1

LAW SCHOOL BHU

B.A.LL.B (Hons) 10th Semester 2019-2020

SUBJECT: Law of Trademarks and Design

TOPIC: Graphical Representation and Protection of

Trademark

SUBMITTED TO: Dr. Abhishek Rai

SUBMITTED BY: Abhinav Yadav

ROLL NO: 15225BLT013

 Index

S.No. Topic Name Page No.

1 LIST OF THE CASES 3

2 ACKNOWLEDGEMENT 4

3 INTRODUCTION 5

4 Graphical Representability of Marks 6

5 Non-Conventional Trademarks 8

6 Trademark Protection in India 14

7 Protection Against Infringement of Trade Mark 16

8 Conclusion 18

9 Bibliography 19
List of the cases

Amritdhara Pharmacy Vs Satya Deo Gupta

Cipla v MK Pharma

Hearst Corporation Vs Dalal Street Communication Ltd

In re Clarke (United States of America)

Laxmikant V. Patel v Chetanbhat Shah &Anr

Libertel v Benelux Merkenbureau

Qualitex Co. v Jacobson Products Co

Shield Mark BV v Joost Kist

Sieckmann v DPMA (European Union)

Swizzels Matlow Ltd.’s (United Kingdom)

ACKNOWLEDGEMENT

First of all, I would like to thanks to God because he given me opportunity to complete this task
just in time. Then thanks to my Law of Trademarks and Design Professor, Dr. Abhishek Rai for
being such a good guider for me while I was doing this project assignment. He had given me
appropriate example and knowledge in order to make me understand more about the concerned
topic.

Also a great thanks to my family who tried their best to give their support for me either by giving
me a lot of encouragement for keep up with this task or by supporting the financial for use to pay
all the cost required to complete this project.

Finally, I would like to thank to my beloved friend that always stick together and also work hard
to produce a good assignment with all afford and responsibility. Hope that all afford will give a
lot of benefits to us.

-Abhinav Yadav
B.A.LL.B (Hons) 10th Semester
Introduction

The history of business, distinctive marks have been used by producers, sellers and the like to
differentiate their goods and services from those of their competitors. As market economies and
the differentiation of goods and services grew, the need for distinctive marks correspondingly
increased,1 and these came to be known as trademarks. In a complex modern market, with a long
chain of intermediaries, a trademark acts as both an advertisement, as well as a signifier of the
source, quality of the goods and the goodwill of the producer itself.

The predominant focus of this article will be on Indian law. We look at the Trade Marks Act,
1999 (hereinafter “the act”) for this, defining a trademark 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.2 A mark capable of being graphically represented is of seminal importance for the
registration of any trademark — in fact, graphical representation of a mark is of consequential
legal importance. However, as products and technology diversify, the nature of marks that are
sought to be registered are also changing — these are termed usually as non-conventional
trademarks,3 including marks such as smell, sound etc.

1
Annette Kur et. al., European Intellectual Property Law: Text, Cases & Materials, 156 (1st Ed. 2013).
2
The Trade Marks Act 1999, №47, Acts of Parliament, 1999 Sec. 2(1)(zb) (India).
3
Arka Majumdar et. al., ‘The Requirement of Graphical Representability for Non-Conventional Trademarks’, 11,
313, Journal of Intellectual Property Rights (JIPR) (2006).
Graphical Representability of Marks — Legal Scenario

The definition of a trademark under the Indian regime is inclusive and illustrates different sorts
of marks that fall within the scope of this act. It may include other things which may fall within
the general and plain meaning of the definition4 — it is to be noted that the word ‘mark’, in its
statutory definition, is apt only to describe something which distinguishes the goods, rather the
goods themselves.5

An interesting observation may be made here. The definition of ‘mark’, after the 1999
amendment contains three words — ‘shape of goods’, ‘packaging’ and ‘combination of colours’
that weren’t there in the previous act. 6 Several developments in trademark law post-1959
necessitated the insertion of these three characteristics and these have been described as non-
conventional trademarks.7

The essence of a trademark is that it is some distinctive thing which points out that the goods are
the goods of a certain origin.8 The definition of trademark, inter alia, was observed to have three
distinct elements — that it should be a mark, capable of being represented graphically and should
be capable of distinguishing the goods or services of one person from those of others.9

A trademark, by definition, requires that the mark sought to be registered for that purpose ought
to be reducible to a paper form. A trademark registration without the same being reduced to
paper graphically.10 The requirement includes — firstly, to enable traders to identify what other
traders have applied for registration as a trademark and secondly, to enable the public to
determine the subject matter of registration. 11 The court said that the first question that usually
arises when infringement of a trademark is in issue, is whether or not the alleged infringement
is identical to

4
The Trade Marks Act 1999, №47, Acts of Parliament, 1999 Sec. 2(1)(m) (India).
5
K.C. Kailasram, Venkateswaran on Trade Marks & Passing-Off, 72, 75 (6th Ed., 2015).
6
The Trade & Merchandise Marks Act, 1958 , №47, Acts of Parliament, 1958 ,s 2(1)(j) (India).
7
Majumdar et. al. Supra Note 3.
8
Kailasram, Supra Note 5, at 104.
9
Laxmikant V. Patel v Chetanbhat Shah &Anr. A.I.R. 2002 S.C. 275 (India).
10
Swizzels Matlow Ltd.’s Appl (1998) RPC 244 (United Kingdom).
11
Majumdar et. al. Supra Note 3 at 314.
the one registered. Graphical representation thus becomes important in determining the subject of
the registration.12

The requirement of graphical representation in India is elaborated through the Trade Mark Rules,
2017 (hereinafter “Trademark rules”), which superseded the old Trade Mark Rules, 2002, and
graphical representation is defined as representation of a trademark for goods or services
represented or capable of being represented in paper form and has been expanded to include
representation in digitized forms.13 The said rule is to be read in tandem with the definition given
in Section 2(1) (zb) of the act, and a reading of the same would suggest that, in any case, any
representation of a trademark has to be done so that it can be reducible to a paper format, in
accordance with the form prescribed for registration.14

12
Kailasram, Supra Note 5, at 105.
13
The Trade Mark Rules 2017, r 2(1)(k) (India).
14
Form TM-A, Application for registration of trademark.
Non-Conventional Trademarks — India and Abroad

The definition for a mark was expanded in India in 2002 to include marks that are considered
‘non-conventional’. The reason for this being termed non-conventional is that these marks are
protected as trademarks only in some jurisdictions. They include three-dimensional marks such
as shape of goods, motion marks, colours and colour combinations, odours and sounds among
other forms.15 Graphical representation of the same has posed a significant challenge to
registrations, as many of these marks do not satisfy the criteria that have been previously
discussed. However, Indian laws have attempted to make some accommodations for the same.

1. Odour Marks

Odour marks are one instance of a non-conventional trademark. One of the most celebrated cases
in this regard arises from the EU, where a trademark application was made for a smell described
as “balsamically fruity with a slight hint of cinnamon”. 16 In rejecting the application, the court
laid down specific requirements to fulfil the element of graphical representation, and held that a
sign must be presented in a way that is clear, precise, self-contained, easily accessible,
intelligible, durable and objective.17 The mark for the odour was provided by the applicant in the
form of a chemical formula and samples of the smell itself. However, since the same were not
accessible and self-contained, the mark was rejected. In US jurisdiction, smell marks have
sometimes been accepted as a trademark. This is in light of the functionality doctrine, that is a
widely applied test in the US — the doctrine states that functional features (features essential to
the use or purpose of the product or that affects the cost or quality of the project) cannot be
protected under trademark law,18 so as to not adversely affect competitive markets. In one case,
the fragrance of plumeria blossoms could be registered for sewing thread and embroidery yarn,
as the same is not a functional feature of the yarn and was easily distinguishable in the market.19

15
V. K. Ahuja, Law Relating to Intellectual Property Rights, 281 (3rd Ed., 2017).
16
Sieckmann v DPMA [2007] ECR I-00687 (European Union).
17
Ibid.
18
Deborah Bouchoux, Intellectual Property: The Law of Trademarks, Copyrights, Patents and Trade Secrets, 237
(4th Ed.,2013).
19
In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990) (United States of America).
In India, however, no odour marks have been registered as a trademark till day. The new 2017
rules also do not specify them and require that the mark be reducible to paper or digitized form,
making it difficult to register them.

2. Colour Marks

Colour marks for instance, are now accepted as ‘mark’ since the 2002 amendment of the act, in
tandem with similar developments abroad. In EU law, colours and combinations of colours can
be protected and registered as trademarks. However, the ECJ pointed out that consumers do not
usually look at colour to distinguish a product, and that a colour on its own is not capable of
distinguishing a good as being of a particular undertaking. 20 The court held that trademarks
should not be unduly restricting the availability of trademarks, especially as only a limited
number of colours are available.21

The functionality doctrine has also come into application with regard to colour marks. The
colour, if it does not have a functional purpose, or has been shown to have acquired
distinctiveness through high level of consumer recognition.22 However, the protection of colour
as a field is still evolving, and the functionality doctrine is not applied uniformly on occasion.23

In India, the Form TM-A of the trademark rules specifies the requirements for a colour mark,
when claimed in distinctiveness of combination of colours, with or without a device.
Combinations of colours have also been recognized in the act as a valid mark. Section 10 of the
trademark act holds that a trademark may be limited wholly or in part to any combination of
colours.

20
Libertel v Benelux Merkenbureau [2003] ECR I-3793 (European Union).
21
Ibid.
22
Qualitex Co. v Jacobson Products Co., 514 US 159 (1995) (United States).
23
Bouchoux, Supra Note 18 at 31.
The Delhi High Court held that the word ‘limitation’ in the section refers to the limitation to, and
not of, that particular colour.24 The court observed that a colour combination is a ‘trademark’ as
per the act, as there is no exclusion per se and even a single colour is thus entitled to protection
of the law. However, the court made a diametrically opposite observation that a single colour or
a colour combination will not be sufficient for an application. 25 While the 2017 rules clearly
accept colour marks for registration, the position of the law is not clear due to varying judgments
by different courts, and various inter-party disputes in this regard are yet to be tested.

3. Sound Marks

Sound marks have been more readily adapted into the Indian legal framework when compared to
other non-conventional marks.

The ECJ, in interpreting Article 2 of the Trade Mark Directives, laid down that Article 2 of the
Directive must be interpreted to mean that sounds can constitute a trademark, on the condition
that they can be represented graphically and that the directive doesn’t preclude sound marks per
se.26 Sound marks have been routinely registered in several jurisdictions such as the USA,
Canada etc, where the sound is so inherently different or distinctive that it is readily
recognizable.27

As regards India, sound marks have been accepted when the representation has been made in the
form of musical notes, and submitted in MP3 format to the registry at the time of registration,
and recorded on media which allow for easy and clearly audible replaying accompanied with a
musical notation on paper.28 Here, India has more or less followed the stance taken by the ECJ in
Shield Mark.

India has made several accommodations for the graphical representation of non-conventional
trademarks such as sound and colour marks, but several inconsistencies remain to be resolved.

24
Ibid.
25
Cipla v MK Pharma MIPR 2007 (3) 170 (Delhi).
26
Shield Mark BV v Joost Kist ,ECJ C-283/01 (2003) (Netherlands).
27
Bouchoux, Supra Note 18.
28
The Trade Mark Rules 2017, r 26(5) (India).
However, several new developments have come into force with effect across the European
Union, with amendments being brought to the European Union Trade Mark Regulation
(EUTMR) with effect from October 1, 2017. It is pertinent to note these developments, since
India has actually imitated the position of the EU law in certain respects, especially in
registration of sound marks.29

Regulation (EU) 2017/1001, being the amended EUTMR, in a surprising development has
completely done away with the requirement for graphical representation for the registration of a
30
trademark. The words “…capable of being represented graphically…” were removed
completely from the article, thus removing the graphical representability requirement for a
trademark. A reading of the above article shows a definition of trademark that effectively reduces
the complications that have hitherto plagued non-conventional trademarks. The mark, may
consist simply of the requirements given, provided they can be represented in the register so that
the competent authority and the public can determine the subject matter — this in fact directly
harks to the judgment in SwizzelsMatlow.

The law in the USA, as regulated by the Lanham Act as well. In the USA, graphical
representability is dealt with in a more flexible manner — in the judgment in Qualitex Co. v.
Jacobson Products Co31 the language of the Lanham Act was that trademarks “…include any
word, name, symbol, or device, or any combination thereof…”. The words ‘symbol’ and
‘combination thereof’ herein are of key import — they can be interpreted as widely as possible,
and any mark that satisfies the conditions that the mark is in use and has a distinctive character. 32
This has allowed for a wide interpretation of marks and the registration of increasingly
unconditional trademarks has been easier in US jurisdictions.

We have observed that there is no clarity on how graphical representation might work with odour
and colour marks — in Indian law, there is no clarity as to whether an odour mark might be
registered under the trademark law and rules.

29
Roberto Carapeto, ‘A Reflection About the Introduction of Non-Traditional Trademarks’, 34, Waseda Bulletin of
Comparative Law (2016).
30
EU Trade Mark Regulation (EU) 2017/1001, Art 4 (European Union).
31
Qualitex Co. v Jacobson Products Co. 514 U.S. 159 (1995) (United States).
32
Carapeto, Supra Note 29 at 34–36.
The US requirements leave a lot to the discretion of the registrar of trademarks, the EU
regulation has simply loosened the requirements to an extent. By removing the requirement for
graphical representation, the regulation significantly eases the filing for application as the
applicant can submit anything that enables the competent authority to make the decision.
Previously excluded marks such as odour and taste marks might have taken the first step towards
being registered as trademarks in the EU as the biggest obstacle has now been comprehensively
removed.33

With the advent of computerized registration of trademarks, a lot more avenues have opened up
for the recording of marks.34 For instance, colours are mostly represented in HTML/CSS using
hex codes that assign each exact shade with a six-figure alphanumeric value that enables precise
recognition of a colour or shade. Many companies, universities etc. regularly use hex code colour
schemes, and filing of trademark applications has become easier due to this. With further
technological developments, there may be more innovations which offer precise unmistakable
determination of odour mark by the authorities and the public.35

The removal of the graphical representation requirement provides a clue as to what course may
be taken with regard to it in India. With technological advances, sound marks have been accepted
in MP3 format. If further technical advances can be accommodated in India, there is an incentive
to remove the graphical representation requirement. The ambiguity in the law with regards to
colour and odour marks in India can be resolved through the removal of the requirement, or at
least continually accommodating the technological changes, to ensure the registration of a wider
variety of trademarks.

The requirement in the rules regarding the reducibility of a mark to paper form seems
particularly onerous in light of the various technical advances being made in the registration of
trademarks. As long as the mark is perceptible to the registering authority and the public,
there is no need for

33
Jacob Bolte, ‘The Removal of The Requirement for Graphical Representation of EU Trade Marks: The Impact of
The Amending Trade Mark Regulation’, Diva Portal (Apr. 28,2020, 11:24 PM), https://www.diva-
portal.org/smash/get/diva2:1072679/FULLTEXT01.pdf.
34
Althaf Marsoof, ‘The Registrability Of Unconventional Trademarks in India And Sri Lanka: A Comparative
Analysis’, 12, 498, Journal of Intellectual Property Rights (JIPR) (2017).
35
Majumdar et. al., Supra Note 3.
necessary reduction of all trademarks to a paper form. Thus, it has drastically impacted the
definition of a trademark in India.
Trademark Protection in India

An application to register a trademark in India can be filed online or by paper at the trademark
offices in Mumbai, Chennai, Kolkata, New Delhi or Ahmedabad.

The Indian trademark office follows the 10th edition of the NICE Classification in addition to a
list of goods and services maintained by the Indian Trademarks Office. The registration of marks
is acceptable in classes 1 – 34 in respect of goods and classes 35 to 45 in respect of services.
Multi class applications are possible in India however there is no cost benefit as the official fee
remains the same per class.

Being a signatory of the Paris Convention for the Protection of Industrial Property, one can file
convention applications claiming priority in India. A certified copy of the priority document is
necessary for claiming priority. The same can be filed within 2 months from the date of filing the
application in India.

India acceded to the Madrid Protocol and with effect from July 8, 2013 it is possible to designate
India in an international application. It is also possible to file online an international application
under the Madrid Protocol through the Indian trademark office.

An application in India can be filed on an intent to use basis or by claiming use of the trademark
in India.

A trademark application filed in India is examined on absolute and relative grounds to determine
whether it can be granted protection. The response to the objections should be filed within 1
month from the date of receipt of the examination report. Extensions of 1 month for any number
of times can be requested and is given at the discretion of the examiner. When the application is
accepted by the trademark office, it is published in the trademarks journal and is open to
opposition for a period of 4 months from the date of publication and cannot be extended.

The registration of the trademark is valid for a period of 10 years and renewable every 10 years.
An application for renewing a trademark registration can be filed at any time during the 6 months
prior to the expiration of the registration/last renewal validity. Late renewal is also possible after
the expiry and within 6 months from the validity date. A restoration of the registration is possible
after 6 months but before 1 year from the validity date of the registration.
A cancellation petition on the grounds of non-use can be filed to remove a trademark from the
register, if it has not been used for 5 years and three months from the date of registration.

Recording the assignment of trademarks with or without the goodwill of the business, change of
name and/or address of the applicant/proprietor, registered user agreements are possible.
Amendments to the registered trademark without substantially altering the identity of the mark or
the specification of goods and services covered by the registration of the trademark is also
possible.

Use of the ® symbol on unregistered trademark, manufacture, import or sale of counterfeit

goods, are offences punishable under the laws in India. Legal action can be initiated before the
District Courts or High Court of India.
Protection Against Infringement of Trade Mark

Under section 29 of the Trade mark Act, 1999, the use of a trade mark by a person who not
being registered proprietor of the trade mark or a registered user thereof which is identical with,
or deceptively similar to a registered trademark amounts to the infringement of trademark and
the registered proprietor can take action or obtain relief in respect of infringement of trademark.
In a matter Supreme Court has held that in an action for infringement if the two marks are
identical, then the infringement made out, otherwise the Court has to compare the two marks, the
degree of resemblance by phonetic, visual or in the basic ides represented by the registered
proprietor, whether the essential features of the mark of the registered proprietor is to be found
used by other person than only the Court may conclude the matter.

Hearst Corporation Vs Dalal Street Communication Ltd,36 The Court held that a trade mark
is infringed when person in the course of trade uses a mark which is identical with or deceptively
similar to the trademark in relation to the goods in respect of which the trademark is registered.
Use of the mark by such person must be in a manner which is likely to be taken as being used as
a trademark.

In an action for infringement of trademark:

(a) the plaintiff must be the registered owner of a trademark

(b) the defendant must be use a mark deceptively similar to the plaintiff's mark

(c) the use must be in relation to the goods in respect of which the plaintiff's mark is registered,

(d) the use by the defendant must not be accidental but in the course of trade.

Amritdhara Pharmacy Vs Satya Deo Gupta,37

In the said case the test for determining the similarity in two words relevant to an infringement
action was stated by Supreme Court that: You must take the two words. You must judge them,
both by their look and by their sound. You must consider the goods to which they are to be
applied. You must consider the nature and kind of customer who would be likely to buy those
36
1996 PTR 1 (Cal)
37
AIR 1963 SC 449
goods. In fact you must consider all the surrounding circumstances and you must further
consider what is likely to happen if each of those trade marks is used in normal ways as a trade
mark for the goods of the respective owners of the marks. If considering all those circumstances,
you come to the conclusion that there will be a confusion- that is to say, not necessarily that one
man will be injured and the other will gain illicit benefit, but that there will be a confusion in the
mind of the public which will lead to confusion in the goods-then you may refuse the
registration, or rather you must refuse the registration in that case
Conclusion

Indian Trademark law has by far congruently followed the EU position on graphical
representation. The Trade Mark Act, 1999 read with the Trade Mark Rules, 2017 as well
stipulated that any mark will have to be reducible to paper form in order to be considered as
graphically representable. The requirement in that sense is quite stringent, even with the strides
made in accommodating colour, shape and sound marks.

Non-conventional trademarks also are capable of distinguishing the goods or services of a

particular concern,38 especially in light of the applicability of the functionality doctrine. This
doctrine is already traceable in India in light of shape marks,39 and there is no reason why the
same can’t be extended to other marks if and when the need arises. However, the main question
is whether it is possible for a mark to be a trademark despite the lack of graphical
representability, while it’s clearly seen that in India the graphical representation is a sine qua
nonof sorts for the registration of any trademark.

We can thus say that there needs to be further accommodations in Indian law for non-
conventional trademarks, especially in light of the fast-changing technological conditions in
trademark registration. Difficulty in being reducible to paper should not be a fatal obstacle to
marks that can successfully distinguish a particular good or service. While there is no immediate
need to remove the requirement altogether at present, it is suggested that the law should make
adjustments as and when the technical advances are made, to accommodate more non-
conventional trademarks as they arise in the future.

38
Qualitex Co. v Jacobson Products Co. 514 U.S. 159 (1995) (United States).
39
The Trade Marks Act 1999, №47, Acts of Parliament, 1999 Sec. 9 (India).
Bibliography

1. https://www.lawnn.com/article-trademark-law-india-registration-enforcement-protection/
2. http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf
3. https://medium.com/legis-sententia/graphical-representation-and-indian-trademark-law-
bbaa610ef401
4. https://www.lexology.com/library/detail.aspx?g=e504176c-d3ff-4d62-9755-
3e208e205a00
5. http://nopr.niscair.res.in/bitstream/123456789/3588/1/JIPR%2011%285%29%20313-
317.pdf
6. https://www.mondaq.com/india/trademark/472602/non-conventional-trademarks-in-india
7. https://www.mondaq.com/india/trademark/801902/non-conventional-trademarks-a-legal-
analysis
8. https://www.lexology.com/library/detail.aspx?g=51704e3b-5ebb-4dad-852f-
991d02a0c1a7#:~:text=The%20Trademarks%20Registry%20recognises%20well,of%20t
he%20well%2Dknown%20mark.
9. http://www.legalserviceindia.com/article/l65-Trademark-Protection-in-India.html
10. https://selvams.com/trademark-protection-india/