Section- 2(1) (zb) of the Trademarks Act, 1999 defines trademark as a mark that is capable of being graphically represented and is capable of distinguishing various goods or services of one person from those of others and can include shape of goods, their packaging as well as combination of colours. In this article we are going to learn about the various provisions related to Unconventional Trademark in India.
Introduction to an Unconventional Trademark
A traditional trademark is the one that is unique and symbolize origin and the usage of the product. A regular trademark can generally be a word mark, device mark, numeral etc., however, an unconventional trademark is the one that does not fall in any of the categories i.e. conventional or traditional trademarks.
The credit for the development of the unconventional marks goes to the Trade Related Aspects to Intellectual Property Rights (TRIPS) Agreement.
TRIPS agreement is an international treaty that deals with Intellectual Properties of the signatory nations and sets standardized legal rules and regulations for all. As India is also a participant of both Trade Related Aspects to Intellectual Property Rights (TRIPS) agreement and Paris agreement, because of that it is also under obligation to follow the protocols and guidelines issued under the agreements.
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Requisites for the Registration of an Unconventional Trademark
An unconventional trademark is majorly represented in the form of sound marks, smell marks, shape marks or colour marks. Though, it is compulsory for an unconventional mark too, to be distinctive. It must possess the ability to be differentiated from the goods and services of one person from that of another. Moreover, it must be able to suggest the source and origin of the product.
Conditions for Unconventional Trademark Registration
Conditions that must be fulfilled to register an Unconventional mark-
- The proposed unconventional trademark must be distinctive.
- The proposed mark must allow a person to be able to differentiate a particular product from other products.
- The proposed mark must possess the ability of being graphically representation.
Provisions Regarding Unconventional Trademark Law in India
With the introduction of new trademark rules on 6th March 2017, a ground for the existence of unconventional marks was established in India. The new trademark rules provided provisions for the registration of the unconventional marks in India. Provisions for different types of Unconventional Marks are explained below-
sound mark can be registered by submitting a sound clip that includes musical
notations and is completely original as per the Rule 26(5).
The Indian entity which got an unconventional trademark registered was ICICI bank. A combination of musical notation called “Jingle” was registered by the ICICI Bank as a sound mark under the rule 26(5).
A colour mark can be registered by submitting a work that includes combination of colours. The responsibility of the originality of the work lies upon the applicant and it is to be proved by him that the proposed unconventional mark has obtained distinctiveness because of the bonafide usage over the period of time.
Mostly, in the cases of colour marks, even if the proposed mark is not inherently distinctive, the brand owners are still eligible to apply for the alleged trademark if it has been acquired distinctiveness because of its long usage as it is quite challenging for an applicant to prove that a combination of colours or single colour is inherently distinctive.
During the application for the registration of a colour mark, the applicant must be able to provide evidence that supports the fact that the colour or the combination of colours is exclusively and solely associated with their goods and services.
They must be able to proof that the general public with mediocre mental state identifies the colour only and only as the applicant’s colour mark. The entire burden of proof lies upon the applicant to prove that the proposed colour mark has acquired distinctiveness or secondary meaning due to bonafide usage over a period of time.
However, no provision regarding the smell mark has been enforced yet.
Other Notable Examples of Unconventional Trademark in India
- Pronunciation of “Yahoo” as ‘Yodel’ was the first unconventional trademark that was represented graphically using musical notations and was the first one to be registered in India.
- The Trademark shape of ‘Zippo lighter’ and its legality was upheld by the court when it was challenged stating that a shape can be trademarked only when the mark is peculiar and distinctive.
- A German company registered the sound ‘Allianz Aktiengesellschaft’ as a sound mark in India.
These are major Unconventional Trademark whose registration led to a drastic development and change in the field of Trademark registration.
Why is it Difficult to Get an Unconventional Trademark Registered?
The provisions for registration process of a regular trademark that consists of visuals or words are mentioned in the Section 18 of the Trademark Act, 1999. Uncountable traditional trademarks have been registered since the formation of the Act, however, the registration of an unconventional trademark that includes sound mark, smell mark, colour mark is yet to speed up as to prove the originality of a sound, colour or a smell is quite challenging.
Applying the rule of originality on a device or a word mark is easy, however, when it comes to an unconventional mark, one may get confronted with hardships. The evidence to prove the originality of a colour mark and getting it registered is not a very difficult task, if the applicant can prove that the combination of colours or the single colour has acquired its distinctiveness after its usage for a long time by the applicant.
The procedure of the registration of the unconventional trademark has been introduced in the Trademark rules Act, 2017. With the growing technology, the recognition of colours, shapes, scents and sounds is the today’s need. Unconventional mark would help an ordinary customer with imperfect recollection to help identify any product which they will usually not be able to differentiate between.
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