|I. Unconventional trademarks: protection under various jurisdictions
United States of America
The Trademark Act, 1946 encompasses unconventional trademarks by not excluding them. Thus, granting protection to untraditional trademarks has been significantly easy in the US where TMs have been defined broadly and there exists no prerequisite of a “graphical representation.” In other words, marks which consist only of a sound, a scent, or other completely non-visual matter, which would only require a detailed verbal description, are equally capable of protection under the US laws. Perhaps the oldest untraditional mark to be registered is the National Broadcasting Company (NBC) jingle which received protection in the US in 1970 under the category of Sensory Marks. The jingle, with a vague description of notes used, was not accompanied with a notation sheet. Furthermore, singular colours, and smell or olfactory marks have also acquired the status of TMs when they do not perform any function in the relevant industry and have acquired distinctiveness.
Thus, though gustatory marks were refused TM registration for an oral pharmaceutical drug , the decision may not constitute a precedent precluding trademark protection for goods not meant for consumption, such as dentists’ gloves, teethers and toothpicks. Smell Marks also known as olfactory marks have been allowed subject to satisfaction of the doctrines laid down in Inwood and Morton-Norwhich . Thus while a trademark registered in favour of Manhattan Lubricant Oil in Cherry and Grape scents the same do not qualify for registration for perfumes, or cosmetics. Gustatory marks have also been attempted to be registered in the United States by pharmaceutical industries but this effort did not yield any result on account of functional and non-distinctive use of orange flavor for an anti-depressant drug. But this may not constitute a precedent precluding trademark protection for goods not meant for consumption, such as dentist’s gloves, teethers and toothpick. Questions also arise as to how flavours may be described for registration. Sound Marks thus pioneered the evolution of trademarks to include sensory and other unconventional marks that satisfied the criteria of (a) acquired secondary meaning, (b) Functionality Test14 , and (c) likelihood of confusion in the absence of protection; apart from other procedural requisites.
Secondary meaning or acquired distinctiveness is a must for registration of any mark. In Inwood Laboratories, Inc. v. Ives Laboratories, Inc it was observed that “to establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself”. The acquired distinctiveness of a mark which is often termed as its factual distinctiveness differs from inherent distinctiveness in the sense that while inherently distinctive marks are distinctive from the very inception, a mark will be considered to have acquired distinctiveness if it can be shown that irrespective of its primary meaning the mark now conveys to the consumers information as to the “badge of origin” of the product
Therefore in order to prove that the concerned mark has acquired distinctiveness it has to be shown that the mark, which was initially lacking distinctiveness, has assumed a new meaning in the mind of the purchasing public which has displaced the primarily non distinctive meaning of the mark. The Supreme Court of the United States in another judgment noted the difference between designs and words, i.e., marks falling in the category of traditional trademarks, and sounds and smells, in that the latter category of marks would be virtually incapable of being inherently distinct . The standard for distinctiveness is therefore higher vis-à-vis untraditional trademarks as these take more time and use to be established. Further, some of the marks, such as a sound mark, that is of shorter duration and comprises of a few notes or a very familiar tune, may not warrant registration unless it may be proved to have acquired such distinctiveness of a higher standard.
The Functionality Test envisages the refusal to grant TM protection when the feature is essential to the genre of goods to which it is being applied, or when grant of such protection makes the production cost-prohibitive examples of which have been discussed above. The criteria though not easily met, leaves much scope for speculation in the absence of mandatory representation.
The status of unconventional trademarks is significantly different in EU. In contrast with the US law, not only is graphical representation mandatory, but the ECJ and the Board of Appeals have further elaborated upon the nature of the representation required. Thus, a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The strict definition of trademarks that develops on the combined reading of Article 2 of the First Council Directive (Directive) and Article 4 of European Community Regulation on Community Trademarks (Regulation) interpreted in the light of the decision of the European Court of Justice in Ralf Sieckmann v. Deutsches Patentund Markenamt constituted the basis of the denial of registration of globally known sounds, such as the MGM Lion’s roar and Tarzan’s yell. Edgar Rice Burroughs had moved a second and third application, accompanied with musical notations and digital recording respectively, which accepted for registration. Thus, while a description of the nature used in the NBC jingle would not qualify for registration, its notational form would.Also, the status of a sound, satisfying other requisites, but not capable of being captured in notational form does not find protection under the EU laws
The requirement of graphical representation is an impediment for registration of other unconventional TMs such as smells as these cannot be adequately represented. While singular colours can be granted protection with the aid of Pantone Matching System (PMS) , it is argued that olfactory reception being highly subjective cannot be adequately described.
From the above, it is amply clear that registration of untraditional marks in EU is indeed difficult in the face of the strict legislation. Distinguished with US Law, which allows unfettered flexibility vis-à-vis untraditional TMs making it considerably easier for any new idea to be protected in perpetuity, the EU Law strikes the right balance between rights of private parties and the public. The US Law, precludes competitors from applying the same feature to their products, making the market uncompetitive and ultimately affecting the consumers from reaping benefits of a competitive market.
ii. A comparison in the light of the Indian regime
The 1999 Act defines trademarks in the following terms: “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.” The 2002 Rules define graphical representation to mean the representation of a trade mark for goods or services in paper form. Thus, it can safely be asserted that graphical representation is a sine qua non for TM Registration in India. Another important criterion to be satisfied is distinctiveness. The proviso to section 9 (1) of the Trade Marks Act, 1999, recognizing this concept of “acquired distinctiveness” inter alia provides that “a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it…”. Similarly, Section 32 of the Act states that a mark which is wrongly registered (because it lacks inherent distinctiveness) shall not be declared invalid if the mark has acquired distinctiveness after registration and before commencement of any legal proceedings challenging the validity of such registration.
It is pertinent to note that with some of the TM Registries in India, amongst the various unconventional TMs, sound marks have found most favour. For instance, the Yahoo “yodel” and the sound mark for Allianz Aktiengesellschaf have been registered in India in the last two years. Though there has not been a determination on whether sonograms would qualify as graphical representation envisaged under the 1999 Act, the arguments that expert opinion is required for both forms of representation subsists, thus validating the use of sonograms. It has been reported that Yahoo had in fact submitted a notational reproduction of the sound along with its digital copy, which practice if adopted would constitute a constructive step towards effective TM protection, provided the same are made available on the TM Registry websites to give constructive notice to the public.
The 2002 Rules also emphasize on the need for graphical representation. The 2002 Rules provide for registration of 3D marks by means of graphical representation of a maximum of eight views and a specimen, but is silent on other untraditional TMs. The Revised Trade Mark Manual (here-in-after ‘the Manual’) has welcomed the progress in the development of unconventional trademarks making distinctiveness a prerequisite for registration. Taking a balanced view, it has clarified that while untraditional marks such as colour and sound constitute categories capable of trademarks registration, registration may be granted only in cases where the use of the mark is exceptional and has acquired secondary meaning.
Though graphical representation and secondary meaning associated with untraditional trademarks are sine qua non, the principle of representation imposes the greater handicap for the registration of smell marks and analogously, taste marks. The Manual leaves ends loose with respect to smell marks, simply stating the possible affliction. In the event a practical and cost effective solution is devised, eliminating the impediment to graphical representation, olfactory marks shall be registrable, obviously propped up with distinctiveness. Further, the TM forms presently do not provide clear indication of the nature of the mark purported to be protected since different standards have to be satisfied by traditional and untraditional TMs. Although the categories such as colour combinations and 3D marks have been provided in the forms, the unconventional marks are conspicuous in their absence in such categorization.
The Indian system has definitely garnered a lot from the experiences of the European Union and the United States, and while its decision to not grant trademark-ability status to olfactory and gustatory marks is based on practical impediments of today, the same may be subject to change, considering the growing commercial and advertizing trends coupled with the leaps that technology is taking.
Tweaking of the laws shall be necessary in case untraditional TMs are to be granted effective protection. Reasons for this are more in developing countries, including India. Firstly, each variety of unconventional trademarks may be accurately represented through different mediums. Verbal description may not adequate. Granting registration to sound marks in the bold manner adopted in the United States, creates significant fear of trespass upon the rights of the proprietor and simultaneously ambiguity with respect to the scope of commons leading to disputes both at the level of registration and use. Description as used in the NBC jingle in the United States would make it extremely difficult for other sound marks with similar notes to be registered, and also would not bar the registration of the same melody in another scale by a third party, especially in the absence of any rule barring such transposing and use thereof.
Further, Smell marks are also not adequately represented through verbal description. An application for registration of a particular odour, such as vanilla, would be best accompanied with a representation in the form of samples, but these too would be hard to make available in trademark registries all over the world and on account of limited longitivity would be in need of frequent replacement. Also an electronic nose for determining smells and the PMS may help in registration of colours, but it is a long way before such technology is made are readily available with trademark attorneys who could make the applicants aware. Doubtless, it would take even longer for such technology to be available with small and medium sized enterprises before they embark upon brand development, especially in developing countries such as India. Since registration of unconventional marks is only upon fulfilling the prerequisite of secondary meaning, acquired over long and sustained use, new businesses need to be all the more aware of the boundaries of commons.
Thirdly, in developing countries, cost prohibitive nature of granting registration to untraditional trademarks is higher. Access to the registered trademark database would be more expensive and often third parties may not have the means of interpreting graphical representations of sound marks, or have the required equipment for experiencing/listening to the registered mark. In these circumstances granting registerability status upon unconventional marks, graphical representation of which is inadequately provided, and if provided, opportunities for access are restricted, would amount to opening of a Pandora’s box.
Fourthly, the question of enforcement continues to haunt, both the registered proprietor and the applicant/third party user since there is no clarity as to who shall determine if marks are deceptively similar, and the peril of trespass would be higher if indefinite means of representation are legalized for the purposes of registration. The juxtaposition of a blanket ban to registration of untraditional trademarks in the absence of a cushion against tone deaf judges is no solution but this definitely needs more thought before registration in favour of unconventional marks is granted.
To summarize, carving out an exception on the lines of US Trademark Act would leave loose ends and harm more than it would protect. If availed with caution, an approach based on EU Laws, as we have today, with assistance of latest technologies would definitely benefit the cause of private parties and the public. Even with regard to sound marks, cumulative representation in notational and digital form should be made mandatory. The use of an electronic nose to detect smells could possibly provide some buffer against indiscriminate TM infringement suits, but this should be allowed only in the event technology is developed to ensure that the mark is adequately available for experiencing by competing third parties who may wish to generate goodwill through smell marks.
Greater scrutiny needs to be made of the prevailing systems in other countries, and the possible roadblocks in our own, before registration of unconventional marks is allowed. With emerging economies such as India, the need to protect intellectual property is higher and no effort to do ensure equilibrium and clear demarcation between rights held in common and by private parties should be left undone.