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EXPANDING SCOPE OF MARKS CAPABLE OF REGISTRATION UNDER TRADE MARK LAWS

Introduction

"There is nothing in the intellect that was not first in the senses."

                                                                                                     Aristotle, On the Soul

What immediately comes to your mind when you hear the sound of chimes, a child’s giggle or a lion roar? Smell fresh cut grass or plumeria blossoms? Or see the colour pink? A non-traditional trademark is relatively new under the IP law and therefore does not come under the pre existing conventional categories of marks like letters, numerals, words, logos, pictures etc. The term therefore consist of marks such as colour, sound, smell, shape, moving image, hologram, tactile, taste, and celebrity mark. The concept of non traditional mark is an innovative concept as it produces entirely new family of marks discrete and distinct from the traditional trademarks. Non-traditional trademark can either be visible signs such as colours, shapes, moving images or holograms or non visible such as sound, scents or taste etc.

Therefore, the scope and function of modern trademark have considerably expanded, as civilisation continues to evolve into a modern technological era.Trademark has to include an indication of origin and a quality guarantee and have to function as a marketing and advertising device also. Consumers readily recognize traditional trademarks such as brand names and logos as identifying the source and quality of goods and services. However, consumers may not readily acknowledge that a colour, sound, or scent functions as a trademark. Further, even where consumer recognition is not an issue, consumers rarely have the opportunity to make a direct comparison between similar non-traditional marks and, as a result, face increased difficulty identifying and distinguishing their desired product or service. As such, granting trademark protection in non-traditional marks may incite rather than mitigate consumer confusion. There are fundamentally three tests, which every mark has to qualify in order to be registered as trademark. The tests of functionality, graphical representability and distinctiveness. According to section 2(1)(zb) of Indian Trademark Act 1999, any mark which is capable of distinguishing goods and services of one undertaking from another, and capable of represented graphically is capable of registration. Thus, the trademark definition is inclusive one and non-traditional trademark can very well come under it if they fulfil the criteria given. However, there are also several problems with the registration of non-traditional mark like the problem of distinctiveness itself. Though, certain non traditional trademarks like colour and shape can be identified by consumers easily, for others like smell and taste marks, perception may vary which may create confusion in the minds of consumers. The second problem is graphical representability of the mark to be registered especially in case of smell and sound mark. This paper concentrates on these aspects in the light of legal requirements in various jurisdictions and with the help of decided cases.

Application of established Trade Mark Principles to new types of Marks

2.1.  Distinctiveness: Acquired or inherent

The term ‘distinctive’ is a key term of art in trademark law. The word sometimes causes misunderstanding because it does not have the same connotation that it has in every speech. Distinctive has a special meaning in trademark law. If a designation is not distinctive it is not a mark. Without achieving distinctiveness either inherently or through secondary meaning, then a designation does not have a legal status of a trademark.

• Colour mark

One thing should be remembered that colour is only protectable when it proved “acquired distinctiveness”. More difficulty arises when satisfying the conditions ofthe distinctiveness in colour trademarks. What does originality means for copyright or what does novelty means for patent, as the distinctiveness is same for trademarks. When it comes to colour marks, proving distinctiveness becomes more complicated and arduous, as colourscan also refer and belong to public domain. In WrigleyJr/ Light Green (1999), the Board of Appeal of the OHIM considered an appeal against the colour light green, for chewing gum. The Board asserted that:

“the aim of trademark is definitely not to deprive the market of the rich diversity in colours and added that single colour are devoid of distinctive character. The Competitors cannot use this colour for the classified products if the monopoly is given to the light green for chewing gum.”

However, the Board accepted the registration of light green colour for chewing gum on ground of acquired distinctiveness.

In, Libertan Groe BV v. Benelex Merkenbureau; C-104/01 2003 ECJ (May 6,2003)

ECJ not granted colour “orange” in respect of telecommunication related goods and services and observed thatcolour per se could constitute a trade mark if mark acquired a secondary meaning.

In, Smith Kline French Laboratories Ltd., v. Sterling Winthrop Grp.; (1975) 2 All ER 578.

It was held that unique combinations of colors applied on drug capsules were held to be marks.

Under US law more particularly LANHAM Act 1946, under section 45, colour per se cannot be distinctive. In order to receive trademark protection the colour must gain acquired distinctiveness, otherwise known as secondary meaning.

Qualitex V. Jacobson; 514 US 159 (1995)

Green gold color for pad press used for dry cleaning is not granted by Ninth Circuit but the decision is reversed by Supreme Court. The Court began with the view that the Lanham Act had virtually no trademark subject matter limitation in the Section 45 definition of "trademark": "any word, name, symbol, or device, or any combination thereof ...." It recognized the broad scope of the phrase, giving as examples shapes (the Coca-Cola bottle), sounds (NBC chimes) and scents (plumeria blossoms on thread). From there, it was simple to hold that colour was included in the broad definition and that there was no policy or legal reason to hold otherwise.

The Qualitex doctrine stands for the fundamental premise that colour is capable of distinguishing goods or services. Without distinctiveness, there is no trademark, but a colour on a product or its packaging can certainly signify a source, whether it is pink on home insulation or red on the head of an industrial bolt, examples given by the Court.

The case also recognized that colour that has some particular function in relation to a product must be available to competitors and that the functionality doctrine could well result in depriving a colour of trademark protection in a given case.  However, the functionality doctrine does not entirely bar the use of colour alone as a trademark because "sometimes colour is not essential to a product's use or purpose and does not affect cost or quality."  In the case at bar, green-gold had no function other than identifying Qualitex as the source of the press pads.

Reflecting a potent viewpoint favouring the protection of trademarks, the Court addressed and rejected several arguments against protecting colour per se as a trademark.

First, it rejected the "shade confusion" argument, which suggests that courts will face impossible challenges resolving disputes about what shades of colour a competitor may lawfully use that will not infringe on the colour mark. It held that courts are equipped to decide questions of likelihood of confusion in cases involving all types of trademarks, and there is no reason why they cannot handle the same questions involving colour.

Second, it was not persuaded by the "colour depletion" argument, which posits that there are a limited number of colours and if courts begin to grant exclusive rights in colours soon there will not be enough to go around. This finding eradicated a line of authority that demonstrated judicial reluctance to enforce colour trademarks because the number of colours is limited.  The Court concluded that the colour depletion issue would rarely arise and could be resolved, if necessary, by applying the functionality doctrine to prevent anticompetitive results.

All told, Qualitex stands at the apogee of non-traditional trademark protection in the United States. The decision is clear, forceful, and without a single dissent or even concurrence. It will no doubt have a lasting impact on trademark law in general and non-traditional marks in particular for years to come.

Dap Products Inc., v. Color Tile Mfg. Inc.; 821 F Supp 488

Granted use of red color for cans of tile mastic.

In, Campbell Soup Co. v. Armour and Co.; 175 F.2d 795 (C.O.A. 3d Cir. 1949)

Use of red color for one half of soup was denied because on the basis of color depletion theory, color monopolization and shade confusion.

Apotex Inc., v. Registrar of Trade Mark; 2010 F 201 ( Fed. Court of Canada)

Dark and light purple color for inhaler not granted as it lack distinctiveness.

Owens- Cornings Fibre Glass Crp. Case; 774 F.2d 1116 (Fed. Cir. 1985)

Granted pink color for insulation glass. The court noted that the colour had been arbitrarily chosen and served no utilitarian purpose in connection with the product. It elucidated that while the colour by itself was not inherently distinctive, it had acquired a secondary meaning i.e. the public had come to associate the colour as an indication of origin. This was due to the applicant's pink panther advertising, which emphasized the colour of the product.

• Sound, scent, motion and hologram:

As was the case with the colour mark, the sound mark is not included in but is not precluded from the trademark law. They are registrable in principle, in particular musical phrases but gave little guidance on how applications on sound marks should be treated.

In US, the Trademark Trial and Appeal Board have held that sound marks can be classified as inherently distinctive. More specifically,“unique, different or distinctive” sounds can be registered without the proof of secondary meaning, but acquired distinctiveness must be shown.

 Metro Goldwyn Mayor (MGM) Corp.

Lion roaring refused in EU but granted in USA.

The National Broadcasting Co. Inc., case

Musical notes played on chimes granted trade mark protection.

The song “sweet Georgia brown” for Harlem Glabetrotters Basketball team was granted as TM.

Honda AG v. Harley Davidson Inc., 108 F.3d 1393, 1997 US App. LEXIS 3597.

Denied TM protection to the unique sound of Harley bike.

Nokia sound; registered in USA; denied in Hong Kong.

As far as India position is concerned, the first sound trademark protection was granted in 2008 to Yahoo Yodel. While the Indian Trade Marks Act does not stipulate any special procedures or criteria to be followed for the registration of non-conventional marks, it is expected to gain clarity as the Registry examines more of these applications. At the moment, applicants seem to be using musical notations as the representation of the mark, as well as a CD recording of the sound clip to qualify registration.

As far as holograms and motions are concerned, have to prove acquired distinctiveness. Like scent marks, the Trademark Board has never indicated whether a showing ofsecondary meaning is necessary to register a motion mark or a hologram. However, a fewmotion marks and a few holograms  have been registered on the basis of inherentdistinctiveness.

• Smell marks:

Distinctive, non functional smell are eligible for trademark protection. The Trademark Trial and Appeal Board in a land mark decision held that there was no reason that a scent could   identify and distinguish certain type of products. Thus, the Board allowed registration of an arbitrary non functional scent (“high impact, fresh, floral fragrance reminiscent of plumeria blossoms”) for sewing thread and embroidery yarn.

• Flavour Marks;

Flavour marks have not yet caught on in the marketing community. Lindstrom acknowledges that incorporating the sense of taste into a brand is tricky but brand that can incorporate taste can clearly build a very strong platform. Many people could likely identify the distinctive flavour of juicy fruit gum or coca cola. It is not protectable without acquired distinctiveness as it could not be inherently distinctive. This status put such marks at a disadvantageous position particularly in dilution cases where a mark must be famous and not just distinctive.

2.2 Graphical Representation:

In order to be the subject matter of registration, the sign must be capable of being represented graphically (a strict requirement under EU law but not in US). This is a requirement under Indian Law as well as European law. The word capable of being represented graphically would mean that the mark should be such as capable of being put on a register in a physical form and also can be published in a journal. It provides a fixed point of reference showing what mark is.

Graphical representation of non trademark is a more of a practical problem than a legal one. Coupled with distinctiveness, they pose a greater problem in registration. This is particularly true of odour, colour and sound marks.

As regards the pre-requisite of graphical representation in Libertan case, the court cited the judgment of Sieckmann's case held that there was no reason that a scent could   identify and distinguish certain type of products. Thus, the Board allowed registration of an arbitrary no functional scent (high impact, fresh, floral fragrance reminiscent of plumeria blossoms”) for sewing thread and embroidery yarn.

In this case, Libertel had applied for the registration of the colour orange per se and in the box for reproducing the trademark, the application form contained an orange rectangle and in the space for describing the mark it contained, the word orange without reference to any colour code. The court held that mere sample of a colour is not durable enough, as it may fade. In other words, a colour sample on its own would not satisfy these criteria because it would be prone to deterioration. And it may also change slightly depending on the background on which it is printed or put. Thu,s the sample coupled with the verbal description and the internationally recognized colour identification code of the colour should be stated in the application.

• Smell mark

Smell marks are very controversial as far as their graphical representability is concerned. There are certain instances where an odour mark has been granted trademark registration or refused registration.

One such case where registration of trademark was denied because it failed to fulfil graphical representability criteria is Sieckmann v. German Patent Office; C-273/00 (2002) (ECJ); the chief issue in this case was where the olfactory mark described as balsamically fruity scent with the slight hint of cinnamon could be registered as trademark in respect of certain services. The ECJ had laid down the following criteria:

1. It must be complete, clear and precise, so that object of the right of exclusivity is immediately clear.
2. It must be intelligible to those persons having an interest in inspecting the register, e.g. other manufacturers and customers.

Having laid down the criteria, the court laid down the following difficulties in registering smell mark as trademark:

1. Representation as a drawing is not possible.
2. Representation by chemical formula is not suffice, as it represents substance itself rather than smell.
3. Representation by chemical formula lack clarity and precision, not only because of the fact that very few people would have requisite technological knowledge to interpret the odour of a substance from its formula, but also owing to the reason that the same substance would produce different smell at different temperature.
4. Deposit of the sample of the smell with registry was not a feasible alternative, firstly, because it was not a graphical representation and secondly, because odour being volatile, may fade away during a period of time.

Thus, the graphical representation of a scent thus far has wholly been verbal. A verbal description of a smell can only be subjective and cannot really provide a fail proof method of identifying and distinguishing one smell from another.

However, in Vennootschhap Order Firma Senta Aromatic Marketing App. (1999)Grant of fresh cut grass for Tennis Ball has been granted.

However, the scenario is different under US Law, where there is no problem of graphical representability. Instead, applicant is expected to submit a detailed written description which clearly describes the non visual marks.

In Re Celia Clarke case; USPQ 2d 1238 (1990) (TTAB), High impact, fresh, floral, fragrance reminiscent of plumeria blossoms granted for sewing thread and embroidery yarn.

• Sound mark:

As a practical matter not everyone can read a written music.  Moreover, written musical notes while indicating pitch, normally would not indicate tone, and different tones can be used, namely, musical notes give a “description” of the music but not the music itself. An apparent solution is to record is digital recording of the sound instead of graphical representation.

In the case of Shield Mark BV v. Joost kist h.o.d.n. Memex ;89/104/EEC/ Six Chamber)

Requirement of graphical representation is not satisfied when the sound is represented graphically by means of a description using written language, such as,

• An indication that the sound consists of notes going to make up a musical work
• An indication that it is cry of an animal
• By means of simple onomatopoeia
• By means of sequence of musical notes

• Colour mark:

As far as graphical representation of colour is concerned, it is pertinent to observe the ECJ decision in Libertan Groe BV v. Benelex Merkenbureau; C-104/01 2003 ECJ (May 6,2003; applying the Sieckmann criteria the Court held that such representation must be clear, precise, self contained, easily accessible, intelligible, durable and objective. Not granted colour orange in respect of telecommunication related goods and services.

Hiedelberger Bauchemie Gmbtt; 2004 E.T.M.R. 99 (ECJ) Colour cannot be registered as trademark unless graphical representation portrayed the colour in a systematic arrangement associating the colors concerned in a uniform and pre determined manner.

2.3 Doctrine of Functionality

The doctrine of functionality was originated and developed mainly in the US. The doctrine can be applied to IPR in general, however its concept is deeply embedded in trademark law. The functionality doctrine have been adopted and applied by almost all trade mark authorities and courts to determine the imperative requirement of distinctiveness for trademarks and has become more important in relation to trademark law.

The rule is a functional feature cannot be registered as trademark irrespective of the fact whether it has acquired secondary meaning or not. When an oppose in an opposition make a prima facie case of functionality of the designs for the goods claimed, the burden then shifts to the applicant to prove non functionality. The underlying principle is if any mark serve utilitarian purpose, it cannot be registered as trademark.

• Colour

The issue of functionality is a major focus in the registration of colour marks. The functionality doctrine in trademark law prevents mark users from stifling competition by monopolizing a useful product quality. If a colour were functional on a certain product, then it would harm competitors who wish to use it. The functionality inquiry looks to whether a product feature “is essential to the use or purpose of the article, or it affects the cost or quality of the article,’ that is, if exclusive use of a feature would put competitors at a significant non reputation related disadvantages.

In American Hospital Supply Corp. V. Fisher Scientific company; 1988 US Distt, LEXIS 11000; it was held that colour that serve some useful purposes on product will be found to be functional like in this case the court denied trademark protection to bright orange for biohazard bags because orange served to alert the users that the content of the bags were hazardous.

• Smell

In a few cases where the registration of mark consisting of scent has been brought before a trade mark Board, the argument has been made that the fragrance is functional in that the feature is aesthetically pleasing and makes the product more desirable. However, the contention was rejected that a designation should be denied registration simply because it may be pleasing.

• Flavour marks

There is one pioneering flavour application pending before USPTO. Filed in November 18, 2002, it seeks registration for “antidepressants in quick dissolving tablets” where the mark is an orange flavour. In that case, a final Office Action denied registration stating that the mark was a standard feature of the goods that would not be perceived as a source indicator and also that the mark was functional because it covered the medicinal taste of the pharmaceutical product.

• Gesture marks:

One gesture mark was registered before the UK Patent Office- Derbyshire Building Society’s “gesture made by a person by tapping one side of his/ her nose with extended finger, normally the index finger of the hand on the side of the nose being tapped.” Currently these unusual marks are normally considered to be objectionable on the basis of graphical representation, because, like smells, it is difficult to represent the precise marks.

Economic rationale for extending protection to non traditional trademarks:

“Human responses can be stimulated by other senses apart from sight.”

The history of legal protection of trademarks indicates that the courts, at the behest of the traders, protected the signs or marks as trademarks as an indication of source, and thus ruled that if another trader were allowed to use the same sign, this would allow a fraud to be committed on public.  Over the past few decades it is established that the world is moving away from the ‘industrial driven economy’ to ‘people driven economy’ and as a result consumers are put in the seat of power. This has forced the traders and the brand owners to look out for new and stirring ways to make their products more distinctive than those of their competitors. As a result, generally and readily perceived marks such as words, designs, logos, acronyms and slogans, which form part of standard or traditional form of marks, are no longer preferred by brand owners and the desire to register non-standard marks such as shape, colour, taste, smell and sound is noticeably increasing. The new track of marks has brands which go beyond sight and sound to reach consumers through smell, touch and taste. The acceptance of non-standard marks finds immense support in the branding literature.

The rationale apparently lies in the competitive structure of the market. These new kinds of marks are part of the composition outfit of the product. Thus, they may attract the consumers to a particular product and even invoke positive feelings in relation to that product.

Branding Guru Martin Lindstrom warns "if branding wishes to survive another century it will need to change track. More communication in an already overcrowded world simply won't do it."  Even distinctive brands need more than traditional television or print advertising in order to reach consumers. The new track would have brands go beyond sight and sound to reach consumers through smell, touch and taste.

Lindstrom's novel ideas do not come from thin air. He relies on a market research study that began with focus groups in thirteen countries exploring the role of the senses in creating brand loyalty to ten global brands and additional local brands.

According to Lindstrom, multisensory branding done right engages consumers emotionally. He notes that “sight may convey information well, but even at best it creates a less deeply felt emotional response."  An emotional connection to a brand makes the brand more compelling and engenders consumer loyalty.

Lindstrom urges brand owners to conduct a sensory audit: Is the brand using all available sensory touch points? Is the sensory experience of the brand strong, consistent and distinctive? To what extent does the consumer associate these sensory signals with this brand and how authentic do they perceive these signals to be?  He notes, for example, that the "smell and taste of major toothpaste brands could be extended to encompass dental floss, toothbrushes, and toothpicks" instead of just extending "the use of the brand name and the corporate colours." 

Under the Lindstrom teaching, using non-traditional trademarks and other off-beat stimuli to differentiate and reinforce a brand is imperative. Brand owners must pursue multisensory ways to entice consumers and get their message across.

Sensory experience are immediate, powerful and capable of changing our lives profoundly, but they are not used in their full extent in branding initiatives, given the competitions among today’s corporations , no business could afford to neglect these five senses.

Suggestions Proposed:

In order to qualify for trademark protection, the sign must be graphically represented and distinguished from the other products. In addition the sign must have distinctive character through use (which can be called as secondary meaning) as consumer recognition of products is very vital point for it. To prove the acquired distinctiveness through use can be difficult as these non-traditional marks can face the problem of graphical representation. To overcome these obstacles I proposed certain solutions for the registration of these marks.

As far as colour marks are concerned, we should adopt the requirement of an internationally recognized colour code in its registration process. An international colour code like the Pantone System provides precision, which is desirable to identify unique colours and to distinguish a claimed colour mark from other colours used in the marketplace. Such a requirement would provide an accurate method for selecting, specifying, and matching colours. The use of an international colour code would also simplify the examiner's job of determining what the applicant seeks to register and whether the applicant's registration infringes on another's mark. For example United Parcel Services holds the registration for the colour “chocolate brown”, which is the approximate equivalent of PANTONE 462C, as applies to the entire surface of vehicles and uniforms for the services of transporting and delivering personal property.

Requiring use of a colour code alone is not enough. As such, the drawing should consist of the colour swatch that corresponds to the colour code. The specimen of the colour being used in commerce should consist of a colour photograph of the actual product. Further, publishing the specimen in the Official Gazette and making it available for search in the electronic registry, like TESS in US, would provide increased clarity and notice to the marketplace. Registrants should also utilize the U.S.P.T.O.'s electronic filing system and upload colour photographs during the electronic registration process. While the photographs may not be in colour when published in the Official Gazette, the black and white picture, combined with a description of the colour and the international colour code specification, will provide searchers with the specificity and clarity they need.

Sound marks may be represented by way of musical notes, description or onomatopoeia. The representation by detailed musical notation on a stave divided into bars and showing clefs, rests, pitch, and duration satisfies the graphic representation requirement for sound marks. We can also use the digital recording of the sound with the registrar instead of graphical representation as the musical notes give description of the music and not the music itself.

a) In the form of musical notes (as in the UK); and

b) A description of the mark, such as representation by musical notation, accompanied by an audio or video reproduction of the sound (as in the US).

Smell marks may be registered by requiring a large quantum of evidence to prove that the scent functions as a trademark. Like a sound, the application does not require a drawing. Rather, the applicant must provide a detailed written description of the mark explaining the scent. Submitting a sample of the scent satisfies the specimen requirement. Ideally, the implementation of a smell classification system would facilitate olfactory mark registration. Until then, recent advances in technology may improve registration procedures. For example, "electronic nose" analysis of an olfactory scent imitates the human sense of smell, creating a digital file of the scent that can be pictorially displayed. Alternatively, spectrograms could be utilized to visually depict scents.

Alternatively, a new process could encode scents as digital data and upload them on the World Wide Web. Web users upon accessing the file could smell the scent through a speaker attached to the computer that plays smells rather than music. While enabling access to such technology may be costly, the expense should be worth the ultimate privilege of possessing a scent.

Colour, sound, and scent marks may be registered if they are used in commerce, indicative of source, and distinctive. As in the European Union, a trademark's distinctiveness may be either inherent or acquired (registrable after a showing of secondary meaning). In the United States, however, sound and scent non-traditional trademarks may be inherently distinctive, while color marks require a showing of secondary meaning for registration.

In addition to these substantive requirements, a drawing of the mark and a specimen must accompany the application for registration. The drawing and the specimen must accurately depict the mark, as used in commerce, so the mark can be easily located and identified upon a search of the trademark registry. By providing proper notice, registration "maintains the market stability effected by certainty of registry and ownership of existing trademarks."

The drawing requirement provides notice of the nature of the mark and must detail what the applicant seeks to register. Traditional trademark applications require submission of a black and white standard character or typed drawing, whereas an application to register a colour requires a colour drawing supplemented by a detailed description of the mark.

Registration of sound, scent, and other non-visual marks do not require a drawing; rather, the applicant must submit a detailed description explaining the mark. The description of a non-traditional trademark assists trademark examiners in determining what the applicant seeks to register, because visual inspection of the mark often fails to provide certainty.

CONCLUSION:

Sound, smell, motion, colour are slowly gaining acceptability. These Trademarks are registrable and enforceable, if they are capable of identifying the manufacturer as the source of the product and also if they distinguish products sold or manufactured by the applicant from similar products of other manufacturers. However, lack of uniform view to Non Traditional marks by Trade mark offices of different countries has led to confusion and instances where a trade mark is granted in one country and refused in another.The protection of non-traditional trademarks is the law’s recognition of the psychological functions of the symbols. New forms of marks have greater psychological import on consumers and hence more commercial significance. Difficulty in registering such marks on paper should not act as a deterrent to their use and new methods of identifying and classifying such marks should be developed to afford protection to the user of such nonconventional trademarks and new trademark which may evolve in future.