Registering unconventional trademarks

Trademark protection in India has improved tremendously in the past 10 years. To meet its obligation under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights, the Indian government enacted the Trademarks Act 1999 (in force since 15th September 2003). The government then upgraded the facilities and infrastructure of the Intellectual Property Office (IPO) - for instance, by introducing electronic filing for trademark applications.

The government has now turned its attention to laying down a framework for uniform, transparent and efficient working of the Trademarks Registry, among other things. The IPO, after holding meetings and inviting comments from stakeholders on its maiden Manual for Trademark Practice and Procedure, recently released a revised draft. There are no changes in the revised manual with regard to guidelines for the examination of unconventional trademark applications. At the time of writing, it is unclear whether the Trademarks Registry will adopt the revised manual as it stands, Nevertheless, it is worth examining these guidelines in detail.

The Trademarks Act defines "trademark" and "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; ....’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.”

The manual provides that the definition of "mark" includes any sign that is capable of being represented graphically and distinguishing the goods or services of one person from those of others. Thus, the word "mark" is to be interpreted broadly and no type of sign is automatically excluded from registration.

The manual lists unconventional trademarks as: 

• colour marks; 
• sound marks; 
• shape of goods or packaging; 
• olfactory marks; and 
• holograms.

This article summarises the guidelines envisaged for unconventional marks, as well as the evidence that will be required to prove factual distinctiveness.

Colour marks
Single colours
The draft manual clarifies that a single colour may be registrable as a trademark, as long as it is a “very unusual and peculiar” colour in the trade and is recognised by both traders and consumers as serving as a badge of origin for the goods or services to which it applies. The manual suggests that traders and consumers do not normally perceive colour per se as the source of goods and services; therefore, a single colour will be capable of denoting the origin of a product or service only in exceptional circumstances.

It appears that marks consisting of a single colour will usually face objection from the registry on the grounds that: 

• the colour lacks the inherent capacity to distinguish; and/or 
• it is in the public interest not to limit the availability of the colour for other traders.

Colour combinations
The manual states that the registrability of colour combinations will depend on their uniqueness and the way in which they are applied. In other words, 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 mark.

The manual suggests that extensive use of two colours in many different arrangements may result in the colour combination becoming distinctive of the applicants’ goods. However, if the colours are not used in a special or particular pattern or arrangement, it is unlikely that they would enjoy distinctiveness as a badge of origin.

The manual indicates that the evidence required to support a claim of factual distinctiveness of a colour mark must be very strong and persuasive. It must demonstrate clearly that the colour mark exclusively designates the applicant’s goods or services to the relevant consumers.

Sound marks
The manual confirms that the Trademarks Act neither explicitly excludes sound marks from registration nor does it stipulate that a trademark must be visually perceptible. The act provides only that the trademark must be “capable of being represented graphically” besides being capable of distinguishing.

Therefore, a trademark may consist of a sound and be represented by a series of musical notes, with or without words. The manual states that no sound marks will qualify, prima facie, for acceptance without evidence of distinctiveness. In particular, simple pieces of music consisting of only one or two notes, songs commonly used as chimes and nursery rhymes for goods or services aimed at children would not qualify as sound marks. Thus, sound mark registrations would remain thin on the ground. So far, only Yahoo!’s three-note yodel has been registered in India as a sound mark.

Olfactory marks
The manual reiterates that the Trademarks Act requires a trademark to be “capable of being represented graphically”. Therefore, unless this requirement is satisfied a smell will not constitute a trademark. The manual prescribes that a mark is graphically represented when the representation is in paper form, for instance, and it is possible to determine precisely what the mark is without the need for supporting samples.

The manual appears to be in line with the European Court of Justice’s opinion that an olfactory mark would not satisfy the requirements of graphical representation if it is presented in the form of: 

• a chemical formula; 
• an odour sample; or 
• a combination of both.

Therefore, the greatest obstacle to the registration of olfactory marks appears to be the requirement for graphical representation.

Holograms
The manual states that the distinctive character of a hologram mark will be assessed in the same manner as a word or device mark.

To meet the graphical representation requirements for multiple-feature hologram marks, the manual prescribes that the applicant will have to provide representations of each of the various views depicted in the hologram. However, for a simple image, where the essential features do not change according to the angle at which it is viewed, multiple views may not be necessary and a single representation may be acceptable.

Shapes of goods
The manual reiterates the Trademarks Act’s provision that a trademark shall not be registered if it consists exclusively of the shape: 

• of goods which results from the nature of goods themselves; 
• necessary to obtain a technical result; or 
• which gives substantial value to the goods.

The manual suggests that while the legal test for distinctiveness is the same for shape marks as for other marks, recognition must be given to the differing perceptions of the average consumer in relation to unconventional marks. In particular, the average consumer may not as readily accept the appearance of the goods themselves as an indication of trade origin.

The manual clarifies that shapes which are, or have been, the subject of registered designs are not excluded from registration under the Trademarks Act, unless the shape adds substantially to the value of the goods.

Evidence
The manual suggests that the key issue with regard to unconventional marks will usually be whether the proprietor has used the sign distinctively to educate the public that it is a trademark. The most obvious way of educating the public that a sign is a trademark is to use it in advertising statements, such as “Look for the one with the [blue] wrapper” or “You can rely on the [description of appearance of goods or packaging] to tell you its a [brand name]”.

Evidence of such use would go a long way towards demonstrating that the public considers the sign as a trademark.

Trade evidence
The manual recommends that on top of the declaratory affidavit by the applicant itself, trade evidence may be useful. The applicant may submit evidence from chambers of commerce or other trade and professional associations, or from consumers. Such evidence may assist in establishing that the trademark has been used sufficiently in the marketplace and has acquired a distinctive character in the eyes of a significant proportion of the relevant class of consumers.

The manual states that the stronger the objection to the application, the more important it will be for the applicant to provide trade evidence. The manual prescribes that evidence in the form of witness statements and unsworn exhibits, such as letters submitted alongside and as part of an affidavit, would be acceptable.

However, evidence from a party under the control of the applicant or in respect of which the applicant is able to apply commercial pressure for supporting statements (eg, the applicant’s manufacturer, distributor (other than independent retailers, or a party with a vested interest such as a licensee) would be given little weight.

Survey evidence
The manual states that survey evidence may assist in establishing that a significant proportion of the relevant consumers look upon the applicant’s mark as serving a trademark function. The manual prescribes that a survey would be of assistance only if it is conducted in accordance with the guidelines and is directed to matters in respect of which there is room for doubt.

The recommended guidelines are as follows: 

• The survey should explain how the interviewees were selected (a survey will carry more weight if it represents a cross-section of the relevant public or trade). 
• The survey should not be restricted only to the class of person who might purchase the applicant’s goods or services. 
• The number of persons issued with questionnaires or invited to take part in the survey should be disclosed. 
• The total of those responding should be disclosed and should equal the number of responses submitted to the registrar. 
• The name of the applicant should not be disclosed in the questionnaire or in the covering letter. 
• A representation of the sign(s) (if any) shown to interviewees should be included. 
• The exact answers should be disclosed by providing copies of the actual response sheets. 
• The place where the survey was conducted should be disclosed, together with the exact instructions given to interviewers.

The manual clarifies that the questions must not be leading. For example, the survey should not ask closed questions, such as: “Is the sign regarded as the applicant’s trademark?” Instead, it encourages use of open questions, such as: “What, if anything, does this picture signify to you?” The survey must probe those that directly or indirectly mention the applicant to test the nature of any association.

Therefore, the success of survey evidence would depend on how well it is able to demonstrate that the respondents recognise that the mark is from a particular source.

Conclusion
The launch of the manual will greatly assist in the examination of unconventional marks and the appreciation of the evidence required to establish factual distinctiveness. At the same time, it will help to develop the law on unconventional marks – an area that is still nascent – and shape the future for the protection of such signs.

This article first appeared in World Trademark Review, Issue 20 (August/September 2009).

Views and opinions expressed in this article are those of the author and do not necessarily reflect the views or opinions of Luthra & Luthra Law Offices