Kashvi Vachhani

III Year BA LLB (Hons.)

Gujarat National Law University.

RESEARCH REPORT ON NON-CONVENTIONAL

TRADEMARKS

1
 INDEX

Sr. Topic Page Number

No.
1 Introduction 3

2 Nature of Non-Conventional Trademarks 4

3 History and Evolution of Non-Conventional 4

Trademarks
4 Types of Non-Conventional Trademarks 5

5 Registration of Non-conventional Trademarks 8

6 Legal Position of Non-Conventional Trademarks 9

7 Conclusion 10

8 References 11

2
 Kashvi Vachhani
III Year BA LLB (Hons.)
Gujarat National Law University
kashvivachhani24@gmail.com

NON-CONVENTIONAL TRADEMARKS
________________________________________________________

¨ ABSTRACT

The author aims to map out a conceptual understanding of the notion of Non-
Conventional trademarks. The discussion surges around the nature and scope of Non
Traditional Trademarks. It is followed by the evolution and history of the same. Further,
distinguishable types of Non-Conventional trademarks have been anatomized. This is
closely followed by registration of these trademarks and their standing in the legal
landscape of the country.

Keywords: Non-Conventional Trademarks, distinctiveness, Trademark Rules of 2017,

uniqueness, Graphical Representation.

¨ INTRODUCTION

In the country, the trademarks Act, 1999 guarantees protection to trademarks rights. It has been
defined in Section 2 (1)(zb).1 “The Controller General of Patents, Designs, and Trademarks”
is in charge of enforcing such security under the Law2. It can be asserted that signs, be it a
phrases, design, numerical, symbol, can be given protection as a trademark when it is
competent of determining and differentiating the products from other competitors in the

1
Section 2 (1)(zb), The Trademarks Act, 1999.
2
Mondaq.com. 2022. 4 Best Non-Conventional Trademarks - Intellectual Property - India. [online] Available at:
<https://www.mondaq.com/india/trademark/1097318/4-best-non-conventional-trademarks?login=true>
[Accessed 2 February 2022].

3
market. allows customers to recognise a specific brand, service, or product on the market. It
defends the maker or owner of the goods from illegal goods duplication, defends the interests
of consumers, and helps in avoiding unnecessary complications.3

Non-conventional Trademarks

The Trademark Act of 1999 gives an extensive and a wide interpretation of a Trademark and
hence non-conventional trademarks full under the ambit of the notion in an instance where they
are distinct and competent to be represented graphically and visually. Non-conventional
trademarks can be better defined as signs which don’t fall into the category of ordinary/typical
trademarks of being a phrase, figure or emblem and is competent of being recognised and
differentiated easily. At the outset, there are two kinds of non-conventional trademarks, one
recognised visually like a shape, colour etc and one type which cannot recognised visually-
taste, texture, smell etc.4 The concept of a non-conventional trademark must be able to
communicate the capacity to separate the goods in question with others.5

¨ HISTORY AND EVOLUTION OF NON-CONVENTIONAL TRADEMARKS

It is only recently that the non-conventional trademarks have gained legal recognition.
However some company’s and brands have their token trademarks that can be easily traced to
the goodwill of the company. Examples of this can be the combination of shades red and white
of “Colgate”, the shape of the bottle of coca cola.6

The first time that trademarks were looked into was by the World Intellectual property Rights
Organisation where they established a committee to discuss trademarks. The distinction of
trademarks into Non visual ( scent, texture etc) and Visual Trademarks (colour, shape etc) was
first clarified. It was soon realised that the notion of trademarks is extensive and hence

3
Id.
4
Cleartax.in. 2022. Trademark Act, 1999. [online] Available at: <https://cleartax.in/s/trademark-act-1999>
[Accessed 2 February 2022].
5
Mondaq.com. 2022. Unconventional Trademarks In India - Intellectual Property - India. [online] Available at:
<https://www.mondaq.com/india/trademark/597356/unconventional-trademarks-in-
india?type=mondaqai&score=84> [Accessed 2 February 2022].
6
Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd., (2003) DLT 51.

4
discussions started surfacing, It was discussed in the trademark meetings of Vienna and
Brussels.7

The Trips Agreement in the year of 1994 authorized the expansion of trademark protection.
The agreement provided a broader meaning of the notion. Article 15 of the agreement clarified
what could be regarded a trademark.8 In the early twentieth century, a debate was held in
Bolivia wherein non-conventional markings such as audio, structure, and others were accorded
security because they could be visually depicted and had distinctiveness.9

¨ TYPES OF UNCONVENTIONAL TRADEMARKS

Categorically, it will be more convenient to broadly divide non-conventional trademarks.

1. SMELL MARKS
It appears to be that smell is one of our most primitive senses and has the competency to recall
earlier encounters with ease. Despite the ability of sense of smell to attach recognition and a
sense of familiarity with a particular object, it tends to sound a little idealistic as smell marks
are difficult to get registered as trademarks.10

There are some obvious hurdles in registration of these trademarks, the most crucial being the
staunch distinctiveness of the smell. It has to be clearly distinguishable. A very interesting case
surfaced in Germany where a man attempted to submit a registration application for a substance
widely known as “methyl cinnamte” where he described the scent using its molecular
composition or formula elucidating the smell as “balsamically fruity with a tiny trace of
cinnamon”. The application was eventually dismissed and rejected.11

7
Kurup, R. and Pradeep, N., 2020. E- Journal of Academic Innovation and Research in Intellectual Property
Assets (E-JAIRIPA). [online] Vol. 1 (01). Available at:
<http://www.cnlu.ac.in/2021/CIRF/9%20Rachna%20R%20Kurup%20and%20Nimita%20Aksa%20Pradeep.pdf
> [Accessed 2 February 2022].
8
Kenneth L Port, On Non-Traditional Trademarks, William Mitchell College of Law Legal Studies Research
Paper Series (Aug 27, 2020, 8:00 AM), https://ssrn.com/abstract=1564230.
9
Supra note 7.
10
Mondaq.com. 2022. Non-Conventional Trademarks: A Legal Analysis - Intellectual Property - India. [online]
Available at: <https://www.mondaq.com/india/trademark/801902/non-conventional-trademarks-a-legal-
analysis?type=mondaqai&score=82> [Accessed 2 February 2022].
11
Ralf Sieckmann v. Deutsche Patent und-Markenamt, C-273/00.

5
The legal position of smell marks in India is convoluted. The trademark act and other statutory
provisions do provide scope for registration of such marks. However, none of such kind have
been registered in the country. The Trademark Registry has not established any instructions on
how to visually display scent trademarks.12

2. SOUND MARKS

Whatever is audial in character can be used as a sound mark. Here, the sound can be protected
under a trademark. The objective of such marks is to assist the customers to correctly and
accurately, without any misunderstanding, identify an item in the market. What tends to
distinguish them from other non-conventional trademarks is that the graphical representation
of these marks can be done with the use of a sequence of melodic elements, not necessarily
with the usage of letters or actual words. 13

There are certain prerequisites to be conformed to, in order to have a sound mark registered as
a trademark.14

1) At the time of registration of such a mark, it must be clearly established that the trademark
sought is a sound mark.

2) Second, it is important for the marks to be enunciated on paper or in form of notes or have
some sort of graphical representation.

In India, the yahoo yodel was the first sound mark to be a registered trademark.15
Other famous sound marks are the infamous ringtone of Nokia, the Harley Davidson sound etc.

12
Supra note 10.
13
Supra note 2.
14
Id.
15
P. Manoj, Yahoo Awarded India’s First Sound Mark; Nokia in Queue, Live Mint, Aug. 22, 2008.

6
3. COLOUR MARKS

The first thing people actually perceive are colours and its only right to take advantage of such
an impression, while developing brand value for a company. Colour marks work in two ways.
One, where a single colour is used to attach a distinguishing value to a product or a service or
when combination of colours are used. It is very crucial to note here that a colour mark can
only be registered when the shade or hue is in itself enough competent to identify the product
or a service.16 There are some statutory provisions which recognise the trademark right of a
combination of colours. Section 2(1)(m)17, 2(1)(zb)18, and 10(1)19 of the Trade Marks Rules,
2017 mandates that there is a requirement for the procreation of the said mark for the
application for trademark for a combination of colours.20

However, single colours have not been given the similar acknowledgement. This is in view of
the fact that Section 9(1)(a)21 of the act mandates that the marks have to be unique and distinct
for them to be registered as trademarks under the Act. Frivolous trademarking of single colours
would only restrict its range. This is because single colours are widely used and accessible and
are not particularly unique in character.22

If we look into the judicial trend relating to colour trademarks, it can be said to have a little
ambivalence. In an interesting case, a claimant decided to seek an interlocutory order
prohibiting the respondent from employing the shade of orange during the manufacturing of
their goods. Here, the court observed that the authority over single colours cannot be
monopolistic in nature.23

16
Supra note 14.
17
Section 2(1)(m, Trademarks Act.1999.
18
Section 2(1)(zb), Trademarks Act,1999.
19
Section 10(1), Trademarks Act, 1999.
20
Gupta, S., 2021. Non-conventional trademarks - Trademark Registration - Muds. [online] MUDS. Available
at: <https://muds.co.in/non-conventional-trademarks/> [Accessed 2 February 2022].
21
Section 9(1)(a), Trade Marks Rules, 2017.
22
Supra note 20.
23
Singhania & Partners. 2020. [online] Available at: <https://singhania.in/blog/the-contemporary-issue-of-the-
non-conventional-trademarks> [Accessed 2 February 2022].

7
In the case of Britannia Industries Ltd. v. ITC Ltd 24, it was alleged by ITC that Britannia’s
biscuit Nutri choice had scrapped off the colour scheme of blue and yellow from ITC’s Sunfeast
digestive biscuits. The High court refused to issue an injunction against the respondent because
the claimant failed to demonstrate the goodwill attached to the colour scheme and how it
availed benefit from it.

4. SHAPE MARKS

If and when an item can be easily recognised by its form or shape or labelling/packaging, then
the shape of the item can be trademarked. The most crucial criterion for registration of the
trademark is that the shape can be easily traced to and is vital for a good’s identification or
recognition. Similar to colour trademarks, shape marks are also statutorily recognised under
section 2(1)(m)25 and 2(1)(zb)26 under the Act of 1999. It is also enunciated in section 9(3)27
of the Act that the shape should be distinguishable from the product and not its character. It is
also clarified in the section that the shape shouldn’t and cannot be based on operational
concerns and cannot be used to achieve a technological goal.28

The Delhi High Court in the infamous case of Lily ICOS LLC and Anr. V. Maiden
Pharmaceuticals, observed that the respondent had duplicated the almond shape of the product
of the claimant and issued an injunction on account of the malicious intention of doing so.29

¨ REGISTRATION OF NON-CONVENTIONAL TRADEMARKS

Here, it’s extremely paramount to understand that registration of the trademark is not the
supreme requisite for it to be awarded the said title. The simple notion that the mark in question

24
Britannia Industries Ltd. v. ITC Ltd., 2017 (70) PTC 66 (Del).
25
Section 2(1)(m), Trademark Act, 1999.
26
Section 2(1)(zb), Trademark Act, 1999.
27
Section 9(3), Trademark Act, 1999.
28
Saraswat, P., 2021. Non-conventional trademarks and the procedural requirements for their registration -
iPleaders. [online] iPleaders. Available at: <https://blog.ipleaders.in/non-conventional-trademarks-procedural-
requirements-registration/> [Accessed 2 February 2022].
29
Lily ICOS LLC and Anr. V. Maiden Pharmaceuticals, 2009 (39) PTC 666 (Del).

8
has extensive and broad user engagement is enough for its qualification. Only special rights
will be given once the registration is done.30

Statutorily, Non-conventional Trademarks have made appearance very few times in the
concerned legislations- trademark act or the trips agreement. The legal framework around these
trademarks is more dependent on judicial decisions and precedents. It is material to note that
sound trademark has surfaced in Rule 26(5) of the Trademarks Rules, 2017.31

The process for sound marks is clarified, and it could serve as a model for other visual marks,
but how would one translate smells, flavours, and sensations into visualisations? It is at this
standpoint where graphical representation comes into play.32

Rule 2(1)(k)33 of the Trademark Rules of 2017 describe Graphical Representation as the
depiction of a trademark for products or services represented or susceptible of being
represented.

Graphical representation remains a primary prerequisite as mandated by the WIPO’s Standing

Committee Report published in the year of 2008. The rationale is that if anyone asks for the
information regarding the disposition of the trademark can do conveniently without needing
the technological expertise. In the year of 2015, The Indian Trademark office published a “
Draft manual” for application and processes and entails criterions for graphical representation.
However, it hasn’t been officially been implemented. 34

¨ LEGAL POSITION OF NON-CONVENTIONAL TRADEMARKS IN INDIA

As mentioned above, the Trademark rules of 2017 have changed the legal landscape for
registration of unconventional trademarks. Rule 6(5)35of the act has given recognition to sound
marks. The applicant can get the trademark registered by having the audio sample attached to
musical composition. It is interesting to note that the first Indian organisation to have a sound

30
Id.
31
Rule 26(5), The Trademarks Rules, 2017.
32
Supra Note 29.
33
Id.
34
Id.
35
Rule 6(5), The Trademarks Rules, 2017.

9
mark registered was ICIC bank for its signature sound of a “jingle”.36 Similar method can be
used for colour marks where the distinctiveness of the combination of the shades can be
established. For both these kind of unconventional trademarks, the prerequisite remains the
distinctiveness and the uniqueness attached to the mark. Since there isn’t much of a mention
of non-conventional trademarks, precedents set by the court have instead been relied on
exponentially. 37

Like few other legislations of the country, the Trademark act of 1999 finds its genesis in the
statutory provisions protecting trademarks in United Kingdom and United States of America.
The concept of “Graphical Representation” in India is drawn from UK and “doctrine of
functionality” can be traced back to the United States.38

¨ CONCLUSION

The author opines that trademarks which possess a distinctiveness should be given trademark
protection. It can be said with certainty that non-conventional trademarks without a doubt
attract a different set of target audience more interested in the distinctiveness and the essence
of the trademark rather than the appearance. The discussion surging around the Non-
conventional trademarks seems to be a contemporary issue filled with obvious deterrents and
concerns especially surrounding scent and texture trademarks. It is however suggested that a
balanced interpretation of the subject should be adopted to give incentive to innovations and
creative methods of marketing of the products.

36
ICICI Secures Rights for Corporate Jingle, The Indian Express, Mar. 12, 2011.
37
Supra note 10.
38
Id.

10
¨ REFERENCES

ONLINE SOURCES/JOURNALS

- Cleartax.in. 2022. Trademark Act, 1999. [online] Available at:

<https://cleartax.in/s/trademark-act-1999> [Accessed 2 February 2022].

- Gupta, S., 2021. Non-conventional trademarks - Trademark Registration - Muds. [online]

MUDS. Available at: <https://muds.co.in/non-conventional-trademarks/> [Accessed 2
February 2022].

- Kenneth L Port, On Non-Traditional Trademarks, William Mitchell College of Law Legal

Studies Research Paper Series (Aug 27, 2020, 8:00 AM),
https://ssrn.com/abstract=1564230.

- Kurup, R. and Pradeep, N., 2020. E- Journal of Academic Innovation and Research in
Intellectual Property Assets (E-JAIRIPA). [online] Vol. 1 (01). Available at:
<http://www.cnlu.ac.in/2021/CIRF/9%20Rachna%20R%20Kurup%20and%20Nimita%2
0Aksa%20Pradeep.pdf> [Accessed 2 February 2022].

- Mondaq.com. 2022. 4 Best Non-Conventional Trademarks - Intellectual Property - India.

[online] Available at: <https://www.mondaq.com/india/trademark/1097318/4-best-non-
conventional-trademarks?login=true>.

- Mondaq.com. 2022. Non-Conventional Trademarks: A Legal Analysis - Intellectual

Property - India. [online] Available at:
<https://www.mondaq.com/india/trademark/801902/non-conventional-trademarks-a-
legal-analysis?type=mondaqai&score=82> [Accessed 2 February 2022].

11
- Mondaq.com. 2022. Unconventional Trademarks In India - Intellectual Property - India.
[online] Available at:
<https://www.mondaq.com/india/trademark/597356/unconventional-trademarks-in-
india?type=mondaqai&score=84> [Accessed 2 February 2022].

- Saraswat, P., 2021. Non-conventional trademarks and the procedural requirements for their
registration - iPleaders. [online] iPleaders. Available at: <https://blog.ipleaders.in/non-
conventional-trademarks-procedural-requirements-registration/> [Accessed 2 February
2022].
- Singhania & Partners. 2020. [online] Available at: <https://singhania.in/blog/the-
contemporary-issue-of-the-non-conventional-trademarks> [Accessed 2 February 2022].

CASES

- Britannia Industries Ltd. v. ITC Ltd., 2017 (70) PTC 66 (Del).

- Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd., (2003) DLT 51.
- Lily ICOS LLC and Anr. V. Maiden Pharmaceuticals, 2009 (39) PTC 666 (Del).
- Ralf Sieckmann v. Deutsche Patent und-Markenamt, C-273/00.

STATUTES

- Rule 26(5), The Trademarks Rules, 2017.

- Rule 6(5), The Trademarks Rules, 2017.
- Section 10(1), Trade Marks Act,1999.
- Section 2 (1)(zb), The Trademarks Act, 1999.
- Section 2(1)(m, Trademarks Act, 1999.

12