Dr.

Ram Manohar Lohiya National Law

University, Lucknow

Final Draft
Intellectual Property Rights - I

Topic: - Sound, shape and smell marks: Protection of non-

traditional trademarks in India.

SUBMITTED TO: SUBMITTED BY

Dr. Vikas Bhati Shailesh Kumar

Assistant Professor (Law) 7th semester

EnRoll no: - 150101120

Tentative Chapterization:

 Introduction to Trademarks.
 What is the requirement for registration of the non-traditional marks?
 The concept of distinctiveness of trademarks.
 Kinds of non-traditional marks.
 The scenario in USA and EU.
 Need for protection of non-traditional marks in India.
 Conclusion
Introduction

The advent of non-traditional trademarks in India has been rather late as compared to the rest of
the world at large. While the developed nations recognized the use of non-traditional trademarks
way back since 1970s itself, it is only recently that India has stepped into this realm. In the day
and age of aggressive marketing, numerous techniques are adopted to capture the attention of the
consumers. Products are being distributed, sold and advertised in new ways. The challenge is
how to protect and enforce the selling power of a brand that is no longer limited to a trademark,
but rather is a combination of a color scheme, a layout and product packaging. In addition,
slogans, jingles and advertising storylines can all help to create an association with a brand. This
problem has arisen because of the ever changing trends in technology and global marketing. The
developed nations like United States of America have been active in this realm from a long time
and it is the countries like India that need to seriously look into the matter and come forward
with an active participation as to grant recognition to the non-traditional marks.

In the late 1990s non-conventional trademark forms such as sound, taste, touch, color and
olfactory marks grew in importance This is where the non-conventional trademarks come into
play. Non-conventional or non-traditional trademarks are those marks which are beyond the
purview of traditional trademarks and therefore consist of marks originating from shapes,
sounds, smells, tastes and textures. Although not specifically mentioned in the Act, the definition
of a 'trademark' incorporates the non-conventional marks as well. In practice, such
representations can successfully serve the purpose of trademarks; therefore, issues arise
regarding the recognition and acceptability of rights to such marks, and whether such rights are
protectable.

A reading of Sections 2(1)(zb) and 2(1)(m) of the Act shows that the definition of "trade mark"
has been widened to include shapes, packaging and combination of colors. As specified in the
Manual,1 this is an inclusive definition including any mark as long as the mark is capable of
being represented graphically and capable of distinguishing the goods or services of one person

1
Section 3, Draft Manual.
from that of the others. Nonetheless, it has been stated that colors, shapes, sounds and smells will
require "special consideration" during registration.

With respect to the graphical representation of sound marks, India has simply imported the
Shield Mark doctrine.2 The Trade Mark Registry has not sought to probe into whether
representation through musical notes is intelligible to everyone, and whether it is all-
encompassing. Nonetheless, with regard to distinctiveness, the Manual specifically lists sounds
which are not distinctive and thus will not be registered. In the context of scent marks, the
Registry has again directly applied the Sieckmann test, stating that though smells are registrable,
the fulfillment of the graphical representation criteria becomes difficult post the
Sieckmannholding.3 It is disappointing to note that the Registry has not suggested any alternative
method of graphical representation in spite of stating that smells are registrable.

Color

In India, the Trademarks Act 1999 replaced the Trade and Merchandise Marks Act 1958 and
amended and consolidated the law relating to trademarks in India. Primarily, the new act was
considered necessary for India to comply with the Agreement on Trade-Related Aspects of
Intellectual Property Rights and to meet its obligations as a member of the World
TradeOrganisation. Under the old act, unconventional trademarks such as color combinations per
se, three-dimensional marks, smells, sounds and tastes were incapable of being registered.
However, the new act specifically provides for the registration of the shapes of goods, packaging
and color combinations as trademarks. Although smells, sounds, tastes and holograms are not
specifically mentioned, the prevailing legal opinion seems to suggest that the newly amended
definition of a ‘trademark’ is wide enough to include non-conventional marks.

The Indian Trademarks Act, 1999 (the 'Act') defines trademarks as "a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one

2
Section. 5.2.2.1, Draft Manual.
3
Section 5.2.3, Draft Manual.
person from those of others and may include shape of goods, their packaging and combination
of colours."
The act recognizes that colors add to the distinctiveness of a mark by providing that if a mark is
restricted to a particular color, this fact will be taken into account when determining the
distinctiveness of the mark. However, whether a colour by itself is entitled to protection as a
mark remains a grey area. The act does not specifically provide for the registration of a single
colour, although it does not expressly exclude the notion. However, in practice, a combination of
colours stands a better chance of registration, provided that it is capable of distinguishing the
goods of one trader from those of another.
In other jurisdictions, colour marks have been granted registration, thereby giving the proprietor
exclusive rights to a single colour (eg, the colour purple for Cadbury’s Dairy Milk chocolate) or
a colour combination per se. However, in India, suchmarks continue to be accepted for
registration only as device marks (Device marks: Logos and labels as well as, for example,
words in a special font or presented in a special layout (a logo which includes a name).For
example, the Standard Chartered Bank obtained registration for its corporate colour combination
of green and blue, but this is registered as a device mark, not a colour mark.
To date, the Trademarks Registry has reportedly accepted no single colour marks for registration.
Brand owners fear that since the act contains no clear provisions on the registration of a single
colour and there is strong evidence to suggest that factual distinctiveness is required, the
possibility of such an application being rejected is high. Given the limited number of colours,
there is concern that by allowing registrations of coloursper se, sooner or later the available stock
of colours will become depleted and thus anti-competitive. Therefore, there are stringent criteria
for accepting single colour marks for registration.
According to the draft Trademarks Manual guidelines, in exceptional circumstances a single
colour can be considered for registration if the colour is capable of denoting the origin of a
product or service and has acquired a high level of distinctiveness. Alternatively, unregistered
colour marks can be protected under the law of passing off on the basis that their use shows that
they have acquired a reputation that is protectable. The definition and ambit of passing off is
wide enough to include all trademarks, including non-conventional marks.
In Colgate Palmolive Company v Anchor Health and Beauty Care Pvt Ltd 4the courtobserved
that a colour combination is a‘trademark’ within the definition of the act, as there is no exclusion
in the definition and even a single colour is entitled toprotection under the law of passing off.
This dispute concerned the defendant’s colour combination of red and white in respect of dental
products, which was similar to the plaintiff’s colour combination of one-third red and two-thirds
white on its product container.

In Deere and Co v S Harcharan Singh5where John Deere filed an action to protect its yellow and
green colours, the Delhi High Court declared the word mark JOHN DEERE, the leaping deer
logo and the company’s green-and-yellow colour mark to be well-known trademarks. In Deere,
John Deere became aware of the manufacture and sale of farm equipment across India under the
trading name and mark SURINDERA, which bore a striking resemblance to John Deere’s
products and incorporated its well-known logo and colour combination. Surindera’s green and
yellow colour combination was very similar to John Deere’s – the body of the vehicle had been
painted green with the wheels and the seat painted yellow.
A suit for trademark infringement and passing off was thus filed and injunctions sought. John
Deere filed extensive evidence in support of each criterion needed to prove well-known
trademark status, including:

 the use of the colour scheme for the last 100 years;
 the extensive sales accrued in favour of the plaintiffs; and
 the extensive recognition of its trademark not only abroad, but also by millions of farmers
in India.

Further, the extensive sales literature and localised documents presented before the court
established that the reputation of the John Deere trademarks had percolated deep into the Indian
agricultural industry.

John Deere’s rights were recognized in the colour mark and not in the colours green and yellow
in general. These shades of green and yellow have been expressly recognized by Pantone as John
Deere Green and John Deere Yellow. Further, it has also been established that although
4
2003 VIIIAD Delhi 228
5
(2015(63)PTC433(Del)
monopolising any of the seven primary colours is against the colour-depletion theory, securing
trademark registrations over particular shades and combinations of such shades is in line with the
principles of trademark law.

Sound
Meanwhile, India is one of the few countries in Asia to have opened its doors to the statutory
protection of sound marks. The Trademarks Registry granted India’s first sound mark
registration for Yahoo’s three-note yodel in 2008. The application was filed in 2004 with the
following description: “the mark consists of the sound of a human voice yodeling the word
Yahoo.”
Subsequently, Allianz is reported to have successfully registered its sound mark in India and the
Trademarks Registry has recently accepted Intel’s application for registration of its sound mark.
The Trademarks Registry has also examined an application for a sound mark filed by an Indian
entity. ICICI Bank successfully secured registration for its corporate jingle and is thus the first
Indian entity to obtain a sound mark registration – a promising development in this area of
trademark law.

Although it is encouraging that the Trademarks Registry has opened its doors to the registration
of sound marks, the act does not specifically mention or define nonconventional marks such as
olfactory, colour, taste and sound marks. In the absence of clear provisions, it is necessary to rely
on a broad definition of a ‘trademark’ that can be interpreted to cover such marks. According to
the definition of a ‘trademark’ in India and a number of other jurisdictions, an essential criterion
for registration is that the mark in question be capable of being graphically represented.
However, the act does not specify what constitutes graphical representation. For example, sound
marks can be represented only aurally, not visually. When Yahoo’s sound mark application was
filed, there were no clear guidelines on the requirements of graphical representation in relation to
sound marks or the procedures to be followed. Therefore, applicants had to rely on criteria laid
down by the courts of other jurisdictions.
It is prescribed that a trademark may consist of a sound and be represented by a series of musical
notes with or without words. The representation must be clear, precise, self-contained,easily
accessible, intelligible, durable and objective.
The most relevant case, landmark in its consequence, is the case of Shield Mark BV v. Kist.6 The
ECJ decided on whether sounds could be trademarked, and if yes, could they be graphically
represented. The Court ruled that as per Article 2 a sign needed to possess two features: the
capability of graphical representation and the characteristic of distinctiveness in that the sign will
enable consumers to distinguish between the goods and services of two or more firms. Sound,
the ECJ opined, could be graphically represented. If a sound was distinctive, the Court stated that
there was no reason why it could not receive trademark protection. On the need for the
requirement of graphical representation, the same was required especially as these signs were not
capable of visual representation. In this light, the Court analyzed the various trademarks.
Regarding the description of a sound by virtue of a written description, the ECJ ruled that this
lacked precision and clarity and hence did not constitute a graphical representation. Regarding
onomatopoeia, the ECJ noted that there was a difference between the sound sought to be
trademarked and the onomatopoeia, once pronounced. Therefore, there was no precision and
clarity; hence it did not constitute graphical representation. However the ECJ ruled that a stave
divided into bars and showing a clef, musical notes and the rest showing the relative value
helped determine the pitch and duration. Apart from being precise and self-contained, the ECJ
was of the opinion that this representation was durable, intelligible and easily accessible.
Significantly, noting that the description may not be immediately intelligible, the ECJ observed
that "it may be easily intelligible", thereby allowing the public, especially the traders to
determine the precise sign whose trademark was being sought for. The judgment thus in effect
greatly restricts the scope of registration of sound marks.

Given the liberal approach in U.S.A. towards registration of trademarks, many sounds have
received trademark protection in the U.S.A.Therefore it can be seen that the American
Trademark Board and Courts have not shied away from granting sounds trademark protection as
long as they fulfil requirements sought for conventional marks. Significantly, US courts, unlike
the EU, have accepted representations through sonograms or sound recordings. When MGM
sought trademark protection for the lion roar, the sound was represented through a sonogram.

6
Shield Mark BV v. Kist, Case C-283/01, The European Court of Justice
Smell

In comparison to sound trademarks and color trademarks, the numbers of smell or scent or
olfactory trademarks registered are significantly less. One of the reasons could be due its
inability of graphic representation.

A landmark case determined by the ECJ is the case of Ralf Sieckmann v. Deutsches Patent und
Markenamt.7 In this case, Mr. Sieckmann sought trademark protection in respect of his
conglomeration of businesses. He represented the mark by denoting its chemical
composition, giving the chemical formula, and specifying that samples could be found in local
laboratories listed in the Dutch Yellow Pages. He also submitted a sample, stating that the scent
was usually described as "balsamically fruity with a slight hint of cinnamon". The application
was rejected at various levels on the ground that it did not fulfil the requirement of Article 2. The
preliminary ruling was essentially on whether smells were registerableand whether the
stated methods of graphical representation were adequate. Noting that the signs mentioned
in Article 2 did not constitute an exhaustive list, the Court ruled that a scent could receive
trademark protection provided it is graphically represented. Such representation "must
enable the sign to be represented visually, particularly by means of images, lines or
characters..."; it should be clear, intelligible and self-contained. The purpose of the graphic
representation was to enable the competent authorities, tradesman/ competitors and the general
public to ascertain the precise sign for which protection was being sought for, by checking the
public registry.

Regarding the method of graphical representation, the Court noted that few people could
ascertain the scent by reading a chemical formula; further, the formula actually denoted the
substance and not the scent. A mere written description, though graphical, was not precise or
clear. An odor sample was not graphical, nor stable or durable. Therefore, the Court ruled that
none of these methods, individually, or in combination, constituted valid representation. Thus,
the application was rejected. It is interesting to note that the Court did not lay down what

7
Ralf Sieckmann v. Deutsches Patent und Markenamt, Case C-273/00, 12 December 2002.
constituted a valid graphical representation for the purposes of Article 2. In not doing so,
and in striking down the aforementioned methods, the ECJ has severely restricted the scope of
registration of scents. In fact, various academicians have commented that registration of scent is
now impossible.

The "graphical representation" of scents thus far has solely been verbal. A verbal description of
smell can be subjective and cannot really provide a full-proof method of identifying and
distinguishing one smell or scent from another. Another commonly used form of graphical
representation of a scent is describing the smell as a chemical formula. However the European
Court of Justice has been of the view that a chemical formula does not represent the smell of the
chemical itself and that few people would be able to get a sense of the smell based on its
chemical formula. Further, a sample of the scent provided as evidence of the scent in question
may degenerate over a period of time as the chemical composition may deteriorate.

There have been very few smell trademarks registered till date. The smell of-freshly cut grass for
tennis balls was registered as a European Trademark. An example of a registered smell
trademark in the US is of a "vanilla" scent or fragrance when applied to office supplies.

Conclusion

Non-conventional marks are gaining acceptance in India, but laws and procedures are still
evolving. With new technological developments and the growing ease with which consumers can
access information on devices that produce high-quality graphics and sound, the need for
trademark protection will become greater.Various aspects such as holograms, motion/gesture
trademarks etc. need to be streamlined in order to cope up with the current realities.

In this project work, I have first attempted to charter the development of acceptance of non-
conventional trademarks in trademark regimes across America, the European Union and India. It
is apparent that while America's approach towards these trademarks is liberal, the EU's approach
has been mixed. India unfortunately has simply imported EU guidelines with regard to these
marks, without any modifications. Secondly, I have argued in defense of these trademarks. We
continually use all our five senses when we recognize someone by the sound of their voice, or
identify what is being cooked by the smell of the food, or favour spaghetti or any other dish
because of the its taste. Non-conventional trademarks recognize this use and are a welcome
development. Although not visually, these marks are perceptible as well. In addition to fulfilling
the ordinary function of trademarks, they bring in an additional benefit of catering to a new
segment of consumers and consequently encourage innovation among advertisers.
Fundamentally, there is no difference between "non-conventional" and "conventional"
trademarks and so there is no rationale for arguing that only the former represents an undesirable
restriction of free intellectual property resources. Regarding registration requirements, while it is
imperative that these marks, apart from being distinctive and non-functional, be capable of being
graphically represented since that ensures clarity for all interested parties, it is stressed that
neither smell nor sound can be labelled to be incapable of graphical representation. In the context
of sounds, Europe has finally followed the American way and accepted sonograms and sound
recordings as valid graphical representations. Furthermore, a written description of the sound
should also be mandated as a requirement. With regard to scents, the following method of
representation seems apposite: the chemical formulae of the substance which forms the origin of
the smell, the method of making that substance with all specific conditions outlined, and a
written description. It is disappointing to note, however, that India has not validated any of these
methods yet. It is hoped that in the time to come, it will.

Bibliography:
 Intellectual Property by Elizabeth Verkey
 http://www.worldtrademarkreview.com/Magazine/Issue/32/Country-
correspondents/India-Ranjan-Narula-Associates.