Securing Registration for Non-Traditional Trademarks in India
This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight
Introduction to non-traditional trademarks
Does this shade of blue (Figure 1) or this red-soled heel (Figure 2) ring a bell? This shade of blue, also more popularly known as the ‘Tiffany Blue’, has been associated with the brand Tiffany & Co since at least 1845 and is probably the most powerful source identifier in today’s world. As for the heels, this red-soled heel is the famous Christian Louboutin heel that has been associated with the brand for decades and is a registered trademark in various jurisdictions, after winning notable legal battles worldwide.
Trademarks are an essential part of any business as they help in identifying and distinguishing the goods and services of one person from those of another. Trademarks play a crucial role in aiding consumers in identifying the source of a product, which in turn contributes to the establishment of a positive reputation, brand value and goodwill. Conventionally, a traditional trademark comprises a name, word, phrase, logo, symbol, design, image or a combination of these elements. However, with the advancement of technology and changing consumer preferences, non-traditional trademarks have gained prominence. Non-traditional trademarks are those that do not fall under traditional marks and include sound marks, odour marks, colour marks, three-dimensional marks, taste marks and motion marks, among others. Modern industry is actively involved in inventing items that engage senses like smell, touch and sound aiming to cater to the needs of contemporary consumers who seek more sensory experiences from their goods and services. While these non-traditional trademarks have not gained acceptance in all jurisdictions, their usage is quite common in today’s market. Non-traditional trademarks are still an evolving practice in the marketplace, with developments in case law on this subject matter in various jurisdictions.
Under the Indian Trade Marks Act 1999 (the Act), the registration of trademarks is contingent upon their capacity to distinguish themselves from the products of others and their ability to be represented graphically. Non-traditional trademarks, also called non-conventional or unconventional trademarks, that serve the fundamental purpose of a trademark, face some challenges when it comes to registration in India. This is primarily due to the requirement of distinctiveness and the difficulty in graphically representing such marks. Nonetheless, the law of non-conventional trademarks is still evolving in India as in other jurisdictions in the world, and day by day, more and more unconventional trademarks are gaining prominence and getting registered under the Indian trademark law.
Types of non-conventional trademarks: a global perspective
- Sound marks: sound marks, also known as auditory marks, encompass auditory elements and are the most frequently registered and protected, enjoying significant popularity in various countries, notably the United States. They play a vital role in helping consumers uniquely identify specific products in the competitive market without generating undue confusion. Unlike other non-conventional trademarks, sound marks can be visually represented using musical notations, with or without accompanying words. Some of the earliest and most well-known registered sound trademarks include the Harley Davidson sound, the Nokia tune and the Tarzan yell. In 2008, the Indian Trademark Registry granted the first sound trademark to Yahoo Yoodle. Later, ICICI Bank became the first Indian entity to secure a trademark registration for its corporate jingle, ‘Dhin Chik Dhin Chik’. Our firm has also successfully assisted Britannia Industries Limited in registering their distinctive sound mark ‘Ting Ting Ti Ting’ for various goods covered under Classes 29 and 30.
- Smell marks: among the human senses, smell holds a unique and potent capability to effortlessly evoke memories of the past. While several countries have acknowledged the registration and protection of product scents as trademarks, their registration process remains challenging owing to the inability to represent scents graphically and the formidable task of demonstrating their distinctiveness from the product. In numerous instances, scents have been represented by documenting the chemical composition of the fragrance. Nevertheless, some companies have successfully completed all the requisite tests and obtained trademark registrations for scents. Notable examples include a UK tire company’s aroma of roses and the scent of beer in the dart flights of a London-based company called Unicorn Products Limited.
- Colour marks: colour is omnipresent, and its inherent distinctiveness remains a question without a definitive answer. While colour trademarks are accepted for combinations of colours, registering a single colour mark remains a complex area owing to its inherent challenge of achieving distinctiveness. In addition to the Tiffany Blue, some well-known examples of colour trademarks include Cadbury’s distinctive royal purple, Barbie’s protected shade of pink and 3M’s Canary yellow. Some of the colour marks registered in India can be seen below: Figure 3 by Deutsche Telekom AG, Figure 4 by Tata Sia Airlines Limited and Figure 5 by Victorinox.
- Motion marks: motion marks are those that are represented in the form of a moving image or in any other form of description. They encompass a wide range of elements, including holograms, gestures, dynamic movements and animated features that can incorporate aspects of colour, sound and product design. These marks are the product of multimedia and often involve a combination of sensory elements to create a unique and memorable brand identity. Only a handful of nations permit the registration of trademarks involving, for example, moving images, videos, cinematography, video clips from documentaries or films. Prominent examples of such motion trademarks encompass iconic brands such as 20th Century Fox Movies and Columbia Pictures, and the dynamic Microsoft Windows logo that greets users when they open a Windows desktop. In India, the first motion mark to be filed was Nokia’s ‘CONNECTING HANDS’ mark. However, the Registry’s records show that the mark has been registered as a device mark rather than a motion mark, until 2019 when Toshiba Corporation secured registration for its motion mark (Figure 6).
- Shape marks: by getting a registration for the shape of products, a brand can protect the aesthetic value of their core products. However, the shape should not result from the nature of the product itself, or give substantial value to the product, or be necessary to obtain a technical result. 3D marks are also a variant of shape marks that uses the three-dimensional shape of a commodity or packaging to make it appear different from other products. Some examples of shape marks are the Manolo Blahnik shoe, the Coca Cola bottle and the shape of Toblerone chocolate. Our firm successfully assisted Britannia Industries Limited in registering their 3D marks (Figure 7 and Figure 8) for various goods covered under Class 30.
- Taste marks: taste marks cover the taste or the flavour of an item. They need to be represented by way of written descriptions; however, there is a challenge of functionality. It is a topic of debate as to how the taste could function as a source indicator, as customers usually have no access to the flavour or taste of an item before they purchase it.
There are various other types of trademarks falling within the ambit of non-traditional trademarks that have been gaining momentum, such as hologram marks (an image that changes its appearance when looked at from different angles), position marks (a mark that is affixed to or placed on a product) and texture marks (the feel of a product or its packaging can act as the source identifier).
Metaverse and non-traditional trademarks
The metaverse represents an immersive digital realm that integrates elements of social media, online gaming, augmented reality, virtual reality and cryptocurrencies enabling virtual interactions among users. Similar to real-world scenarios, numerous legal challenges emerge within the metaverse. One such challenge pertains to the relevance and safeguarding of intellectual property rights, particularly trademarks. Brand owners need to prioritise the protection of their brands in this virtual environment, necessitating the development of a legal strategy to participate effectively in the metaverse.
Scope of protection of non-traditional trademarks in metaverse
Securing trademarks in the metaverse extends beyond traditional forms, such as word marks or logo marks, to encompass non-traditional trademarks such as sound marks, smell marks and motion marks. This expansion holds the potential for substantial gains for companies and brands operating in the metaverse, creating a compelling brand allure among the virtual world’s extensive user base. Consequently, the protection of their trademarks becomes a matter of utmost significance.
As the metaverse continues to evolve, brands have increasingly started to offer virtual products and services. In such a scenario, the distinguishing factor is predominantly the brand’s value. The stronger the brand protection, the higher the brand’s worth. If a company is considering entering the market for branded virtual products and services within the metaverse, safeguarding the brand becomes imperative. Some enterprises have already initiated trademark registration programs for this purpose. Numerous companies, including MasterCard, McDonald’s, Nike, Walmart, Skechers, the Brooklyn Nets (an NBA Team), Puma and various brands in the fashion, cosmetics, sports and entertainment sectors, have initiated trademark applications for their marks in connection with virtual offerings. Our firm successfully assisted Ekanek Networks Private Limited in obtaining registration for their mark ‘BOHOVERSE’ for virtual goods covered in Class 09, such as digital materials like non-fungible tokens (NFTs), digital collectibles and NFTs with blockchain technology.
To effectively serve their intended purpose within the immersive realm of the metaverse, trademarks are likely to take on non-traditional forms. These may include dynamic marks, such as moving image marks, sound marks, architecture and layout, holograms, patterns, smell and taste marks. This shift will necessitate an expanded scope of protection for these non-traditional trademarks. For instance, brand owners looking to promote their trademarks within the metaverse may have opportunities to do so through virtual billboards, sponsored virtual events and even virtual shopping centres where consumers can explore a brand owner’s virtual products. In fact, some brands are already engaging with customers in the metaverse through decentralised gaming applications and the sale of exclusive virtual clothing lines utilising NFT technology.
Legal framework for non-traditional trademarks in India
The legal framework for trademarks in India is governed by the Trade Marks Act 1999 and the Trade Marks Rules 2017. The Act defines a trademark as ‘a mark capable of being represented graphically and which is capable of distinguishing the goods/services of one person from those of another’. The Act also provides for registration of non-traditional trademarks; however, the possibility of securing their registration can be a bit complex at times.
In India, the law does not specifically address the eligibility of non-traditional marks, leaving a gap in clarity. However, the criteria for registration of non-traditional trademarks in India is the same as that for traditional trademarks. The mark should fulfil the primary criteria (ie, it must be capable of being represented graphically and distinguishing goods and services of one person from those of another). In addition, the trademark must not be similar or identical to any existing trademarks. As regards graphical representation of any non-traditional trademark, the prominent forms in which these marks are represented are pictorial representation or a written description, or a combination of both. Most importantly, it must allow the ordinary customer to comprehend what is being claimed as a trademark as ultimately that will end up being the source identifier of a brand.
Challenges in registration of non-conventional trademarks
One of the biggest challenges is while getting a non-traditional trademark registered is the requirement of graphical representation. The Act requires that a trademark must be capable of being represented graphically, which sometimes poses a significant challenge for registration of non-traditional marks such as for sound marks and smell marks. However, this challenge has been somewhat overcome by the Trademark Rules 2017, which provide for the submission of an MP3 file or a video file for sound marks and a chemical formula or a description for smell marks.
Another challenge is the requirement of distinctiveness. Non-conventional trademarks are generally not deemed distinctive under the Act, rather they are deemed to have acquired secondary distinctiveness for the purpose of registration as such. This means that the trademark must have acquired distinctiveness through use over a period of time.
When it comes to the protection of trademarks in the metaverse, given the current scenario, it is safe to assume that a large number of frivolous filers and squatters will try to get registrations for the most popular marks in the virtual world and metaverse. Thus, it becomes very important for the right holders to protect their trademarks in the metaverse as well. It can thus be said that the protection of trademarks in the virtual world would greatly influence the value and rights of trademarks already existing in the physical world.
Despite existing for so long, the ownership of non-traditional trademarks remains an evolving concept. While there are challenges in registering them, they should not be viewed as reasons to deter applicants from seeking protection for such marks. Instead, these hurdles serve as evidence of the evolving nature of intellectual property law and should be regarded as milestones in the adoption of innovative ways to set one’s business apart.
One of the most striking features of a non-traditional trademark is the psychological impact it has on the consumers, making them associate it with brands even subconsciously. In the ever-so developing world, companies and brands come up with various out-of-the-box ideas for branding their products that are based on taste, smell and sound, etc. As technology has advanced and customer preferences have changed, non-traditional trademarks have become extremely popular. The Act and Rules govern the legal foundation for non-conventional trademarks in India. Despite the challenges as described above, non-conventional trademarks can be registered in India with the proper legal advice and supporting documentation.