It is often said that in order to be irreplaceable, one must be distinct. These words can be applied in world of trademark (“mark”), where the key factor towards sustainability or survival in market of cut throat competition is “distinctiveness”.
Traditionally the marks are a combination of words or letters, or a pictorial representation of a brand, presented in coloured or black and white form.
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 shape of goods, their packaging and combination of colours." The definition, even though does not expressly state non- conventional marks, but incorporates them as well.
Non- conventional marks are those marks which, unlike the traditional marks, are not ordinarily sought to be registered by its users and could be of the type of shape, smell, sound, texture.
Graphical representation of Mark
The Indian Law has a rigorous procedure in case of registration of non- conventional trademarks. Graphical representation of the mark is a sine qua non in case of registration of the mark under the Act. A trademark application is needed to be graphically represented and the mark must be capable of being put in the physical form within the register. It is also needed to be published in a journal. Graphical representation of non-conventional marks is a practical problem. It is considered to be a serious barrier in registering the non-conventional trademarks.
A distinct and catchy combination of colours is likely to hold attention of the consumers and stays in their mind. Single colour registration is difficult to obtain, however, the same is possible when the user establishes acquired distinctiveness with respect to the colour of the goods in the market. For example, Cadbury proved that the colour purple on the wrappers has gained a distinctive character by submitting public survey as a proof to this assertion and the same was granted to it.
A combination of colours has better chances of registration as compared to a single colour provided such combination is distinguishable and not confusingly similar to other goods of trade.
In practice, the Indian Registry and Courts follow the colour depletion theory. The theory is based on two arguments- First, that with the limited number of colours, to grant exclusive rights to colours would sooner or later deplete the available stock and, thus, be anticompetitive. Second, if a colour alone was protectable, trademark infringement suits would lead to lengthy litigations over 'shades' of colour which would slow down the trademark registration process. However, the theory only bars the registration of the seven basic colours but not any shade thereof. Further in order to solve the issue with respect to graphical representation, India may consider internationally recognized code such as Pantone in order to prevent colour depletion and anti-competition.
A sound mark can be graphically represented by musical notations and written descriptions. Along with the graphical notation, a 30 second MP3 recording has to be submitted to the Indian Trademark Registry, recorded on a medium which allows easy and clear audible replaying.
The first sound mark to be granted registration by the Trademark Registry in India was the Yahoo! Yodel. In a milestone trade mark registration for India as well as Yahoo, the country's trade marks registry in 2008, granted registration to India's first "sound mark" to Yahoo Inc.'s three-note Yahoo yodel.
In comparison to sound and colour trademark, it is difficult to represent a smell trademark graphically. That is probably the reason behind a smaller number of registrations for smell marks. A smell mark can only be verbally described and such verbal description is subjective and is incapable of distinguishing one smell from the other. A chemical composition of the mark does not represent the smell itself and a sample of the smell may also degenerate over the period of time due to deterioration of the chemicals. One of the smell marks to be registered outside India is of tennis balls of a Dutch Company which smell like freshly cut grass.
Like smell marks, taste marks are also registered in some jurisdictions on the basis of verbal description of the taste.
In order to encourage filing of non- conventional trademarks, the hurdles must be removed and with the evolution of marketing and branding techniques, the procedure of registration should also be evolved.