Charting the Unconventional: Recognition and Challenges of Unconventional Trademarks in the Indian IPR Regime

Charting the Unconventional: Recognition and Challenges of Unconventional Trademarks in the Indian IPR Regime

This piece has been authored by Vrinda Chaturvedi, Third- year law student at HNLU, Raipur

Overview of the Trademark regime in India

As the industrial boom seeped into India, innovation and creation began to make way. This development led to the presence of an increased competition in the market and thus, the need to protect brands and companies and signs and symbols that represented them and help build their customer base. The very first trademark cases in India were settled under Section 57 of the now repealed Specific Relief Act,1877 which entailed “Injunction to Perform Negative Agreement” coupled with an understanding of the Registration Act, 1908. However, soon the coloniality and failure to fill lacunae was realized and the Trademarks Act, 1940 was enacted on the lines of the British Trademark law. After multiple modifications in the form of the Trademarks and Merchandise Act, 1958, the Trade Marks Act, 1999 finally came about and remains the latest statute governing the trademark regime in the country.

Non-conventional trademarks are those that are in the form of shape, scent, movement or motion, smell, outline or texture. Initially, the ability of any of these marks to be registered as trademarks was governed by the Seickmann criteria which strictly required them to be “graphically represented.” However, the same developed into a less restrictive requirement of “clear and efficient” subject matter determination through interventions such as Article 4(b) of EUTMR.

The article deals with the present legal status of unconventional trademarks in India. It outlines their origin through legislative efforts and treatment by Courts. A concerted comparison and distinction between foreign and Indian IPR regimes is offered by observing case studies and culling out the problems that might arise in wholly accepting this integration between the conventional and unconventional.

Status Quo of Unconventional Trademarks under Indian Laws

The focus of the paper remains on unconventional trademarks and their legal status in India. Such incorporation remained missing from the 1999 Act and was only entertained through judicial pronouncements. The Trade Marks Manual, last updated in 2015 mentions “unconventional trademarks” and includes “colour trademarks”, “sound marks”, “shape of goods, packaging” and “smell trademarks.” “Shape of goods and packaging” qualify as “mark” under section 2(m) of the Trademark Act, 1999.

The need to align domestic trademark laws with the agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) led to steps in the direction. As under Article 15 of the TRIPS Agreement, only “representable” marks can be considered for trademark.

Presently, Section 2(zb) of the Trademark Act defines “trademark” to mean“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.

On a perusal of this Section, one notices that any mark to fall under “trademark” must reflect the- (a) ability to be “graphically represented” and (b) the presence of this mark should make the goods or services it is associated with distinct and unique from all others. Both of these elements are often missing from almost all unconventional marks such except sounds. Sound marks that represent brands or are uniquely associated with them can sometimes be represented graphically through notations. This requirement for “graphical notation” was laid down in ECJ judgement of Shield Mark BV v. Joost Kist h.o.d.n. Memex  before which such trademarks were granted under civil law and not under trademark law.

The use of the word “and” to join the ‘graphical representation’ and the ‘distinguishing’ elements tells us that these must not be mutually exclusive but must thrive together.

If this “and” were to be replaced with “or” , unconventional trademarks would possibly be accommodated  under this definition as distinguishing one good or service from another.

However, the 2017 Trademark Rules provide an exclusive provision for unconventional trademarks. Rule 26, Sub rule 5, dealing with “Representation of Trademark” allows sounds to be registered as trademarks if they are in MP3 format, under 30 seconds, clearly audible and accompanied with graphical notations.

Case analysis of unconventional trademarks in India and Foreign Jurisdictions

While India still takes a comparatively conservative approach towards unconventional trademarks, Europe has granted protection to unconventional marks through the European Union Intellectual Property Office (EUIPO) directives. Most EU countries then aligned their laws to incorporate this change. However, the change in India was introduced in more interpretative ways through judicial inclusions and exclusions.

In 2008, Yahoo Inc.’s yodelling ‘Yahoo’ voice became the first registered sound trademark in India. ICICI Bank too registered its corporate jingle- “Dhin Chik Dhin Chik” because it could be written down in words. Later, National Stock Exchange got a trademark for its theme song, so did Britannia Industries (bell sound), Nokia (Guitar notes and Netflix (Ta-Dum) Sound. The underlying reason was the ability to be represented in either notation, words or graphical manner.

Smell trademarks too cannot be accommodated within definition of “trademark” under the TM Act, 1999. The European case of Ralf Sieckmann v. Deutsches Patent und Markenam laid down pre-requisites concerning smell trademarks which include the statement of smell to be made by chemical formula, odour, which is “intelligible” due to which the application was rejected. The European case of Venootschap onder Firma Senta Aromatic dealt with trademarking the smell of a tennis ball that smells like “freshly cut grass.” This was allowed due to the representation being made in the form of actual grass cut and presented alongside the tennis ball. This was considered “sufficient enough” to allow the application. In UK, Japan’s Sumitomo Rubber Co. trademarked “a floral fragrance or smell reminiscent of roses as applied to tyres.” India has not encountered any application for a smell mark yet and whether the law will be applied as inclusively as possible remains to be seen.

Colour trademarks are another kind of unconventional trademark, they can be registered as single colour or combination of colours.  Colour trademarks such as the colour combination of Colgate toothpaste have been protected under Indian laws. the requirement for a combination to get trademarked is the it should be (i) trademark, and (ii) can be used to distinguish the good or services. A detailed explanation as to how the said combination helps consumers differentiate between two products is also proved.

In the case of Paytm v. PayPal where Paypal alleged that Paytm has infringed its “two-tone blue”, here another concern arose because both companies were in the same business. Paytm has argued on the liens of the minimal presence of PayPal in the Indian Market. The dispute is still pending.

Other examples are motion marks under Rule 2(1)(k) of the 2017 Rules. The European Union recognises motion marks when represented “clearly” through graphical presentation, or through MP3, MP4 videos or by series of images showing such change in position of object due to that motion. A popular motion trademark was seen in the case of “20th Century Fox Movies” appearing in two lines along with a unique movement of the camera from left to right. In India, Sony Ericsson applied for a motion trademark by presenting a flipbook to see motion in pictures. This was accepted.

Therefore, contemporarily Indian laws afford protection to motion, sound marks, shape of goods, combination of colours. However, foreign jurisdictions protect smell, taste and texture too.

Challenges in Enforcing Unconventional Trademarks in India

Under Indian law, unconventional trademarks encounter some specific challenges and considerations:

  1. Criteria of distinctiveness and acquired distinctiveness: Several foreign jurisdictions have lower standards for the uniqueness or “distinctiveness” of a mark to be registered as a “trademark.” However, Indian jurisdiction has been orthodox and strict in its interpretation. In the case of N.R. Dongre v. Whirlpool Corporation, the Apex Court affirmatively held that “wash whirl” as a terminology had acquired distinctiveness based on Whirlpool’s wide customer recognition. This case also became one of the first to grant trans-border recognition to multi-national trademark claim. In the case of ITC Limited v. Philip Morris Products S.A., the court evidence strong demand for proving “distinctiveness.” Data, surveys, customer feedback, advertising material, expert opinion, research publications and non-descriptive use of marks were added as elements to prove the same.
  2. Evidentiary value: a very high emphasis has been placed on companies to be able to “graphically represent” the unique association of the mark with the product, or company. In case of Swizzels Matlow Ltd.’s Application (No. 2), the Court specifically pointed out the desire for “graphical representation” of an unconventional trademark, they were to allow traders to identify clearly what mark is registered, and for consumers to understand the subject matter of trademark with precision. This is also because statutorily, Section 29 of the Trademark Act would bring any mark inefficiently depicted under the infringing criterion and tilt the evidentiary scale in the complainant’s favor.
  3. Miscellaneous: Other factors like subjectivity, technicality of the unconventional marks and a lack of concrete precedents in cases of smell or taste trademarks only complicates the journey for unconventional trademarks. Even the lack of a global procedural set-up makes it difficult for India to look up to any foreign jurisdiction who also rely on either TRIPS agreement or judicial determinations to make a case for non-traditional trademarks.


Summarily, while India’s trademark regime is progressing, it is doing so gradually and keeping in terms with both the domestic and global demands of incorporation of non-traditional marks as trademarks.

The Trademark Manual states that any mark satisfying the Seickmann criteria will deserve “special consideration” but the judiciary has entertained some applications subjects to its own interpretation sometimes. While the two organs at loggerheads seems to be a positive step in a more progressive direction, it has also made the regime ambiguous and unclear striking a contrast between legislative intent and judicial creation. Whether unconventional trademarks will be a entertained whole-heartedly or with extreme wariness remains to be seen as and when applications reach forums of discussion and deliberation and the Courts.

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