ANALYSIS OF CONVENTIONAL AND NON-CONVENTIONAL TRADEMARKS

Submitted by: Prachi Jain, BBA LLB (H) [A3221517325]

INTRODUCTION Trademarks are all-pervasive and can be seen all around us in our everyday life. They aid us in making well-informed decisions about the products and services we purchase. To carry on any trade and to gain recognition, it is a prerequisite to adopt a mark or symbol that distinguishes the goods of a particular trader from that of the others. These marks or other indicia, a trader or manufacturer uses to differentiate his goods from that of the others is called a trademark. For instance, the logo of McDonald’s, Coca Cola, Domino’s etc. ANALYSIS OF THE DEFINITION OF TRADEMARK

1. Mark Section 2(1)m

According to section 2(1)m, a mark is defined to comprise a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or a combination of colours or any combination thereof. This definition may also include other things that fall within the general and plain meaning of the above-mentioned definition. It does not include nonconventional marks like smell or sound, which has been recognized in many countries as trademarks. For instance, Yahoo's trademark ‘yodel’ was officially registered as a sound mark in India. Marks are generally classified into two parts:

a) Conventional trademarks These are the pictorial presentations of marks like letters, words, drawings etc.


b) Non-Conventional trademarks These marks include:

· Slogans,

· Shapes,

· Colours,

· Sensory signs, including auditory signs (sound), gustatory signs (taste), and olfactory signs (scent).

· Action Signs, and

· Holograms.

Section 9(3) of the act includes the prohibited shapes. A mark shall not be registered as a trademark if it consists exclusively of:

a) The shape of goods which results from the nature of goods itself;

b) The shape of goods which are necessary to obtain a technical result;

c) The shape that gives substantial value to the goods.

2. Capable of being graphically Represented

Graphical representation indicates the presence of a trademark in printed form. A trademark should be capable of being presented for registration on paper and for the purpose of publishing in the Trademark Journal. A graphical representation facilitates registration of all trademarks which includes three-dimensional marks (like a coca-cola bottle) and sound marks (roar of the lion in films produced by MGM); however, being graphically represented is a prerequisite. European Court of Justice (ECJ), in the case of Ralf Seickmann, arranged for the test of graphical representation, in which there can be images, lines and characters used and they must be:

· clear,

· precise,

· self-contained,

· easily accessible and intelligible,

· durable, and

· objective.


3. Distinctiveness i.e., capable of distinguishing goods and services of one person to those of others.

The purpose of a trademark is to differentiate the goods and services of one producer from those of the others therefore a trademark must be capable of distinguishing the goods and services. A distinct trademark aids the consumers to familiarize themselves with the brand, to better identify it, and make a choice. In the case of Imperial Tobacco Co. V. Registrar, Trademark, AIR 1977 Cal., the court observed that distinctiveness is a quality in trademarks that earmarks the goods which are marked, different from those of other producers of similar goods. For instance, the word ‘apple’ or a mark of apple is very generic if applied as a trademark for a brand of fruits or vegetables. However, the same word or mark is highly distinctive for computers and other tech devices. This portrays the significance of evaluating the distinctiveness of the trademark concerning the goods to which it is applied.

4.The shape of goods, packaging and combination of colours

The shape of goods, packaging, and combination of colours was first added in the Trademarks Act, 1999. If a mark consisting of a shape, packaging, or a combination of colours is used with goods and services in the course of trade or rendering of services, it shall be a trademark, if it is distinctive and satisfies other conditions. In Gorbatschow Vodka KG v. John Distilleries Ltd., the Bombay High Court observed that the shape of goods is now statutorily recognized as being an integral element of the trademark. TYPES OF TRADEMARKS There are four different types of trademarks recognized under the Indian Trademarks Act, 1999:

· Trademarks (used for goods)

· Service marks (used for services)

· Certification marks (use to certify the quality of good or service)

· Collective marks (used to show membership in an association)


1) Trademarks used for goods

The word trademark is used to refer to goods; however, in routine usage, the term trademark is used even while referring to services. In the case of a Registered trademark, ® is mentioned and the trademark ™ sign is mentioned for Unregistered Trademarks.

2) Service Marks used for services

Service Mark is used to referring to services but even for services, the word trademark is generally used. In case of an unregistered service mark, (SM) sign is used and in case of a registered service mark ® sign is used.


3) Certification Mark

It is a mark that can distinguish the goods or services with which it is used in the course of trade, and are certified by the manufacturer of the mark in respect of origin, material, model of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or service not so certified and registerable as such under Chapter IX in respect of those goods or services in the name, as proprietor of the certification trademarks of that person. The certification mark is a special species of trademarks and its function is not to indicate trade origin like an ordinary trademark is required to do but rather to indicate that the goods having their marks have been certified by the manufacturer of the mark to be of certain characteristics like geographical, origin, ingredients, quality, etc. For instance, products bearing ISI, Agmark, Woolmark are considered to be quality marks. Certification trademarks are majorly different from other marks on basis that the owner of the mark may neither use the mark nor deny its use by others. The owner of a certification mark is strictly prohibited from using the mark in association with his or her own goods and services. Moreover, the use of certification marks is not exclusive. The owner of the mark may not deny its use by anyone who maintains the characteristics guaranteed by the certification mark.

4) Collective marks section 2(1)g

Collective marks are trademarks distinguishing the goods or services of members of an association of persons not being a partnership within the meaning of the Indian Partnership Act, 1932, which is the proprietor of the trademark from those of others. Collective Mark Association ensures compliance of certain quality standard members use marks when they comply with it. For instance, an association of doctors, lawyers, Chartered Accountants, etc. In this the registration belongs to a group or association of persons and its use is reserved for members. It can also indicate trade in connection with the organization. CONVENTIONAL AND NON-CONVENTIONAL TRADEMARKS 1. Conventional Trademarks Conventional marks are also called traditional Trademark law in India and any other country always give greater protection two strong and distant trademarks. Conventional trademarks are categorised in five categories as explained further. a) Generic or generalised Trademarks A generic or generalised trademark is a trademark or brand name which has become the generic term or synonymous for a general class of product or services because of its significance and popularity. This generally happens against the intentions of the trademark’s owner. For instance; 1. Aspirin: In Bayer Co. V. United Drug Co., the Court permitted the defendant to use the plaintiff's trademark ‘aspirin’ as it became generic in nature because it acquired a popularity. 2. Escalator: The trademark escalator belongs to an American company by the name of ‘OTIS', which manufacturers elevators walkway that moves, but this trademark has now become a generic mark. b) Arbitrary Trademark Arbitrary trademarks are those trademarks or service marks that include a word or a symbol that has nothing to do with the products or services it offers. For instance, products like TATA, BATA, Apple, etc. In Ahmed Oomerbhoy and anr. V. Shri Gautam tank and Ors., the plaintiff is the manufacturer and seller of the edible oil by the name ‘post man’ which is an arbitrary trademark for more than 50 years and the defendant started manufacturing the groundnut oil by the name ‘super postman’. The court granted the injunction in favour of the plaintiff restraining the defendant to use the mark as it resulted in infringement and passing off due to the deceptive similarity of these marks under consideration. c) Suggestive Trademark Suggestive trademarks are trademarks that give suggestions as regards the nature of the quality of the product but in no way does it give the description of the product. Examples of these trademarks are Microsoft, Citibank, etc. In Cadila Health Care Ltd. V. Gujarat Co-operative Milk Marketing Federation Ltd and Ors., the court deduced that suggestive trademarks need not prove a secondary meaning to be protected and deserves to be protected just like a coined trademark. d) Fanciful Trademark Fanciful trademarks are used for a specific product. It might be something that does not have any meaning in English, or it could be a distinct pictorial device or presentation. Fanciful trademark is also considered as one of the strongest trademarks as it has inherent features of distinctiveness. For example, XEROX, NIRMA, LUX, etc. In Playboy Enterprises, Inc. V Bharat Malik and anr., it was held that the term ‘Playboy' which is used by a magazine as a fanciful trademark is registered in several nations including India and hence, needed protection under the law.

e) Descriptive Trademark A descriptive trademark is a trademark that talks about the characteristics and the features of the product. For instance, if a seller sells t-shirts and jeans by the word mark ‘Trendy jeans and t-shirts’ then this becomes a descriptive mark. These types of marks have their own pros because the proprietor does not need to advertise such trademarks as the name itself speaks for the product. One of the examples of these types of trademarks is Life Insurance Corporation (LIC). In Reddaway and Co ltd v Banham and Co Ltd 164, the House of Lord decided this leading case on descriptive trademark in which the plaintiff’s trademark was given protection. The plaintiff was in the trade of producing hair belting by name ‘Camel hair belting’ and when the defendant infringed the plaintiffs mark the plaintiff claimed the right in the name and though the mark was descriptive in nature had acquired a secondary meaning and hence, deserves protection. In the Indian market, we find a number of goods and services with descriptive trademarks. 2. Non-Conventional Trademarks non-conventional trademarks are any new type of trademark that do not belong in the free existing statutory conventional categories of trademark. The types of nonconventional trademarks can be broadly classified in visual marks such as trade dress, holographic mark, motion mark, colour mark and nonvisual marks such as sound mark, olfactory mark, texture mark, taste mark, etc.

A) Shape as trademark According to the provisions of the Trademarks Act, 1999, now the shape of the goods packaging or any three-dimensional object which can be represented graphically have the option to be registered by completing certain requirements. The shape must be able to graphically represent itself for registration purposes and should also be distinctive from the goods of others. The registrar will consider the entire procedural requirement needed to register the shape as a trademark whenever applied for registration.

The Bombay High Court has recognised the shape of good as a trademark while deciding the Woodkirk case, where the shape of the bottle was considered as distinctive and boys intrinsic off its reputation. An expired injunction was granted against the defendant. The requirement for such registration is that the shape should enable consumers to distinguish the product or packaging from other products. In Apollo Tyres Limited v. Pioneer Trading Corporation, the Delhi High Court passed an interlocutory order and restrained the defendant from using a tread pattern that is the same as the plaintiff which amounted to infringement of the registered trademark of Apollo.

B) Sound trademark According to the Trademark Act, 1999, if the sound is represented graphically on the basis of musical notes either by using word or not can still be registered as a trademark. It is a prerequisite that the sound must be truly distinct from others to get it registered. In India we can register sound as a trademark by submitting the sound in MP3 format which should not cross half a minute of a time and with graphical representation of the sound along with trademark application form should be filed with the trademark registry for registration of the sound and strike mark. Things that cannot be taken as trademarks include nursery rhymes which cannot be registered similarly an entire song also cannot be registered just like popular music. C) Colour trademark According to Section 10 of the Trademarks Act, 1999, colour as a trademark can very well be registered by away of single as well as a combination of colours provided by the proprietor can distinguish the colour of office products or business organisations from other businesses and the proprietor should establish the connexion of such colour with its product or entity. Generally, a combination of colours is accepted for registration as compared to a single colour. The colour trademark, even if not registered under the Act, can be protected under the common law action of passing off by proving the reputation gained by such a mark, e.g., the colour pink used for Varnish, a Carpet and upholstery cleaner. In the case Hindustan Unilever Ltd v Shiv Shankar, the Plaintiff is the registered proprietor of the marks Wheel, Active Wheel, which is a detergent powder and soap, and the packaging displays get up of colour combination artwork which is distinct in nature. The defendant was manufacturing and also selling soaps as well as detergents in the name and style of 4G Active and Advance White and the packets used for these products were deceptively similar to the one of Plaintiff in the colour combination. The court allowed Exparte injunction and also appoint a special officer to take inventory of the infringing material and also to take into possession of the same. D) Smell or Olfactory Trademark

A Smell mark can be applied for registration under the Trademark Act by representing it graphically; however, despite this, there has not been a single smell trademark registered in India as of yet. To be registered in India, this category of Trademark will require a lot of development to be done by deploying experts who can analyze the same scientifically in well-equipped laboratories. a) Rose odour for pencil, rubber or pages of the book. b) Unique smell of Perfumery products or liquor etc. In Re Celia Clarke, United States of America, Reminiscent of plumeria blossom floral fragrance was registered as a trademark for a sewing thread. E) Touch Trademark This is an innovative trademark in which a special and unique touch of either the product or the packaging can be registered as a trademark. Though these types of Trademark are not so popular, few companies are coming ahead like from the liquor industry, pharmaceuticals etc. Although there has not been any trademark registration done to date in this category in India, there is a likely hope in future. In America, Diageo was initially successful in registering the velvet touch of its Crown Royal bag/pouch but later on, the registration was cancelled due to some lapse in registration on the part of Diageo. Further down in the future, a winemaker got ‘Leather touch’ registered federally as a trademark and in another case, a dispenser with a surface and texture have ‘Pebble grain’ has been uncontestable.

F) Taste Trademark Taste trademark, as the name denotes, can be referred to the taste of a product i.e., for edible items. It can be said to be almost similar to the trademark of smell. This is a new form of the trademark which is yet to make its root in India. Right now, it is not so popular in India as compared to the other foreign nations. ‘OHIM’ did not allow the pharmaceutical Co. to register by the name Eli Lilly as a trademark in accordance with the taste of strawberries which were artificially made. G) Motion The Motion trademarks are possible due to the advancement of multimedia production and these types of registration are done based on the sequence of moving of picture and drawing. In Twentieth Century Fox, Film Corporation, et al., v. I care TV, et al. 176, the FOX Film Corporation logo which is of 20th Century is a registered trademark in motion in which the floodlights trail in the sky in a back and forth direction. In this case, the TV was injuncted from using Fox Co. Trademark.

E) Hologram

There is no mention of Hologram in the definition of a Trademark in the Act; however, that does not mean they are excluded. This is because the definition is exhaustive in nature, which means that even holograms can be registered if the same can be represented properly. For example, the VF (Video Future) got its trademark of Hologram registered by way of GDS video.

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