Protection and Enforcement of Non-Conventional Trademarks in India

16 October 2012

Conventional marketing strategies involved promoting a product by means of its brand or trademark, which usually consisted of words, logos, letters, numerals, etc. With the advent of innovative marketing techniques, non-conventional features such as sounds, smells, colour combinations and shapes – each distinctive of a particular product – are now being considered as product identifiers or trademarks. An increasing awareness of the inclusion of non-conventional aspects as trademarks has led to an increase in applications for the registration of such marks, and also to a demand for their enforcement. The Indian Trade Marks Registry has granted registrations to sound marks such as the Yahoo yodel, the Nokia ringtone, the tune of Allianz Aktiengesellschaft and the recently registered ICICI Bank signature tune.

The Indian Trade Marks Registry’s Revised Draft Manual provides an insight into the requirements for registering non-traditional trademarks such as colour marks, sound marks and smell marks. The guidelines given in the Draft Manual will help in the development of the law for the protection of non traditional trademarks, which is still at its nascent stage. Following are some of the guidelines given in the Draft Manual:

Colour Marks

A single colour may be registrable as a trademark as long as it is unusual and peculiar in trade and is recognized by traders and consumers alike that it serves as a badge of origin for that class of goods. A single colour will only in exceptional circumstances be capable of denoting the origin of a product or service.

However, as per the Draft Manual, the examination of single colour marks requires careful analysis, because there is a public interest in not limiting the availability of colours for other traders.

The Draft Manual states that the registrability of colour combinations will depend on their uniqueness and what they are applied to. If the colours are presented as a figurative mark, then as few as two colours may be accepted, but if they are simply the colours of the product packaging, they are less likely prima facie to be accepted as a trademark.

Sound Marks

The Draft Manual states that no sound marks will prima facie qualify for acceptance without evidence of distinctiveness. For instance, very simple pieces of music consisting only of only one or two notes, songs commonly used as chimes, well-known popular music in respect of entertainment services or park services, children’s nursery rhymes for goods or services aimed at children, and music strongly associated with particular regions or countries for goods or services originating from or provided in that area will fall in the category of non-distinctive marks.

The requirement of ‘graphical representation’ in case of sound marks is met by representation of the sign by a musical stave divided into measures and showing, in particular, a clef, musical notes and rests indicating relative value and sharps, flats and naturals (accidentals). The Draft Manual follows the guidelines given for musical notation in the Shield Mark case. However it does not make any differentiation between musical and non-musical sounds.

Smell Marks

The Draft Manual follows the opinion of the European Court of Justice that a smell mark would not satisfy the requirements of graphical representation if it is presented in the form of:

(a) a chemical formula;

(b) an odour sample; or

Therefore, in the case of registering smell marks, the greatest obstacle will be the inability of traders to meet the requirements for graphical representation.

Recent Cases

A rising awareness in enforcement of non-conventional trademarks has also been witnessed from the cases filed before the Indian courts. A recent case initiated for enforcing rights in the shape of a bottle, was in the matter between Gorbatschow Wodka KG v. John Distilleries Limited (2010), where the Plaintiffs were engaged in the manufacturing of alcoholic beverages and liquors which were sold in bottles having decanters in a shape which were distinctive only to the Plaintiffs’ goods. The Plaintiffs initiated the suit for passing off after learning that the Defendants were to launch an identical product in a package or bottle of identical shape. The Defendants, however, used the word mark “Salute” and a label different from that of the Plaintiffs. The Defendant had also registered the said shape under the Designs Act, 2000.

The Plaintiffs’ counsel invited the attention of the Court to the definition of trademark under the Trade Marks Act, 1999 and the judgment of the Delhi High Court in the matter of Colgate Palmolive Company and Anr v. Anchor Health and Beauty Care Pvt Ltd 2003 (27) PTC 478 (Del), wherein it was held that “if the get up of goods, size, shape and labels and wrappers is deceptively similar, then the concept is identified as ‘trade dress’ and if the goods are offered in such dress to the public, then such shape and size can be protected as an identifiable concept of a trade mark.”

The Bombay High Court initially passed an ex-parte ad-interim order restraining the Defendants from using the distinctive shape belonging to the Plaintiffs. The Court also held that registration obtained by the Defendants under the Designs Act, 2000 did not preclude the Plaintiffs from seeking relief under the law of passing off. On considering the submissions of the Defendants, the Court held that if the Defendants were allowed to use the impugned shape of bottle, it would result in diluting the distinctiveness and exclusivity of the mark of the Plaintiffs which had as an essential ingredient, the distinctive shape of bottle in which its vodka was sold.

Krishna & Saurastri

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Mumbai 400 001, India

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