Conventional & Non-
Conventional Trade Marks
By- Urvi Shrivastava
& Tanya Gupta
Certification Trademark –
Means a mark capable of distinguishing the goods or services in
connection with which it is used in the course of trade which are
certified by the proprietor of the mark in respect of origin,
quality, material, mode of manufacture of goods, quality,
accuracy etc.
Collective Marks –
Means a trademark that distinguishes the goods or services of
members of an association of persons from others (non-members)
not being a partnership.
ASSOCIATED TRADEMARK
“associated trade marks” means trade marks
deemed to be, or required to be, registered as
associated trade marks under this Act;
goods and services are associated with each other if it
is likely that those goods might be sold or otherwise
traded in and those services might be provided by the
same business and so with descriptions of goods and
descriptions of services.
Example- AMUL, TATA
Domain Names
Domain name is an address for computers on the internet
But computer has now developed from a mere means of communication to a mode
of carrying on commercial activity
The Domain names are now used as a business identifier.
Times Internet Ltd. v. Belize Domain Whois Service Ltd. & Others
The court held that since the right to use the words “indiatimes” vests only with
plaintiffs and the domain name “indiatimestravel.com” had to be transferred back
to the plaintiff by defendant.
Unlike trademarks, domain names have no geographical limitation and would
require worldwide exclusivity and hence WIPO established a domain name system
i.e. Internet Corporation for assigned Names and Numbers (ICANN)
Uniform Domain Names Dispute Resolution Policy (UDRP) was formulated to
resolve domain name disputes, it was adopted on 24th Oct, 1999 and provides for
domain name dispute resolution mechanism.
Non-Conventional Marks
Smell Marks- A smell is said to be one of the most
potent type of human memory.
The manufacturers are adding pleasant scent to
their products.
To obtain registration of smell marks the applicant
must be able to visually represent the products scent
maybe by chemical formula or written description.
But smell must not be the result of the nature of
goods itself eg… Chanel No 5 fragrance was
denied registration as the scent was the very
nature of the product.
Examples: Dutch Companies' Tennis Ball with
scent of newly mown grass; tires with the floral
smell of roses; darts with strong smell of bitter
beer.
Added by Tanya
Sound Mark- Depictions usually done by oscillogram, spectrum,
spectrogram, sonogram.
https://www.youtube.com/watch?v=iC1a8xXQQDo
India’s first sound mark has been registered on 18 th August 2009 in
favour of California based internet firm Yahoo inc… for its Yahoo yodel
and then ‘dhin chik dhin chik’ of ICICI
‘roarof the lion’ of MGM films, yell of the tarzan, etc. are registered sound
marks in US
Earlier,India also required the musical notation of the sound, but in the 2017
Trademark manual, the applicants can submit a digital audio file of up to 30
seconds to fulfil the criteria of graphical representation . The Trademark Manual
also specifies that the sound should have acquired distinctiveness for it to be
registered and expressly mentions that ‘prima facie no sound marks will qualify
for acceptance without the evidence of factual distinctiveness’
Netflix
Britannia
(four note
bell sound)
Taste Marks: Graphical representations using written
description and an indication of the taste.
The challenge lies in functionality.
A trademark for the taste of pizza or pasta cannot be granted
as it inherently performs the function of making the same- i.e.
adding flavor to the dishes
Lays can’t stop competitors from selling Magic Masala as a
flavor of chips unless a maker has stolen the trade secret of
Lays.
Till date, no registration has been granted for taste marks in the
world.
Trademark applications filed by pharmaceutical companies for
adding strawberry or orange to the medicine but was rejected.
Colour Mark: It is a powerful and effective tool to create brand
identification.
Traditional understanding of trademark suggested that single-
coloured trademarks cannot be registered as they would
monopolise that colour and it would curtail other proprietors
from using that same colour . This was expressed in a theory
known as the colour depletion theory which suggests that as the
colours are limited in number, granting monopoly over a single
colour would not be beneficial for the overall good of the society
the two requirements for registration of a single colour mark are
that the colour must be described in words and a reference of the
colour according to an internationally accepted code must be
submitted. The usually used reference standard is the Pantone
Colour Code or RAL in this regard.
Coloursper se are registered as TM in exceptional cases only,
when they are used extensively and become distinctive.
Pantone colour code
After two decades in 2019 Cadbury got trademark
over its purple colour mark.
Nestle v Cadbury
In India, there was confusion regarding the registerability of single colour
trademarks as can be understood by the different decisions of the Delhi High
Court within a space of few months.
In the case of Christian Laboutin vs Pawan Kumar , the Delhi High Court
declared that red sole shoes of the petitioner had acquired a distinctive
meaning in the fashion industry and had become a well-known trademark. A
few months later, a different bench of the same high court declared that
single colour cannot get registration in India, when the case of red sole of
Christian Louboutin was again raised . The division bench of the Delhi High
Court however reversed this decision and concurred with the earlier decision
that single colour can be registered in India and that the red sole of the
appellant had acquired distinctive character and therefore could be
registered.
The final position of single colour trademark is that they can be registered if
they have acquired a secondary meaning or a distinctive meaning and for
graphical representation, the colour is to be presented in an internationally
accepted format such as the Pantone system
Moving images, holograms and gestures: multimedia
production has opened the way for even more non-
traditional TM’s such as these:
Moving Images mark : Click here
Shape Marks/3D Marks-
Zippo Coca-Cola
Lighter bottle
Texture Mark - Texture Marks are those which give the feel of
the product through touch.
It is very difficult to be graphically represented.
What cannot be registered - for example, the texture of a
toothbrush’s hair cannot be trademarked as they are supposed
to be pliable to enable its reach all inside the mouth
What is registered – “OLD PARR” SURFACE TEXTURE
Thank You
