According to Section 2(1)(m) of the Trademark Act, 1999, a “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or a combination of colors, or any combination thereof. However, it is under Section 2(1)(zb) where the term “trademark” is specifically and broadly defined. Section 2(1)(zb) states that a trademark means a mark which is (a) capable of being graphically represented, and (b) this representation enables the capability to distinguish one person’s goods and services from those of another person. Traditional trademarks consist of word marks, service marks, device marks, etc. Any other mark that does not fall within the purview of traditional marks is called a “non-traditional trademark.”
Classification of Non-Traditional Trademarks
- Colour Mark
A colour mark includes a single colour or a combination of colours. According to Section 10 of the Trademark Act, 1999, a colour or combination of colours can be registered by a brand if there is distinctiveness attached to it. It is the tribunal that decides whether the colour and colour combinations are distinctive enough to be registered. In the famous case of Deere & Company & Anr vs Mr. Malkit Singh & Ors, the Delhi High Court provided recognition and protection to the green and yellow colour combination used on the tractors of Deere and Company, as the colour combination was very distinctive in nature and recognized by customers as a specific product belonging to this particular company. - Shape Mark
A shape mark is a multi-dimensional or three-dimensional mark that justifies the shape of the product or is used in packaging the product. The concept of shape marks was added in the 1999 amendment of the Trademarks Act. Under this provision, a shape of a product becomes eligible for protection if it is capable of being graphically represented and has acquired distinctiveness. For example, the packaging of Toblerone chocolate and Zippo lighters have been granted recognition due to their distinct visual shapes. - Motion Mark
A motion mark may be considered a moving mark created by the use of computers. The moving element is usually a logo of the brand. For example, the Nokia logo of “connecting hands” has been registered as a device mark, not a motion mark. The term “motion mark” has not been defined anywhere in the Trademark Act or the manual. Recently, the “TOSHIBA” motion mark was registered as a motion mark in India after a prolonged battle in court. - Sound Mark
Any sound that is graphically represented by musical notation can be registered in India as a sound mark. Such a mark may include words along with the music or may not include words. An important criterion for eligibility as a potential sound mark is that a wide range of customers should be able to associate that sound with a particular brand. The concept of sound marks is mentioned in the Trademark Rules and not in the original Act. Examples of certain famous sound marks include Britannia Industries (four-note bell sound) and Yahoo (human voice saying “Yahoo”). - Image Mark
Image marks are not very common types of non-traditional trademarks. Although they have not been defined in the Indian Trademark Act, the US Lanham Act gives a brief idea about image marks by associating them with “trade dress,” which means “almost anything at all that is capable of carrying meaning.” In France, the Eiffel Tower, and in the US, the Empire State Building are registered as image marks. In India, the first image to be registered as a trademark is the image of the Taj Mahal Hotel in Mumbai. - Smell Mark
The first smell mark was registered in the United Kingdom for Sumitomo Rubber, which carries a floral fragrance resembling the smell of a rose. No smell mark has been registered in India yet.
Registration of Non-Traditional Trademarks
In India, non-traditional trademarks are registered in the same way as traditional trademarks:
- The mark should be graphically represented.
- It should be distinctive in nature; such distinctiveness can be factual or acquired.
- The mark should enable people to identify it with a particular brand.
- People should be able to distinguish the goods of that brand from those of other brands.
- The Trademarks Act, 1999, and the Trademark Rules, 2017, are the major legal frameworks for the registration of both traditional and non-traditional marks.
Challenges in Registering Non-Traditional Trademarks
- Marks like smell and shape are subjective and may differ from one person to another. The smell and shape may change over time; even if the chemical composition of the smell mark is submitted, a question may arise as to whether such a smell is associated with a functional element of the product in question. Similarly, the graphical representation of three-dimensional shapes may acquire changes over time and may not be uniform in appearance all the time.
- It is easier to register a combination of colour marks rather than a single colour because a single colour may not be distinctive in character.
- Apart from graphical representation, the mark should acquire secondary meaning or factual distinctiveness by being in use for a very long time. Hence, certain non-traditional marks like sound, motion, and image should be in the public arena for a very long time to acquire secondary distinctiveness, enabling customers to associate the particular mark with the brand.
- Image marks have vague connotations attached to them, as non-commercial photography of that image is allowed, but using that image to buy and sell products is not allowed. However, it may be very difficult to prevent the commercial use of such images, requiring a whole new and robust ecosystem and infrastructure to pursue that.
Conclusion
The Trademarks Act, 1999, and the Trademark Rules, 2017, govern both traditional and non-traditional trademarks. Although they contain ample provisions, non-traditional trademarks require specialized research and inclusion, as they are still in their infancy. The Lanham Act of the US can be referred to for a better understanding of non-traditional trademarks. With the changing dynamics of trademark law around the world, it is important to pave the way for more robust protection laws for unconventional trademarks.
Authored by Vashvi Upendra Singh
Vashvi Upendra Singh, a dedicated law graduate specializing in intellectual property law, including trademarks, copyrights, and patents. With a strong commitment to human rights, Vashvi combines academic knowledge and practical experience to advocate for the protection of creative works while addressing their ethical implications. Passionate about fostering innovation and creativity, Vashvi believes in the vital role of intellectual property rights in supporting global human rights.