IDENTIFICATION OF

PROBLEM

Recent years have witnessed a dynamic evolution in the jurisprudence of trademark protection laws on account of
unprecedented technological progression which allowed producers across the globe to participate in “extreme branding”
aimed at making the public at large recognize their product with the help of sound, packaging shape, colour and smell,
among others aids. Such other aids, that are not restricted to two dimensional representations, constitute unconventional
trademarks. Trademark laws, which earlier only took cognizance of words, symbols, letters, devices and colour
combinations, now give similar treatment to unconventional trademarks.
The inclusion of unconventional trademarks raises various questions: Is their inclusion leading to an undesirable depletion of
available intellectual property resources? Are these marks capable of fulfilling the purpose of the trademarks? Finally, does
the fact that these marks are not visually perceptible create any confusion on what has been registered? The present work
aims to help device a balanced approach to recognition of untraditional marks.
 OBJECTIVES OF THE STUDY
In a nutshell, the work seeks to examine the following quests:
 Whether there is any functional difference between the nature, definition and
characteristics of trademarks and unconventional trademarks?
 Whether an unconventional trademark can get a concurrent protection in different
fields of Intellectual Property?
 Whether the requirement of graphical representation is a sine qua non for
registration of an unconventional trademark?
 Whether there exists symbiotic relationship between courts of different competing
jurisdictions with regard to the registration of unconventional trademarks?
 Whether issues of Free Competition and Unconventional Trademarks can be
resolved together?
 Whether the Trade Marks Act, 1999, Trade Mark Rules, 2017, and Draft Manual
for Trademark Practice and Procedure, 2009 provides sufficient machinery for
regulation of unconventional trademarks in the Indian terrain?
The PPT rests on the presumption that adherence to
domestic laws and reconstruction of the same on the
lines of European Union is sufficient for the
protection of unconventional trademarks with special
emphasis on revamping the domestic legal
framework.
 RESEARCH METHODOLOGY

The present study has been carried out adopting analytical

method to draw conclusions and inferences. The work deals
with the crucial aspects of unconventional trademarks and its
evolution as a registered identity. The legal position of
protection of unconventional trademarks from abusive
registration and infringement in various jurisdictions and
dispute resolution mechanism are discussed by way of case
laws in the present work. The materials for the present study
have been collected from primary as well as secondary sources
and it also relies on relevant statutory provisions of relevant
laws together with the judgments delivered by various courts
of different jurisdictions.
#Universally recognised Unconventional
trademarks
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 International Conventions and Global
Arrangements
 TRIPS Art.15: Any sign…capable of distinguishing [products], shall be capable
of constituting a trademark. Such signs, in particular words including personal
names, letters, numerals, figurative elements and combination of colours as well
as any combination of such signs, shall be eligible for registration as
trademarks…..members may require, as a condition of registration, that signs be
visually perceptible.

 Article 2.1 of the TRIPS Agreement obliges all Members to comply with the
substantive provisions of the Paris Convention. Members are obliged to comply
with the substantive provisions of the Paris Convention and the ‘TRIPS-specific’
provisions on trademarks. This incorporation ‘complicates the task of delineating
the new scope of protection’ and makes it necessary to discuss both treaties
simultaneously. The Paris Convention provides WTO Members with two ways to
obtain trademark registrations other Member states: one is by registration under
Article 6; the other is by registration under Article 6quinquies.
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Singapore Treaty on Trademarks (WIPO) allows (even though it
does not impose) for registration of non- conventional marks such
as holograms, scent marks, sound marks, motion marks and three
dimensional (“3D”) marks. The Regulations provide for the mode of
representation of these marks in applications, which may include
non-graphic or photographic reproductions. The treaty aims to
standardize such procedures among all regional and national trade-
mark registries without necessarily creating an international
obligation for the registration and protection of those non-traditional
marks. The treaty sets out a multilateral framework for the
definition of criteria concerning the reproduction of hologram,
motion, colour and position marks and of marks consisting of non-
visible signs on trademark applications and in trademark registers.
It’s important to note down that India is still missing in the list of
 Position of Unconventional
Trademarks vis-a-vis EU, US and India
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Some Rejections
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What Can Be Protected as a Mark in the
EU (Art.3 TMD)
Signs of which a trade mark may consist
A trade mark may consist of any signs, in particular words,
including personal names, or designs, letters, numerals,
colours, the shape of goods or of the packaging of goods, or
sounds, provided that such signs are capable of:
distinguishing the goods or services of one undertaking from
those of other undertakings; and
being represented on the register in a manner which enables
the competent authorities and the public to determine the
clear and precise subject matter of the protection afforded to
its proprietor.
Absolute Grounds for Refusal in the EU
(Art [Link])
No registration for signs that comprise of a shape, or
another characteristics
 Resulting from the nature of the goods
 That is necessary to obtain a technical result
 Utilitarian functionality
 That gives substantial value to the goods
 “A sort of” aesthetic functionality
What Can Be Protected as a Mark in the US
Lanham Act (15 U.S.C. §1127):
Trademarks: [any] word, name, symbol, or device, or any
combination thereof, used in commerce to identify and
distinguish “products” and to indicate source.
Restatement (Third) of Unfair Competition (1995):
“A trademark is a word, name, symbol, device, or other
designation … that is distinctive of a person’s goods or
service and that is used in a manner that identifies those
goods and distinguishes them from those of others …”
 What Cannot Be a Mark in the US
Lanham Act § 2(e)(5)
 No trademark … shall be refused registration … unless it –
 (e) Consists of a mark which, … (5) comprises any matter that,
as a whole, is functional
BUT the Lanham Act does not define what is a “functional mark”
 The interpretation of what is “functional” in the context of
trademark rests primarily within the courts
The doctrine of functionality started primarily as a judicial
doctrine
 Utilitarian Functionality
 Aesthetic Functionality
What Can Be Protected as a Mark in India
 A trade mark is defined in section 2(1)(zb) as follows: “‘trade
mark’ means 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”.
 A ‘mark’ is further defined in section 2(1)(m): “‘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”. While this is an inclusive
definition, the Draft Manual clarifies that certain categories of
marks, such as shapes, colours, sounds and smells, “will require
special consideration”.
 Balancing unconventional trademarks and free
competition: in favour of unconventional trademarks
 The CFEU has stated that reliance on considerations of
protection of free competition should be limited. According to
the Windsurfing Chiemsee case, the test of distinctiveness
should not include considerations of availability of a sign to
other undertakings. The approach was accepted in relation to a
colour CTM in the OHIM Case Light green/Leaf green. The
Board of Appeal said that the “need for free availability or the
(supposed) risk of certain colours being monopolised need not
to be taken into consideration” as this is not required by Article
7(1)(b) of the CTMR, which interpretation is influenced by the
interpretation of distinctiveness under Article 3(3) of the
Directive.
 Balancing unconventional trademarks and free
competition: against unconventional trademarks
 Rights conferred by a registered colour mark to one brand owner (who is usually
the biggest and most well known in the industry) could interfere with rights of
other traders to use this particular colour in their advertising or on packaging.
 It is sometimes argued that there can be a lack of desirable colours within a
particular industry, and if all attractive colours were registered, new traders
would find themselves in a disadvantageous position, as they would have to
choose a less attractive colour for their business.
 Thirdly, it should not be forgotten that one of the most important qualities of
colour is the one for which it can obtain protection as a trade mark, namely, the
ability to individualise the goods or services of a particular undertaking.
According to marketing research, colour can increase brand recognition up to 80
percent and make a good or service stand out. All those features are valuable in
trade. And, taking into account traders’ constant fight for every consumer by all
possible means, the objections to monopolisation of colours seem logical.
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 Concluding Observations
First, it is a fact that chemical senses have developed in the
market to become signs. As history reveals, different signs
and marks have been witnessed over time due to changes
in commerce and marketing. From symbols to signs, and
from social to legal instruments, the development of marks
has undergone different transformations. This can be
observed for example in cases where marks symbolised
ownership (i.e. shipwreck and branding on animals), or
where they guaranteed quality or product authenticity (i.e.
hallmarks and silversmiths), or where they just followed a
pattern from the trade as in the Industrial Revolution.
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Secondly, in order to protect trade marks and therefore preventing
others from using the mark or a similar one, traders may register a
sign as a trade mark. If registered a trade mark will grant a
monopoly over the use of that particular sign for only specified
goods/services in one or more classes of goods/services.
Third, focusing more on what the legislation has to say about
chemical senses and therefore facing the issue of whether or not
legislation recognises chemical senses as signs that can be
protected under the trade mark regime, it is not surprising that the
EU legislation as well as the US (as many others), do cover these
unconventional marks. However, the EU legislation does not
specifically mention chemical senses as potential marks. Despite
that, it would not necessarily be correct to believe that they are not
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 Fourth, the requirements for registrability are identical through the European Union.
Thus, I observe that as for any other trade mark, chemical senses are subject to a
significant number of requirements. One of the most discussed in the area of
chemical senses has been, without doubt, graphical representation. The reason lies in
the fact that because of the nature of chemical senses (non-visual), it is impossible for
them to be represented in this way. This is not however necessarily correct since
other non-visual marks are able to be registered and thus have satisfied this
requirement i.e. sound marks can be graphically represented by way of a score.
 Fifth, distinctiveness is a requirement which has its own particular problem. Yet the
majority of cases examined by the Registries and/or courts, when presented with a
chemical sense, do not seem to have explored this issue in depth. The distinctiveness
of a mark goes together with the primary function of a mark -- origin function. The
problem is that chemical senses are not easily interpreted by consumers as indicators
of origin. The way that chemical senses have been presented to consumers
(marketing tools), and moreover, the way they are commonly used (to appeal and/or
disguise a bad taste or odour), suggests they lack distinctiveness ab initio.
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Sixth, albeit there is not to date a single trade mark case in the
EU which has raised the issue of functionality other than with
respect to shape marks, I believe that chemical senses do not
escape controversy in this field. It has been ascertained that
functionality must in principle be extended to cover all marks
and not only those that have a technical function. Looking at
the broad spectrum, technical should be understood as not only
mechanical but involving other types of functionality as in the
US. The reason being that this exclusion is intended to ensure
effective competition as a matter of public policy.
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 Seventh, the courts in India have however, been holding an uncanny stance in this
regard. In the year 2007, the Delhi High Court did not allow trademark protection
to a blister packaging containing a distinctive orange coloured, oval-shaped tablet.
John Deere on the other hand was given protection for its green paint with yellow
strips on its vehicles manufactured for agricultural use. The blue colour of
parachute oil bottle was also granted protection by the same court. Other
successful cases of single colour trademarks registrations include entities like
Vitronix AG (# 13924234- brown colour label) and Deutsche Telekom AG(#
1462271- magenta colour label) have successfully registered their colour marks in
India. But in the year 2018 the same court denied the red shoe sole to Christian
Louboutin which is among the top 5 luxury brands for women fashion and is well
known among the consumer group belonging to an upper class society and
declared that red shoe sole does not fall within the definition of ‘mark’ as provided
in its definition in the Act and is not even a trademark to be afforded protection.
The court denied it trademark protection even though the same court had earlier
granted it the status of a well-known trademark.
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Eighth, infringement, while outside the main purpose of
the thesis, cannot escape consideration. The registration of
smell and taste marks is not totally effective if the law
cannot ensure protection. Without a doubt, the
consideration of infringement affects the correct
functioning of chemical sense marks. One can expect that
a case of a chemical sense mark infringement will be
resolved using the same test and approach as with any
other type of mark. This logic is apparent in many cases in
which the court emphasize that all types of trade marks
should be measured and examined in the same way.
SUGGESTIONS AND RECOMMENDATIONS
The registration of color, sound, and scent etc. necessitates increased
specificity and precision. Increased specificity in color, sound, and
scent registrations would benefit Indian trademark law by protecting
the interests of the consumer, the trademark owner, and the
marketplace.
By requiring the use of an international color code, color mark
registrations would provide precision and enable clear identification of
unique colors. Publishing a color drawing and a facsimile of the
specimen in the Official Gazette would provide increased clarity and
notice to the marketplace. The applicant also may be required to
provide a chromatogram in addition to the color code. Internationally
accepted industry standards such as PANTONE ®, RAL™,
Focoltone®, RGB, etc will be objective enough.
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Sound mark registration should include pictorial
representation by detailed musical notation or a sonogram
to enable quick comparison of sounds. Additionally,
requiring that a description must supplement the
representation would improve comprehension of the mark.
Availability of the sound to searchers of the registry in a
digital audio format would also enable a clear and precise
understanding of the scope of the mark. . How is the
sound clip easily accessible if it exists as a CD-ROM in
one of the five Indian trade mark registry offices?
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Olfactory scent mark registration would benefit from
implementing a smell classification system or adopting
other technologies such as an electronic nose or
spectrogram, enabling quick identification of, and
differentiation among, scent marks. Providing
opportunities to sample the scent in conjunction with
immediate access to a graphic depiction and a precise
description would provide further clarity as to the nature
and scope of the mark.
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Adoption of Singapore Treaty On The Law Trademarks
(2006) would be a great start and a welcome reception of
the Unconventional Trade marks in India.
Thank You