in accordance of the
prescribed form of the Rules, for the registration application. It would also assist the
Trademark Office in maintaining order, uniformity and legitimate records as far as
trademarks are concerned.

Sound Marks- Practices across Jurisdictions

15
UK Trade Mark Registry Manual,, August 1998 Edition at 18; reinforced by Practice Amendment Circular
2/00 cited in Supra note 12.
16
Article 15 of TRIPS Agreement, 1994 lays down that 'Members may require, as a condition of registration,
that signs be visually perceptible'.

7
1. United States of America
There have been various discourses stating sounds affect the perception of quality of a
consumer.17 Such sounds that have a distinctive bearing on a consumer's product choices can
reasonably be classified as sound marks. Scholars have considered that audio and visual
stimuli can remind the consumers of a certain product, service or brand. They are
conspicuous and are readily noticeable since consumers vividly remember the sounds heard. 18
The first recorded instance of a sound mark was when the United States Patent and
Trademark Office had granted trademark to the NBC over the chimes in the year 1971.
In the case of In re: General Electric Broadcasting Co., justification was accorded to the
granting of a trademark to a sound. The court ruled:
Depends on the aural perception of the listener which may be as fleeting as the sound itself
unless, of course, the sound is so inherently different or distinctive that it attaches to the
subliminal mind of the listener to be awakened when heard and to be associated with the
source or event with which it struck.
Thus in other words, for a soundmark to be registered it must be capable of being retained in
the mind of the listener, and thereafter if the listener can associate that very tune or sound
with a good or service, the tune or sound is capable of being registered as a trademark
(soundmark).
In the United States, the liberal wording of the 15 USC § 1127, Lanham Act enables one to
register a sound as a trademark. The words 'device' and 'symbols' were retained even during
the amendment to it in 198819 "so as not to preclude the registration of colors, shapes, smells,
sounds or configurations where they function as trademarks."
The law has grown by leaps and bounds in the United States as far as trademarks are
concerned. Principles and tests have been formulated by courts which equally apply to non-
conventional trademarks too, in the United States. With the law of trademarks in a nascent
stage and growing by the day, probably these principles and tests may be relied on by courts
to make decisions which are good in law.
The law and its subsequent interpretation by courts across the United States are so wide and
liberal, so much so that in the case of Qualitex Co. v. Jacobson Products Co. 20,the court went
onto rule that "almost anything at all that is capable of carrying meaning" could be declared

17
In re Celia, d/b/a Clarke's Osewez, 17 USPQ 2d 1238 (TTAB, 1990).
18
D Maison et al, Predictive validity of the implicit association test in studies of brands, consumer attitudes, and
behaviour, Journal of Consumer Psychology, Vol. 14 (4), 405-415 (2004).
19
S Rep 515, 100th Congress 2d Session 44 (1988).
20
514 US 159 (1995).

8
as a trademark. Amongst the various tests that have been laid down the courts, the three tests
formulated for a 'word' trademark must be utilized in case of soundmark as well, the tests
being that the soundmark as a source identifier, it must be non-functional and simultaneously
must also be distinctive.21
The development of law was further enhanced in the case of Oliveira v. Frito Lay Inc., 22
where the appeals court, though dismissing the appeal claiming trademark rights over a song
for failure to clear the identification with source test, 23 went on to say that "the fact that
musical compositions are protected by the copyright law is not incompatible with their also
qualifying for protection as trademark". The very same court also went on the record to state
that sound marks must be used and, just as in the case of traditional marks, with certain goods
or services to qualify for both registration and protection under trademark law.
The Courts in the United States have developed multiple tests and hinted certain suggestions,
towards the classification of non-conventional trademarks. In yet another case of In re: NV
Organon24the court went onto suggest that the utilitarian functionality factors which were
delineated in the case of In re: Morton-Norwich Prods Inc. 25were also equally applicable to
sound marks. The latter case, concerned with the legal dynamics of taste marks, it also went
on to point out important factors for protection of sound marks. The factors enunciated were
as follows; a) the existence of a utility patent; b) advertising touting utilitarian benefits; c)
availability of equivalent options; d) evidence of manufacturing advantage. These factors
necessarily go on to imply that there was a requirement of competitive need which was
crucial for functional analysis of the soundmark.
An important consideration here opined by several scholars, being that if a trademark owner
goes ahead promoting the sound solely in terms of its function, as against the source identifier
test, the claim of protecting the rights of the trademark owner would be hard to maintain.26
There have been a catena of cases, where it has been upheld that the nature of the mark
formed no basis for refusing to register it, if it performed as a source indicator. 27 in other
words, a sound could function as a source indicator in those situations wherein such sounds
acquire a definitive position and its utility is for such a purpose, in a manner that it leaves a

21
Brinks Holfer Gilson & Lione, The Sound of unconventional marks in the United States, World Trademark
Review, (2007).
22
Oliveira v. Frito Lay Inc., 251 F3d 56 2d Cir 2001.
23
A Girl from Ipanema- Stan Getz and Astrud Gilberto. It went on to win the Gammy award for 'Record of the
year' category in 1964.
24
In re: NV Organon, 79 USPQ 2d 1639 (TTAB 2006).
25
In re: Morton-Norwich Prods Inc, 671 F2d 866 (CCPA 1982).
26
Supra note 11.
27
In re: General Electric Broadcasting Co. Inc, 1999 USPQ 560 (TTAB 1978).

9
distinct impression in the minds of the listener and it serves as an extension of a goods or
service. Among cases, a recent legal illustration of courts adopting and applying this principle
is Ride the Ducks LLC v. Duck Boat Tours28wherein the quacking of a duck was considered
to be an invalid trademark since it was a familiar sound and failed to generate any
distinctiveness.
2. European Union
However, the European Union, there is a stark contrast to the viability of such trademarks
being accepted for registration purposes. In the landmark case of Shield Mark BV v. Joost
Kisti29, the European Court of Justice did not deviate from the seven guidelines in the case of
Ralf Seickmann and hence opined that only those musical notes which were capable of being
reproduced in the form of musical notes could be accepted as trademarks. Since,
onomatopoeic descriptions did not meet the mandated requirements, trademarks could not be
accepted for it. An observation of the author, being that the European Court of Justice in the
light of the precedential interpretation of Article 2 of the European Union Trademark
Directive.
2.1. Ralf Sieckmann Case
Ralf Sieckmann v. German Patent Office30 is by far the most significant case regulating non-
conventional trademarks. The criterion laid down in this case is being followed by the Indian
Trademark Office.31 The Draft Manual applies, although indirectly, the Sieckmann standards
with regard to the requirement of graphical representation, even though India is not a member
state of the European Union.32 Probable reason might be that India was a former colony of the
United Kingdom, we see the subtle effects here too.33
The facts of the case were as follows:
Registration was sought for the olfactory mark of cinnamon to be accorded trademark
protection in Germany. In the application, the smell was described as "balsamically fruity
with a slight hint of cinnamon" and registration was sought for the mark of a pure chemical
substance, methyl cinnamate (cinnamic acid methyl ester). The chemical formula was also
mentioned as (C6H5-CH=CHCOOCH3), with a sample of the smell also submitted to the
registration authorities. However, the German Patent Office, basing its argument on the lack
28
US App Lexis 13554 (3d Cir, 2005).
29
Case C- 283/01.
30
Case No. C-273/00 before the ECJ, (March 06, 19:36PM)
http://www.copat.de/markenformen/C-273-00EN.pdf
31
Refer to Draft Manual for Trademark, Practice and Procedure (March 05, 7:45 AM)
http://ipindia.nic.in/tmr_new/TMR_Manual/DraftManual_TMR_23January2009.pdf.
32
Draft Manual Ch II, at 5.2.2. Sound Marks.
33
Supra note 2, at 11.

10
of graphical representability, rejected the application. The case thereafter was referred to the
European Court of Justice (ECJ).
The ECJ decided that graphical representation decided that graphical representation per se is
not enough for registration, and it must meet the following criteria:
1. It must be complete, clear and precise, so that object of the right of exclusivity is
immediately clear.
2. It must be intelligible to those persons having an interest in inspecting the register, i.e.
other manufacturers and consumers.
Having laid down these criterion, it was not that the Court did make a note of the following
difficulties, encountered while dealing with graphically representing non-conventional
trademarks, as:
1. Representation as a drawing was not possible.
2. Representation by chemical formula would not suffice, as the chemical formula
represents the substance itself and not its odour.
3. Further, representation by chemical formula lacks clarity and precision, not only
because of the fact that very few people would have the requisite technical knowledge
to interpret the odour of a substance from its formula, but also owing to the reason
that the same substance would produce different smells at different temperature,
concentration, etc.
4. Deposit of a sample of the substance with the registry was not a feasible alternative,
since firstly, it was not a graphical representation, and secondly, odour being volatile
may fade and disappear over a period of time.
However, the ECJ decided then, that clear and precise graphical representation is impossible
for olfactory signs, and although they may be distinctive, they could not be registered as
trademarks at that point of time.
3. Registration of Sound Marks: Global Issues
Graphical representation as far as sound marks are concerned is an issue worth examining.
The normal way of graphical representation of sound mark is the use of musical notations and
written description. There are challenges. Sound marks can be validly registered as
trademarks across the jurisdictions of the United States, United Kingdom and Canada.
Though a few orthodox stances were taken by the judiciary on this issue in the initial years
as for example in the case of Playboy Enterprises Inc v Germain 34, subsequently registration
16 CPR (3d) 517 (1987), where Pinard J observed on the issue of graphical representation of sound mark with
34

musical notes: 'I am of the opinion that, use of a verbal description is not a use of a trade mark within the
meaning of the Trade Marks Act. A mark must be something that can be represented visually.'

11
of sound marks as trademarks as become a common practice 35. Again the European Court of
Justice, in the case of Shield Mark BV v Joost Kist h.o.d.n. Memex 36noted that requirement
of graphical representation was not satisfied when the sound is represented graphically by
means of description using the written language, such as:
a) An indication that the sign consists of the notes going on to make up a musical work.
b) An indication it is the cry of an animal
c) By means of a simple onomatopoeia.
d) By means of a sequence of musical notes.
4. Developments in India
After such an examination it can be commented specifically that sound marks can also be
incorporated in the framework of Indian Trademark Law. The Indian scene is also improving.
The most iconic moment being when the Delhi branch of the Trade Mark registry granted the
first sound mark to Yahoo Inc.'s yoodle 37. This trend was further strengthened yet again, with
the registration of a sound mark for Alliance Aktiengesellschaft, a German company. 38 This
was yet again followed by ICICI Bank Ltd, which successfully registered its "jingle" as a
trademark, by the Registrar of Trademarks.39 The accepted position now has come to be that
since sounds can be graphically represented through musical notations and hence, capable of
being registered as trademarks.
Colour Marks
When it comes to colours, they can be used as trademarks in two forms- as a single colour, or
as a combination of two or more colours. Combination of colours, for the use as trademarks
has been allowed by multiple legislations across the globe. 40 Such a clarity has ushered in a
lot of clarity as to the question if a combination of colours could be considered to be a 'mark'
in all, and if so was it so distinct so as to be held to be a 'trademark', for concerned purposes.
The answers to both these positions were answered in the affirmative, by the House of Lords

35
Like the roar of the lion for Metro Goldwyn-Mayer, and the chime of 20th Century Fox.
36
Case No. C-283/01 before the ECJ, (March 06, 19:36PM)
http://www.copat.de/markenformen/jj010283_en.pdf
37
Yahoo awarded India's first sound mark; Nokia in queue (August 22, 2008)
http://www.livemint.com/Home-Page/5z2B1NQUy3YyPkpRDp789M/Yahoo-awarded-India8217s-first-sound-
mark-Nokia-in-queue.html; See more SHAMNAD BASHEER, Breaking News: India's First "Sound" Mark
Registered (August 19, 2008),
http://spicyip.com/2008/08/breaking-news-indias-first-sound-mark.html.
38
PRAKRUTHI GOWDA, Yet another Sound Mark Granted (July 30, 2009).
http://spicyip.com/2009/07/yet-another-sound-mark-granted.html
39
SHAYONEE DASGUPTA, ICICI jingle now trademarked! (March 14, 2011).
http://spicyip.com/2011/03/icici-jingle-now-trademarked.html
40
The definition of 'mark' in § 2(1)(m) and 'trade mark' in §2(1)(zb) of the Indian Trademarks Act, 1999
expressly includes 'combination of colours' as a mark that can be registered as a trademark.

12
in Smith Kline and French Laboratories Ltd v. Sterling Winthrop Group. 41This being said, we
further need to examine the aspect of graphical representation of colour marks, which is a
sine qua non for registration of such trademarks. In this regard, the judgment of the European
Court of Justice (ECJ) rendered in the case of Libertel Groep BV v. Benelux Trade Mark
Office.42
The issue before the Court, in this particular case was whether a single colour-'orange'- could
be registered as a trademark. The ECJ reiterated the criteria for graphical representation, as it
had formerly laid down in the Ralf Sieckmann case.43 The Court held that such representation
must be 'clear, precise, self-contained, easily accessible, intelligible, durable and objective'.
The question of law concerned pertained to a sample of the colour on a flat surface, a
description in words of the colour identification code. The Court undertook to find out
whether this representation fulfils the criteria that it laid down above. A sample colour alone
cannot pass the test, because it is not durable and would lose its original shade with the
passage of time. However, designation of a colour using an internationally recognized
identification code like Pantone44 may be considered to constitute a graphic representation,
for such codes are deemed to be precise and stable.
And following up, the Headquarters of prominent chocolate producing company Cadbury
went onto prove the same, when Birss, J. went onto allow the registration of the prominent
shade of purple Cadbury has come to be associated with, where its Pantone code (Pantone
2865c), which has been upheld by the High Court of London.45 Pantone 2865c is held to be
registrable in spite of being a non-conventional trademark. A truly progressive step, with
advancement in technology, it is high time that courts in India also follow suit in this regard.
Conclusion
After an in-depth study, it becomes clear that the Trade marks Act, 1999 and the Trademarks
Rules 2002, allow ample scope for registration of non-conventional trademarks, if the
criterion of distinctiveness but the sine qua non graphical representation, can be adhered too.
41
(1975) 2 All ER 578.; In this case, the set of facts prevalent were quite intriguing. The unique combination of
colours applied on drug capsules were held to be 'marks' within the meaning of Section 68(1) of the Trademarks
Act, 1994. Furthermore, the Court ruled that the said colour combinations were distinctive because they were
'adapted...to distinguish SKF's goods from other manufacturers'. The colour combinations of the capsules
available in the market had acquired distinctiveness through use, an were registrable as trademarks.
42
Case No. C-104/01 before the ECJ, (March 06, 18:56PM)
http://www.copat.de/markenformen/C-273-00EN.pdf
43
Supra note 30.
44
The Pantone is a commercial system that designates specific shades numerically and categorizes over
thousand such shades by unique codes. As an example, The United Parcel Service holds a registration for the
colour chocolate brown, which is equivalent of the Pantone colour designated by the code 'PANTONE 462 C'.
45
SWARAJ PAUL BAROOAH, Guest Post: Colours as Non-Conventional Trademarks. (January 04, 2013)
http://spicyip.com/2013/01/guest-post-colours-as-non-conventional.html

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However, the registration authorities need to be a bit more adventurous, and so the authorities
to allow such non-conventional trademarks to gain exposure and ground in India, with the
rapid development of technology and businesses in India. It is high time that a colour mark is
registered as a trademark in India, for there exists a nullity here, whereas sound marks have
gradually come to be accepted as trademarks as evident from the cases of Yahoo, Allianz and
ICICI bank.

14
Bibliography
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 K C Kailasam & Ramu Vedaraman, LAW OF TRADEMARKS AND

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http://www.wipo.int/export/sites/www/sme/en/documents/wipo_magazine/7_2004.pd
f
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 PRAKRUTHI GOWDA, ‘Yet another Sound Mark Granted’ (July 30, 2009).
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sound-mark.html.

15
 Shayonee Dasgupta, ‘ICICI jingle now trademarked!’ (March 14, 2011).
http://spicyip.com/2011/03/icici-jingle-now-trademarked.html
 SWARAJ PAUL BAROOAH, Guest Post: Colours as Non-Conventional Trademarks.
(January 04, 2013) http://spicyip.com/2013/01/guest-post-colours-as-non-
conventional.html
 Yahoo awarded India's first sound mark; Nokia in queue (August 22, 2008)
http://www.livemint.com/Home-Page/5z2B1NQUy3YyPkpRDp789M/Yahoo-
awarded-India8217s-first-sound-mark-Nokia-in-queue.html

16