NON-TRADITIONAL TRADEMARKS: A CRITIQUE

Author(s): Lisa P. Lukose

Source: Journal of the Indian Law Institute, Vol. 57, No. 2 (April-June 2015), pp. 197-215
Published by: Indian Law Institute
Stable URL: https://www.jstor.org/stable/44782501
Accessed: 18-05-2020 20:33 UTC

JSTOR is a not-for-profit service that helps scholars, researchers, and students discover, use, and build upon a wide
range of content in a trusted digital archive. We use information technology and tools to increase productivity and
facilitate new forms of scholarship. For more information about JSTOR, please contact support@jstor.org.

Your use of the JSTOR archive indicates your acceptance of the Terms & Conditions of Use, available at
https://about.jstor.org/terms

Indian Law Institute is collaborating with JSTOR to digitize, preserve and extend access to
Journal of the Indian Law Institute

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
 NON-TRADITIONAL TRADEMARKS: A CRITIQUE

Lisa P. Lukose*

Abstract

In the globalized era where cross border trade takes place in international market,
trademark has become a key tool to denote a company's identity. A good trademark
carries its own image, attaches distinct personality to the goods and becomes the
essence of competition. The modern trademark law reflects some novel
developments as to the make and appearance of 'mark' itself. The 'modern
market' is in the busy process of inventing new products with typical odouť
'special touch' and 'unique sound' in order to present more 'sensor/ consumer
goods to the 'modern customers'. Although these novel trademarks have not yet
reached a high acceptance in all jurisdictions, use of such marks is common in
contemporary market. In modern times, new forms of sensory trademarks have
come to be globally accepted as intellectual property as the result of certain
legislative amendments or judicial interpretations. In the modem market, non-
traditional trademarks still remain a developing practice and the case-law on this
subject matter is evolving. However, studies show that there is an increasing
demand from the proprietors for the registration of non-traditional marks in the
international trade. On the contrary, there is no uniform standard across the globe
in examination, registration and enforcement of these marks. Against this backdrop,
this paper captures the brief history of non-traditional trademarks, the rationale of
its protection under the legal regimes, through various case studies, prevalent in
United States (US), European Union (EU) and India for its registration and
enforcement. It also examines how these modem marks discharge their functions
as a trademark. The paper also analyses the issues arising from the lack of uniform
practice in the examination and registration of non-traditional trademarks
worldwide. It concludes with suggestions for harmonization of examination and
registration process across various registries.

I Introduction

THE HISTORY of trademarks is as old as the history of mankind. It began with

the beginning of the circulation of goods. The Roman blacksmiths are believed to
the first users of identification marks on their swords. In ancient Greek and Rom
potters used 'potters marks' to identify the maker of the vases. The 'merchants ma
appeared in the 10th century particularly to prove ownership rights of missed go
due to shipwrecks and other disasters. The craftsmen and merchants used to affi
'production marks' in guilds to distinguish their goods from inferior quality good

* Associate Professor, University, School of Law and Legal Studies, GGS Indrapras
University, New Delhi.

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
198 Journal of the Indian Law Institute [Vol. 57: 2

This helped them to maintain trust in the guilds and to

manufacturers of inferior quality goods for not meeting th
Parliament of England owes the credit to pass the first trad
requiring bakers to use a distinctive mark for their bread. F
and Goods Mark Act in 1857 and Britain passed Merchandise
US Congress established a federal trademark regime in 1870.
Act, 1875 permitted formal registration of trade marks at th
Act defined trade mark as "a device, or mark, or name o
printed in some particular and distinctive manner; or a wri
a written signature of an individual or firm; or a distinctive
passage of time different methods of identification and dis
modem legal sense, any mark, device, brand, heading, label,
word, letter, numeral, shape of goods, packaging or any
now be used as a trademark.2 The Trade Related Aspects
Rights (TRIPS) Agreement3 defines trademark as any sig
signs, capable of distinguishing the goods or services of one
of other undertakings.

n Historical overview

The conventional and traditional trademarks such as plain words, devices, logos
and designs have been used since long for distinguishing goods. Over time, oth
elements besides words, logos, colour combinations and graphic designs have come
to serve as identifiers of the source of goods/services, thus serving the function o
trademarks. These new marks go beyond the traditional trademarks in natur
characteristics, scope and economic potentials. The digital and social media revoluti
brought paradigm shift in the branding strategies. Non-traditional trademarks are t
most striking branding strategy of the 21st century.4 The technological revaluatio
persuaded many companies to experiment with 'extreme branding' with the aid of
colour;5 sound;6 smell;7 scent of raspberries;8 touch9 and so on.

1 Lionel Bentley, Jennifer Davis, et. al. (eds.), Trademarks and Brands: An
Interdisciplinary Critique (Cambridge University Press, UK, 2008)
2 The Indian Trademark Act, 1999, s. 2(m).
3 The Agreement on the Trade Related Aspects of Intellectual Property Rights, 1994,
art. 15.

4 Lindstorm Martin, Brand Sense: Build Powerful Brands through Touch, Taste, Smell,
Sight and Sound (Kogan Page Publisher, 2005).
5 For e.g., pink colour for fiber insulations of Ówens Corning.
6 Dhin chik dhin chik tune of ICICI is an example.
7 For e.g., floral scent of thread as found in In Ré Celia Clarke, USPQ 2d 1238 (1990)
(TTAB).

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
2015] Non-Traditional Trademarks : A Critique 199

Shape, colour, stitching pattern design, and sound were in use

companies for more than a decade to signify brand origins, altho
protection and registration were subsequent development. For ins
cola contour bottle, which was originally designed in 1915, receiv
registration only in I960. Coco-cola's bottle shape of packaging has
status and in itself it is the single most recognizable brand in the wo
trademarks were in existence since 1830s. Tiffany maintains a colour
its distinctive 'tiffany blue' packages - special blue boxes fdr its jewelr
is a shade of light blue created by the company for its own products
Another example is pink colour trademark. From 1956, Ow
Corporation's12 insulation has been dyed pink to provide visual contr
the company became so associated with its pink insulation product th
the word mark PINK for its insulation. Although colour combina
been protectable as trademark, it was only in 1980s that the US l
single colour as a trademark when Owens-Corning launched the Think
for its fibreglass building insulation. Eventually through judicial settle
pink colour was held to be protectable as a trademark and the US
the company had the right to prevent others from using 'pink colouť
History also reveals that even a stitching pattern can be a tradema
Levi Strauss & Co. consistently applied the arcuate stitching patt
protruding piece of fabric (protruding red tab) to jeans as trademark
Metro-Goldwyn-Mayer Corporation (MGM) used lion's roar as so

8 Myles Ltd. 's Application (2003) ETMR 56.

9 Velvety surface of wine bottle of Diageo is an example.
10 B.M. Katherine, "Non-traditional Trademarks: Tips for the 21st Century
Boardroom 37-39 (2011).
11 Tiffany's Blue Book published this colour long back in 1845 with PMS number 1837
signifying Tiffany's year of foundation. They spent more than one century to establish
colour alone as a trademark. Tiffany blue reveals the story of creativity in selection of a
non-traditional trademark and more than 100 years dedication in the promotion of the
colour mark to develop into a famous brand icon. See, Michelle Gonzale, "So Let the Paint
be Spread, We're Painting the Soles Red" 15 (1) Wake Forest Journal of Business And
Intellectual Property Law 52 (2014).
12 Owens Corning Corporation is rated as the world's largest manufacturer of fiberglass and
related products.
13 Re Owens-Corning Fiberglas Corp , TIA F.2d 1116 (Fed. Cir. 1985).
14 The cartoon character of the Pink Panther is being used by Owens Corning as a visual
representation. According to the company, for years, it has used the colour pink and the
Pink Panther as a way to distinguish its insulation products from other companies. Also
see, Jerome Gilson and Anne Gilson LaLonde; "Cinnamon Buns, Marching Ducks And
Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks" 95 (4) TMR 773-
820 (2005.)
15 To promote the images of the arcuate stitching design and the red tab, the company ran
regular advertising campaigns and it could establish consumer recognition in these marks.

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
200 Journal of the Indian Law Institute [Vol. 57: 2

announce the beginning of movie. It filed trademark a

the sound mark in 1985. 16 The NBC chimes got sound
way back in 1950. Intel uses its sound mark as an audio
and is registered in multiple countries worldwide a
seconds somewhere in the world. Trademark rights in
are being established through consumer recognition.

m Registrability of non-traditional tradem

To be eligible for protection and registration, the tra

with certain statutory requirements. These requirements m
to country depending on its national legislation. This fl
the TRIPS Agreement itself though international treaties su
Madrid System, Trademark Law Treaty, Singapore Law T
some degree of standardization and uniformity. It is genera
registration for non-traditional trademarks than for co
Many countries provide some form of protection to non
Some countries like India's legislation is silent or does no
as to the registrability of non-traditional trademarks. H
the trademark registration manual of the concerned tradem
the necessary guidelines as to the examination procedu
criteria of non-traditional trademarks. Like conventional tr
15 of the TRIPS, non-traditional trademarks must meet
distinctiveness, visual perception or graphical represen
of a distinctive sign that is capable of serving as a sourc
cause confusion in the mind of the public and must n
These basic requirements can be applied differently ba
A particular kind of non-traditional trademarks or a pa
representation, acceptable in one country may not suff

16 USPTO registration no: 1395550.

17 See L. Kenneth Port, "On Nontraditional Trademarks" 38(1
Review 1-58 (2012).
18 V. A. Mohta, Trademarks, Passing off and Franchising (Al
Nagpur, 2004).
19 Lisa P. Lukose, "Unconventional Trademarks: Novel Trends
Law" 1(1) CNLU Law Journal 22-33 (2010).
20 For e.g., a particular colour registrable in one jurisdiction ma
being a culturally or religiously relevant colour. Also see, Neh
Non-Traditional Trademarks" 13(1) Journal of Intellectual Pro

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
2015] Non-Traditional Trademarks: A Critique 201

IV Spedai characteristics

The modern technology has produced products more to see, smell,

hear in the physical world than people would otherwise get thr
augmented faculties. However, these trademarks are comparatively d
registered due to statutory omissions and lack of uniform practice. A
trademark laws of several jurisdictions encompass non-traditional trade
subject matter of protection by not excluding them from the definitio
They encompass a full spectrum of sensory perception beyond comm
signs. These are marks based on appearance, shape, sound, smell, tast
Undoubtedly, they are innovative creations. They may either be visi
colour, shapes, moving images, holograms or non-visible signs such a
tastes and textures. Non-traditional trademarks are inventive ways t
with consumers the source of origin of goods/services. It offers dyna
to the traders in the global market. These marks bear a high potent
assets and leave on consumers higher degree of commercial impression
smell or touch. Factors to determine whether these signs could be re
the commercial impression of the mark, the relevant practices in the
the sign is unique in the particular field or is only a refinement of a
and whether there are any secondary uses of the sign. A mark that d
function as a mark because of its nature, evidence of acquired distin
be required. To be registrable these marks should not be function
functional scents if inherent in the product itself, such as smell for
accepted for registration in many jurisdictions. According to the test
even if a sign was used and could possibly serve as a mark, it might
distinguishing as a public policy matter, if it was essential to the use
product or if it affected its cost or quality.21

V Rationale for protection

The TRIPS Agreement specifically recognizes the registration of s

their packaging, trade dress and combination of colours as trademar
marks such as smells, sounds, taste, touch, holograms etc. are not exp
in the definition clause, a plain reading of the section suggests that sin
provides an inclusive definition, it is wide enough to include these u
marks within its ambit. All jurisdictions provide inclusive definition

21 "Non Traditional Trademarks", available at: http://www.inta.org/Trade

Sheets/Pages/NontraditionalTrademarksFactSheet.aspx. (last visited o

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
202 Journal of the Indian Law Institute [Vol. 57: 2

and as such there is no statutory prohibition to p

trademark provided other statutory requirements a
traditional trademark performs four essential functio
source or origin; (ii) links the mark, the product an
guarantees quality and (iv) advertises the product.22 It
than that of conventional trademarks. They have most
in the new environment of international trade. Since th
trademark is to identify the product, the recognit
trademarks is important especially where people in
unable to recognize conventional marks and usually ide
shapes, colour, touch or smell. They have become signi
a section of society like the visually impaired and the i
are unable to recognize the conventional trademarks
The recognition of unconventional trademarks could also
the developments in trading and commercial practices and th
of trade and industry. Several countries including US an
granted registration for several unconventional tradem
trademarks, to an enterprise, unconventional trademarks' asse
value and an important part of evolving business strategy a
portfolio.23

VI Categories of non-traditional trademarks

There are non-traditional trademarks which relate to all five senses. They
would contain any (i) visible signs such as colour, shapes, moving images,
holograms etc. or (ii) any non-visible signs such as smell, sounds, taste or
textures.24 The Manual (Draft) of Trademarks Practice and Procedure of Indian
Trademark Registry, 2015 states that colour, sound, shape of goods, packaging
and smell trademarks fall under the category of unconventional trademarks.25
The level of protection countries afford to these marks varies among
jurisdictions. What is treated as a protectable mark in one country may not be

22 Kerly, Law of Trademarks and Trade Names (Sweet and Maxwell, South Asian edn., 2007).
23 See Graham Dutfield and Uma Suthersanes, Global Intellectual Property Law (Edward Elgar
Publishing Ltd., 2008).
24 Harsimran Kalra, "Unconventional Trademarks: The Emergent Need for a Change" 4 India
Law Journal (2007), available at: http://www.indialawjournal.com/volume 4/issue_l/
article_by_harsimran.html Oast visited on Feb. 25, 2015).
25 Sr. No. 3 2.4 of Draft Manual, 2015 at 143, amilable at http://www.ipindia.nic.in/tmr_new /
TMR_Manual/ TMR_DraftManual_llMarch2015.pdf Oast visited on May 28, 2015).

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
2015] Non-Traditional Trademarks: A Critique 203

given protection in another country. From a global perspective,

are the main categories of non-traditional trademarks that can

i. Smell/scent/olfactory marks;
ii. Sound/aural marks/audio signature;
iii . T actile/touch/textue/haptic marks ;
iv. Single colour marks;
v. Shape marks/three dimensional/3D marks;
vi. Taste/gustatory marks;
vii. Holograms; and
viii. Moving images/motion/animated marks.
Smell marks

Smell marks are also known as scent/olfactory marks. Scent is theore

protectable as a trademark. Generally, smell marks are applied on cl
preparations, cosmetics and fabric softeners. For the first time, recog
to the smell marks was given by the US courts26 wherein the applicati
registering the written description of the smell of 'a high impact, fresh
fragrance reminiscent of Plumería blossoms' for sewing thread and
embroidery yarn was accepted as a graphical representation and granted
trademark protection. Smell was compared to colours in this case, though
this is scientifically unrecommended. The court differentiated between
functional and non functional smells - smell not being an inherent attribute
of products from those products which have it as its inherent attribute such
as perfumes etc. In John Lewis of Hungerford Ltďs Trade Mark Application21
the trademark was graphically represented by the description that 'the trade
mark comprises of the smell, aroma or essence of cinnamon' in respect of
furniture. The application was refused on the ground that the wording
'smell, aroma or essence of cinnamon' lacked precision as a result of the
degree of subjectivity it allowed in the determination of the question whether
a fragrance exemplified 'the smell, aroma or essence of cinnamon' and the
extent to which differing perceptions of different individuals could equally
be regarded as bench marks for the interpretation of the wording in question.
In Venootschap Firma Senta Aromatic Marketing's Application 28 a written
description of "smell of fresh cut grass" was accepted for tennis balls.

26 In Re Celia Clarke, USPQ 2d 1238 (1990) (TTAB).

27 (2001) RPC 573.
28 (1999) E.T.M.R 429 OHIM BoA R 156/1998/2.

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
204 Journal of the Indian Law Institute [Vol. 57: 2

"The scent of raspberries" was accepted in Myles Ltd. 's A

fuel and diesels. In Britain, the Sumitomo Rubber Company
"a floral fragrance/smell reminiscent of roses" as applied to
manufacturer of darts, Unicorn Products, obtained a tradem
of bitter beer on the flight" of their darts. Smell mark can
India if the applicant proves that: (i) the smell is used as a t
inherent or natural characteristics of goods but is added by
its goods; (c) the public regard the smell as a mark which id
goods and (d) the mark is represented graphically.
There are certain practical issues with respect to smell
Sieckmann v. Deutsches Patent-und MarkenamP the app
scent as "balsamically fruity with a slight hint of cinnamon". T
that a trademark may consist of a sign which is not in itself
visually, provided that it can be represented graphically
representation must be clear, precise, self contained, easily
durable and objective. The court ruled that in respect o
requirements of graphical representability are not satisfied b
a description in written words. Chemical formula depic
represent the odour of a substance, since it is not sufficien
precise. Moreover, a formula does not represent the odour,
A deposit of an odour sample does not constitute a graph
samples are not sufficiently stable and durable.
Smell gets affected by temperature, humidity and win
strengthened or weakened. The perceptibility is yet another f
of smell and therefore, physical, mental abilities, individua
have a pivotal role. The problem may arise more so than
representing the mark graphically. Many products have add
case of perfumes, cosmetics, fabric conditioners, detergents
more aromatic or pungent. Potential purchasers are unlikel
as an indication of the origin of goods. Hence it is uneasy t
smell indicates the goods of a particular trader. The courts
mark does not satisfy the requirements of graphical repres
presented in the form of a chemical formula, by a descriptio
the deposit of the odour sample or by a combination of tho

29 Supra note 8.
30 C-273/00, 2002 E.C.R. 1-1173.

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
2015] Non-Traditional Trademarks : A Critique 205

Sound marks

Sound trademarks are also referred to as aural marks/audio signature. The

of the famous Tarzan yell;31 menie melodies theme song;32 the spoken letter
T;33 the sound 'ooh it's so good';34 the melody 'sweet Georgia Brown'35 are fa
examples of sound marks registered in US. In India, if sound marks can be repr
graphically they are not excluded from registration. Yahoo's yodel became th
sound mark to be granted by Indian Trade Marks Registry (2008) followed by
'dhin chikdhin chik (2011). US, Austria, Denmark, France, Germany, Ireland, It
Office for Harmonization in the Internal Market (OHIM), Spain, Sweden, UK, N
Switzerland, Germany recognize sound marks. The test is "whether other tra
likely, without improper motive, to wish to use the sound in the ordinary co
their business." The acceptability of a sound, like words or other types of trad
depends upon whether the sound is or has become a distinctive mark.
A sound mark may consist of songs, strings of notes-with or without
jingles, well-known sounds which occur in nature, unusual sounds which
nature or electronic sounds not occurring in nature. For instance, pieces of c
music may be acceptable as trademark, prima facie. However, the examin
to see how more than a few bars of classical music can serve as a trademark. A

mere sequence of musical notes does not make it possible to determine the pitch
or the duration of the notes, which are essential parameters of the remedy sought
to be represented, and hence fail to meet the requirements of clear representation.
Whole or laige sections of classical pieces are likely to be rejected on the ground
that they are not likely to be treated as a trademark. The acceptability of a sound
mark depends upon whether the sound is or has become a distinctive sign; that is
whether the average consumer will perceive the sound as a trademark showing an
exclusive association with a product. Similarly, a simple onomatopoeia cannot, by
itself, satisfy the requirement of graphical representation. If the sound sign is
represented graphically by a simple onomatopoeia, it is unclear whether the sign
is the onomatopoeia itself, as pronounced, or the actual sound or noise of which
the onomatopoeia is the phonetic imitation. Even where it is made clear that the
sign is the onomatopoeia as pronounced, it is likely to lack the required clarity or
precision not least because onomatopoeia may be perceived differently, depending
on the individual. The World Intellectual Property Organisation (WIPO) Standing

31 Registration no: 2210506, a yell consisting of a series of approximately ten sounds.

32 Registration no: 2473248, the mark consists of thirty musical notes.
33 Registration no: 1761724, the mark consists of the spoken letters 'AT & T'.
34 Registration no: 200096.
35 Registration no: 1700895.

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
206 Journal of the Indian Law Institute [Vol. 57: 2

Committee on the Law of Trademarks, Industrial Designs and

(SCT) suggests "[offices may require that the representation
of a musical notation on a stave, a description of the sound c
an analog or digital recording of that sound - or of any com
electronic filing is available, an electronic file may be attac
However, for some jurisdictions, only a musical notation on
to adequately represent the mark."36
Sound mark will qualify for acceptance only with evidence
The examples are: very simple pieces of music consisting on
songs commonly used as chimes; well-known popul
entertainment services, park services etc.; children's nurser
respect of marks on goods/services aimed at children) and m
with particular regions or countries for the type of goods/se
provided in that area. Where the mark consists of a no
includes other distinctive elements, such as a word, it may
for the purposes of registration. The registrar may require
such further information about any music tendered for re
may need in order to determine whether the mark is d
registrable, the proposed sound must be capable of graph
sounds are capable of being represented graphically by visu
musical notation. Sound marks can be represented by
description of the sound in words.37 The title of the piece
satisfy the requirement of graphical representation. The in
music is played needs to be included if it forms part of the
emanates from a musical instrument. Graphic/electronic m
and character of the sound needs to be given in the rep
sound is partially represented by visual notation, a clarifyi
the sound should be included in the application. Onomat
or spectrograms may also be accepted as graphical repr
made by goods during their use, and which arises purely as
may not serve as a good sound mark. Sound mark also must
sound of a siren does not serve as a trademark for a siren.
applicant can prove that the sound, although descriptive, h
through use', the application may be considered. For in

36 Report of the Standing Committee, on the law of Tradema

Geographical Indications, WIPO SCT/16/9 2007.
37 Martin Lindstorm, Brand Sense: Build Powerful Brands thr
Sight and Sound (Kogan Page Ltd., 2005).

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
2015] Non-Traditional Trademarks : A Critique 207

sound for plumbing services, which has acquired distinctiveness throug

be granted registration.38

Tactile marks

Tactile marks are also known as touch/texture/haptic marks. A distincti

touch such as Velvety surface of a wine bottle' or 'feel of cotton' is conceptua
protectable as a trademark to indicate the source of its origin. Touch marks
also known as haptic marks owing its origin from Greek haptesthai , meanin
'pertaining to touch'. In 2006, the International Trademark Association adopt
'a resolution supporting the recognition and registration of touch marks'.
1996, Louis Vuitton Malletier sought US trademark protection for its 'distinct
man-made textured pattern utilized as a surface feature' on its luxury lugga
and leather products. The Trade Marks Registry of the German Patent and Tr
Mark Office in 2003 granted trademark on the basis of an application filed in the
name of Underberg AG for several goods in classes 32 and 33- Kimberly-Clar
has federal trademark registration for 'the configuration of the container used to
dispense' facial tissue. United States Patent and Trademark Office (USPTO)
allowed Kimberly-Clark's intent-to-use application for its raised, alternating
pattern on paper towels. Touchdown marketing has a registered a trademark
the 'pebble-grain texture' and 'soft-touch feel' of its basketball-shaped colog
dispenser and Fresh Inc. has a registered mark on 'cotton-textured paper' t
wraps its soap products. In 2006 American Wholesale Wine & Spirits, Inc. obtai
trademark registration for a sensory, touch mark and used with its Khvanchk
wine. The registration's description of the mark is that of a velvet textured cover
on the surface of a bottle of Wine.

Transforming touch into protectable sensory branding is not an easy task.

Like other non-traditional trademarks, tactile mark should not be functional. A
cell phone designed to get warmer in one's pocket as it rings in order to gain the
user's attention or an artificially sticky steering wheel which enhances its
performance may not be registrable. If the touch is 'essential to the use and
purpose of the article or which inherently affects its cost or quality', then it will
not warrant a legal protection. Tactile mark does not automatically function as a
trademark upon its first use. Artificial textures are not automatically eligible for
trademark protection. Rights over the tactile marks are generally claimed by the
established use over a period of time. There is a dearth of recognized tactile
marks and these are least common non-traditional trademarks. Hence, the legal
authority is scarce.

38 Also see, Hui Huang, "Comparative Study of Law on Trademark Application and
Opposition in China and other Countries", available at: http:// www.ipr2.org/storage/
Huang-EN932.doc (last visited on Feb. 18, 2013).

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
208 Journal of the Indian Law Institute [Vol. 57: 2

Colour marks

The definitions of mark and trademark refer only to a combination of colo

Hence, a combination of colours may prima facie be registrable. Combina
colours or even a single colour in combination with a word or device is statuto
registrable. Single colour is seldom used as the principal means of distingu
the trade source of the goods or services. However, they are capable of
used as secondary trademark if the proprietor has used the mark distincti
educate the public that it is a trade mark. Regard must also be paid to the gen
public interest of not unduly restricting the availability of colours for other tr
A single colour will only in exceptional circumstances be capable of den
the origin of a product or service. A single colour may be registerable as
mark if it is very unusual and peculiar in a trade and is recognized by traders
consumers alike that it serves as a badge of origin for that class of goods
in Dyson Ltďs Trade Mark Application?9 As held in Ty-Nant Spring Water
Trademark Application f colours per se without any unusual or fanciful f
would be devoid of any distinctive character, since they are considered t
the public domain and form part of the store of signs available to all t
Evidence filed to support a claim of factual distinctiveness colour must b
strong and persuasive. It has to clearly demonstrate that the colour mark excl
designates the applicant's goods or services to the relevant consumer. T
more likelihood of establishing factual distinctiveness where the goods or serv
are restricted and the relevant market is specific.
The US Supreme Court found in Qualitex Co. v. Jacobson Products Co
green-gold colour used on dry cleaning press pads registrable as a trade
where the colour had acquired distinctiveness. According to the court, it
'source-distinguishing ability' of a sign that permits it to serve as a trademar
not its ontological status as colour, shape, fragrance, word or sign. In th
green was held to be 'secondary' colour, it was used in such a way th
brand was totally identified with the green-gold colour. There was no fun
implication. However, even with acquired distinctiveness a colour may not suc
registration if the colour is required generally in the trade. In a 2012 jud
Christian Louboutin's red colour used on the soles of Louboutin shoes was

granted protection for its red colour trademark.

39 2003 RPC 47.

40 (1999) ETMR 974.
41 514 U. S. 159 (1995).
42 Neha Mishra, supra note 20.
43 C- 104/01 [2003] E.C.R. 1-379.

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
2015] Non-Traditional Trademarks : A Critique 209

The registrability of colour mark depends on how the colours are pr

what they are applied to.42 In Libertal 43 the European Court of Justice (
a mere sample of colour particularly on a paper is unlikely to be suffic
for the purposes of graphical representation. Designating a co
internationally recognized identification code will constitute a graphical r
being precise and stable. If the colours are within a figurative arrangem
circle or square, then as few as two colours could be accepted, bu
applied to the packaging of the product, they are less likely to be r
trademark. In such cases evidence of factual distinctiveness will be req
the basic principles of colour trademark laws is that a functional colou
trademarked. In other words, if a company makes lawn mowers, no pr
be granted for green as a functional colour in this case because green i
of lawns.

A single colour perse need not be considered as inherently disti

Omens-Corning Fiberglas, a colour pink could be registered for the
residential insulation. In KWS Saat 44 an application for single colour ora
in respect of 'seeds and treatment installations for seeds, consultancy
• agricultural, horticultural and forestry products' was rejected on the gr
distinctiveness. However, if a particular colour of packaging has becom
in fact as indicating the goods of a particular trader, there must not be a
in accepting the mark for registration. Several national trademark off
those in Germany, Sweden, UK, Norway etc. recognize the registrabilit
colour perse with proven secondary meaning or acquired distinctivenes
is fanciful in relation to gpods/services, it may be treated as inherently
afford registration. In order to constitute a trademark, a colour or com
colours must be capable of distinguishing the goods or services of one
those of other traders.45

According to the draft manual for Trademark Practice and Procedur

Trademark Registry, one means of signifying the trade mark signific
is to use them as a livery, i.e., as a consistent colour scheme applied
products of the same general kind so as to designate the trade sour
such liveries for buses, trains and vehicle service stations are good exa
use in relation to services. On the other hand, evidence that an applica
range of colour schemes in relation to goods or services of the same k

44 C-447/02, October 21, 2004, ECJ.

45 For the discussions on consumer protection aspects of trademarks, see
"Consumer Protection vis-a-vis Trademark Law" 1(1) International Journal on
Consumer Law and Practice 89-101 (2013).

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
210 Journal of the Indian Law Institute [Vol. 57: 2

point away from the trade mark significance of any o

Further, word marks constituted by names of colours,
names of single colour lack the required inherent distinctiv
or unlikely to be needed for use by competitors for t
fanciful names such as 'pea-green' for travel services, or 'red
may have inherent distinctiveness. Distinctiveness can be es
use. There are also reasons of public interest to prevent the
colour perse marks because the number of colours availa
to the international colour codes, the number of existing
question of secondary meaning, certain factors have to be c
whether a secondary meaning has been acquired or not. The
usage and the attention of the consumer should be directed
the product in case of any sale or advertisement of the pro

Taste or gustatory marks

Taste trademarks are extremely unlikely to be held inher
jurisdiction without strong prove of acquired distinctiv
smell marks, taste marks can only be applied to goods
SCT report states that the graphic representation requirem
using a written description of the taste and an indicatio
mark. However, it has to pass the non-functionality t
decision in In Re N.V. Organoid highlights this aspect. T
for 'an orange flavor' for pharmaceuticals for human use, n
in quick-dissolving tablets and pills was denied registra
trade mark protection. As per the board, "the flavor would
mark in any event." It was also held that the applicant's tas
a trademark since there are numerous other oran
Consequently, an orange flavor for antidepressants woul
Organon's product. The board said: "There are many oral
orange taste, and by their nature, taste marks are not inhe
appeals board also noted that flavor is a characteristic of
origin. As the trademark trials and appeals court pointed out
how taste can act as a trademark when consumers only tast
Registration of a flavor mark will require a substantia
distinctiveness. OHIM boards of appeal rejected an appli
"the taste of artificial strawberry flavour" as gustatory trad
preparations by stating that "it is in any event clear that suc

46 79 U.S.P.Q. 2d (BNA) 16.39 (TTAB 2006).

47. Case R 120/2001-2.

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
2015] Non-Traditional Trademarks: A Critique 211

the pharmaceutical preparations of one undertaking from those o

court added: "Moreover, the taste is unlikely to be perceived by
trade mark; they are far more likely to assume that it is intended t
unpleasant taste of the product."

Holograms and moving images

Motion marks include holograms, gestures, motion or moving
which can combine colours, sounds and aspects of product desig
result of multimedia technology. This category of marks registration
the use of a sequence of pictures or drawings to depict how the tradem
A hologram mark represents a picture sequence used to perform
function of identifying the commercial source of goods/services. Ho
been used for decades as security devices against counterfeiting.
holograms are being increasingly used as trademarks though
representability requirement creates a problem for trademark propr
of the sequence comprising the entire moving image, such as the fir
could be provided as long as the description of the mark clearly
entire sequence. A single image may not adequately represent th
may be preferable to juxtapose several representative frames,
sense of the overall sequence.
Several motion marks have been registered by the USPTO inc
"consisting of a pre-programmed rotating sequence of a plurality of
columns of light projected into the sky to locate a source at the
high intensity search lights. Another registered mark consists of "th
'FREE BREATHER' which appeared in a fixed position on the righ
for providing an information service on the subjects of asthma and
internet. A dandelion flower was represented fancifully on the o
logo. The motion feature of the mark was that the individual seeds
puff ball stage got dispersed owing to the wind which had an
words. The application provided four different freezed frames
mark. The different frames were taken at different points of move
jurisdictions, the motion of the Lamborghini car door has been g
as a motion trademark, because of the unique movement of th
opened or closed.
In EU, though article 4 of Council Regulation, 1993 recognizes any
of being represented graphically as mark, the Sieckmann decisi
scope for a broad interpretation of the provision. As per the dec
representation, by images, lines or character, must be clear, pre
This definition leaves scope only for simply structured holograms. E

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
212 Journal of the Indian Law Institute [Vol. 57: 2

or moving images are not specifically included in India in t

trade mark. However, there appears to be no reason why th
as trademarks. Century Fox Film Corporation's logo with flo
forth across the sky is a registered trademark with USPTO
manual states that a hologram used in varying forms does no
the absence of evidence that consumers would perceive it as

Shape marks
The UK Trade Marks Act, 1994 and the Indian Trade Marks Act, 1999 specifically
included the shapes within the definition of trade mark. Shapes with significant functional
features are unregistrable. The Indian Trade Marks Act 1999 specifically provides that
a mark shall not be registered as a trade mark if it consists exclusively of (a) the shape
of goods which results from the nature of the goods themselves; or (b) the shape of
goods which is necessary to obtain a technical result; or (c) the shape which gives
substantial value to the goods.
Inherent distinctiveness of three-dimensional trademarks which includes the shapes
of products has been outlined over the years by the ECJ and OHIM and Indian
judiciary. In the US , the Lanham Act does not specifically define shape to be a trademark
but modem practice has included shape and design of a product in a trade dress'.
Shape of the product can be a trademark if it has acquired distinctiveness and is not
functional. In Bongrain's Trademark Application the court rejected an application for
three-dimensional shape of a cheese in flower-like form since the mark was devoid of
distinctive character. It also held that there is a public interest in preserving certain signs
for other traders to use in relation to the same or similar goods to maintain freedom of
action and competition. Public's perception of a sign is generally of paramount
importance and the public is not generally accustomed to the shapes conveying
trademark significance. It is easier to register a mark if it is demonstrated that a shape
mark has in fact acquired distinctiveness through use. In Coca-Cola Co. v. A.G. Barr&
Co .,49 it was argued that the shape of the bottle was distinctive and indicative of the
connection to the company.

VII Graphical representation vis-a-vis non-conventional trademarks

Graphic representation is the sine qua non of trademark registration. Global trademark
regime requires the fixation or graphic representation of the trade mark although,
fixation criterion is not mandatory under the TRIPS Agreement. However, TRIPS
Agreement under article 15 leaves it for the member countries to fix such a criterion by
stating that "members may require, as a condition of registration, that signs be visually
perceptible." In order to be the subject of a valid application or registration, the sign
must be capable of being represented graphically. The applicant has to file an acceptable

48 [2004] EWCA Civ. 1690.

49 1961 RPC 387.

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
2015] Non-Traditional Trademarks : A Critique 213

graphic representation and the capability must be realized on the appli

The selection of the graphic representation is an important step for an
because the trade mark is defined by the graphic representation
representation provides a fixed point of reference showing what the m
function of the graphical representation is to enable the sign in q
represented visually, so that it can be precisely identified.
Under Indian trademark law, the sign must be capable of being
graphically. Unless this requirement is satisfied it does not constitute
The expression "trade mark" is defined inter alia to mean "a mark capa
represented graphically

"graphical representation means the representation of

services in paper form". The graphic representation is ess
to identify with clarity what the registered trade mark is.
fixation criterion as required in some countries including
onerous, especially for smell trademarks where the law d
to write down the complex and usually secret chemica
required is some point of fixation. As mentioned earlier, th
'the smell of fresh cut grass' in relation to tennis balls w
representation of the mark.50 In relation to sound mar
various registries is that the graphic representation of sou
musical notation (with stave, clef, notes and rests) or by a
and a frequency scale. A colour can be considered to be
filed in the form of a written description (e.g., sky blue) w
an internationally recognized colour identification system
representation of a hologram mark will be required to sh
in the hologram, so that all the material features of t
Movement marks can be represented by a series of still im
clear that the mark is a moving image, what the image dep
involved, their order and the fact that there is a single s
Further, a mark need not be defined with absolute
precision required depends on the mark itself and its dist
mark there is a degree of permissible variation in its gra
question whether any particular graphic representation in r
trademark is sufficient or not is a matter for the national co

criteria is widely recognized as a landmark decision on th

of non-conventional trademark wherein the ECJ ruled that

50 Supm note 28.

51 MM.S. Karki, 'TContraditional Areas of Intellectual Property Protec
Shape, Slogan and Trade Dress" 10(6) Journal of Intellectual Proper

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
214 Journal of the Indian Law Institute [Vol. 57: 2

representation is not satisfied by (i) scientific formula; (ii)

words; (iii) depositing a sample of odour; or (iv) combin
Registrable marks do not include signs that cannot be perce
be represented graphically by the means of images, lines or
representation must be clear, precise , self-contained, easily
durable and objective. These are generally known as the Siec
TREAT case52 suggests marks "particularly colours and the
or their packaging, often pose particular problems." Such m
the principal means of distinguishing the trade source
Nevertheless, they are capable of being used as secondar
issue will usually be whether the proprietor has used the ma
the public that it is a trade mark.

vm Suggestions and conclusion

In the light of TRIPS Agreement and other related interna

on trademark, there is a need for harmonization of trade m
Hence, it is desirable to protect non-traditional trademarks
trade. This also emphasizes the need to encourage investmen
technology in the global as well as national market. This is
since Madrid system of international registration of trademar
registration. Non-traditional trademarks pose certain difficulties
and application of traditional/conventional trademark p
significant issues: firstly ; the harmonization of criteria for
marks, and whether an office/trademark registry that accep
apply to them by analogy the same criteria it applied to trad
the harmonization of modalities for registration, in particular
an appropriate representation of the sign. These registratio
trademark registers of the jurisdictions to provide sufficie
be clarified whether the trademark registry should app
distinctiveness than for more traditional marks and what the criteria would be for
graphical representation, particularly of non-visible signs. For example, in the case of
olfactory marks, whether the trademark registry could accept a chemical formula
and/or other means of representation? As for colour perse marks, would the plain
reproduction of that colour suffice or would the colour code need to be provided, or
should the trademark registry require that the colours as applied in the packaging or
as applied to the goods be detailed in the application form? At least the WIPO
should come out with uniform guidelines concerning graphical representation of
non-traditional trademarks. The WIPO Standing Committee on Information
Technologies (SQT) can provide proper guidelines with regard to the representation,
description and the application of trademark principles to non-traditional trademarks.

52 (1997) E.T.M.R. 118.

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms
2015] Non-Traditional Trademarks : A Critique 215

There are still grey areas in this regard: (a) the potential economic r
these marks for less developed markets; (b) the possibility of overlappi
for example with copyright, in the case of motion marks, with patent
in case of shape trademarks; and (c) the need to consider the exhaus
and limitations and exceptions to protection, for example in the c
which may be viewed as a public good over which there should not
principle, any proprietary rights. There must be studies by WIPO to b
on these issues. Such studies would be helpful to find common ap
wise combination of practical examination techniques, basic tradem
and some policy discussion may help to set the boundaries betwe
intellectual property rights. Certain registries such as USPTO, IPO h
specific examination practices to deal with them in an ad hoc mann
were receiving more applications for non-traditional trademarks ov
There must be the harmonization of requirements for the graphical re
of new types of signs. There must be guidelines for uniform registrat
with regard to non-traditional trademarks.
With the growth of development in technology, there is seen a devi
the conventional trademarks; and non-traditional trademarks are getti
worldwide. In the legal practices of different jurisdictions there is not
for treating non-traditional trademarks differently from traditional tr
international standards determining the registrability of signs as mark
country to country. However, the questions of distinctiveness an
representation are understood in more or less same degree in different
In relation to non-traditional trademarks protection can be given, if th
the tests of distinctiveness and geographical representation. For those
distinctive character can be proved, the requirement of graphical r
should not bar registration. In the modern global market, where t
their products internationally, it is desirable to have a uniform policy
TRIPS member states to provide for the registration of non-traditiona
Where more and more jurisdictions come forward with relaxe
interpretation of trademark, the inconsistencies existing in som
surrounding the interpretation of graphical representation seem to hind
selling goods in international markets under non-traditional trademarks
the international community the urgent need to develop a uniform po
registration and protection of non-traditional trademarks. There sh
acceptance of the Singapore Treaty on Trademark, 2006 which came
2009. The various national laws are being amended to include non
trademarks either implicitly or explicitly as it opens up an entirely ne
explore and come up with more and more branding options. In the
international trade, harmonisation of the trademark application an
procedure of non-traditional trademark and development of comm
are the need of the hour.

This content downloaded from 103.68.37.134 on Mon, 18 May 2020 20:33:23 UTC
All use subject to https://about.jstor.org/terms