Non-conventional Trademarks and Trade Dress
Written by Aayushi Mishra
In traditional times, majorly the subject matter of trademarks included the distinctive features of words, logos, symbols or a thereof. However, the Indian Trademarks Act, 1999 (the ‘Act’) defines trademarks as “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 the shape of goods, their packaging and combination of colours.” Therefore it can be concluded from the definition that it is inclusive in nature.
In today’s era is the age of aggressive marketing, multiple strategies are used to occupy the interest of the buyers. In such competitive and aggressive marketing the concept of non-conventional trademarks appears in the major promotion of the product.
Non-conventional or non-traditional trademarks are those types of trademarks that are not bound in the purview of conventional trademarks and accordingly consist of marks arising from smell, sounds, shape, texture and taste. Although it is not precisely mentioned in the Act, that the definition of a ‘trademark’ comprises the non-conventional marks as well and conventional trademark. Thus it is viewed to be regarded that both are acceptable.
Graphical representation of the marks
Representation of trademark graphically is the sine qua none factor for registration of any trademark in the country. It is essentially important for the application of trademarks to be graphically represented, that is, the distinctive feature of the mark should be capable of being in physical form and it could be easily published in journals. The rules of a trademark make it an essential requirement to be represented in paper form.
Generally, a combination of colours or even single colour is considered for trademark. Section 10 of the trademark act state that even single colour or combination of colour can be allowed by law for registration. The promising instance for a colour trademark is “pink for vanish”. However, there must be uniqueness in the manner the colour is used to represent. The motive behind this is customers must be able to recognize the product and thus it must not be ambiguous in nature.
One such example for colour mark is Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd. 2003 where the use of trade dress and colour mixture of one-third red and two-third white, in that order, on the packet of its commodity viz. Tooth Powder is by adopting a similar trade-dress particularly the colour combination of “red and white” thus “passing off” the goods of Colgate. Therefore creating ambiguity.
When the reference identifier of goods is an odour, then it is known as Smell Mark. It is a debatable trademark in recent times however it has gained some popularity in the era.
Sound can graphically be represented by musical notation and written narrative. In the famous case of Shielf Mark BV v. Joost kist h.o.d.n Memex, it has been held that when the sound is shown to be in stave division which is in musical notes etc it is then that it fulfils the criterion of graphical representation which is acceptable in nature.
The representation was not found to be satisfactory based on the description using written language. Recently in India, the jingle sound of ICICI BANK was registered as a trademark. The first sound mark to be granted registration by the Trademark Registry was the Yahoo! Yodel
Trade dress though not specifically defined under the trademark act derives its concept from Section 2(zb) of the Trade Marks Act, 1999 includes within its ambit “shape of goods, their packaging and combination of colours”. Thus trade dress is also one of the non-conventional types of trademark that concerns the overall images and looks of any product. Trade dress also involves the concepts of packaging that indicate the references of the product to the customer.
The best illustration of the trade dress is the visual appeal of a coca-cola bottle. The appearance of the container, the cape of the bottle, the packaging style along with it, all these features constitute the concept of trade dress. Thus it can be said that packaging, combination, colour, shape used in a particular way that is unique and identifiable to buyers may be registered and thus protected as a trademark. It’s is essentially important to distinguish the product to protect it from being used by another competitor.
Some famous cases related to trade dress are
Gorbatschow Wodka Kg Vs. John Distilleries Limited, 2011
In the present case, there were 2 vodka companies named Gobatschow Wodka and John Distilleries. The Company John distilleries started selling their product in bottles similar to that of Gobatschow. The court held that there was deceptive similarity in the shape of the bottle therefore the company John distilleries were restrained from selling their product in that type of bottle.
Cadbury India Limited Vs. Neeraj Food Products,2007
The matter of dispute in the case was regarding the name ” James bond” it was contended that it was deceptively similar to Gems of Cadbury. Therefore the company Neeraj Foods liable for ambiguity was restricted from using it.
The non-traditional types of trademarks like motion/gesture holograms etc are still at back to be brought up in the main streamline. The registration of these types of trademarks is at its infancy arenas in our country. However, due to cutthroat competition in today’s time, the need for the trademark of the product is at its extreme. Therefore the scope of a non-conventional trademark is yet to be discovered. It’s the demand of time to bring all the trademarks whether conventional or non-conventional to the main streamline.
About the Author
Student at Vivekananda School of Law and Legal Studies, VIPS
 Rule 2(k)1 of the Trademark Rules, 2002
 2003 (27) PTC 478 del,
 First Sound Marks registered in India”, available at http://www.inta.org/INTABulletin/Documents/INTABulletin Vol63no17.pdf
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