Trademarks have become essential marketing tools these days. They play a vital role when it comes to creating a brand image and distinguishing their products from others. Nowadays, brands are adopting different techniques to make their products stand out and thus, instead of traditional trademarks, even sounds, smells, and colors are being used to make products of a particular brand more unique. Indian law is, therefore, catching up with these new techniques by allowing the registration of unconventional trademarks.
The Trade Mark Rules, 2017 (“The Rules”) marks a new era for unconventional trademarks since they have legitimized the registrations of certain colors or sounds, as long as they are capable of graphic representation. To the extent of “graphic representation”, it can be observed that the traditional approach is still being followed even when it comes to unconventional marks.
As per section 26 (2) of the Rules, colors can be accepted for trademark registration if the applicant "wishes to claim the combination of colors as a distinctive feature of the trademark, the application shall be accompanied with the reproduction of the trademark in that combination of colors". Furthermore, as per section 26(5), "where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format...accompanied with a graphical representation of its notations". Therefore, a trademark, even if it is a sound mark, must be capable of graphic representation. Indian courts seem to be catching up and ICICI bank in 2011 received a trademark registration for its corporate jingle ‘Dhin Chik Dhin Chik’. This is the second trademark granted for a jingle. The first was granted to Yahoo! Yoddle.
Moreover, the courts seem to be more liberal now when it comes to colors as well. The Delhi High Court in a recent judgment Christian Louboutin SAS v Ashish Bansal & Anr, ordered an ex parte permanent injunction in favor of the famous luxury shoe brand Christian Louboutin for its distinctive red soles. The court held that the red soles in the particular shade of red made their shoes distinctive and had acquired well-known status in India. It was held that “The Plaintiff’s ‘RED SOLE’ trademark wherein a specific tone of colour red (pantone no.18.1663TP) is applied to the outsole of a shoe, is unique in its own accord and known in the world of fashion only after being introduced by the plaintiff herein.”
It, therefore, seems that unconventional marks are now gaining momentum in India and the courts are beginning to increasingly recognize them, however still based only on the traditional quintessential principles of trademark law, that they must be capable of graphic representation and have a distinctive character as well.
In the United States of America, the Lanham Act of 1946 includes unconventional marks but not explicitly. Under the Act, it does not require graphic representation as a contingent for registering a trademark. Thus, it is comparatively easier to register an unconventional trademark in the United States of America. "Therefore a sound mark, smell mark or any other unconventional mark, if proven to be distinctive can be registered under the Lanham Act.”
Recently, Hasbro’s Play-Doh received “Scent Mark” for their distinctive "sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with a smell of a salted, wheat based dough". This protection given to them ensures that other companies are restrained from creating confusingly similar products or scents. However, this is a special case since the product, much like its packaging, logo, and texture is increasingly recognizable by its distinctive smell. It is noteworthy that in order to obtain a scent mark, the petitioner has to prove that the scent is not essential for the functionality of the product. Therefore, perfumes and similar products cannot be trademarked.
The striking factor about the olfactory marks is that they cannot be visually represented. This question first came up in the case of Ralf Sieckmann v German’s Patent Office, wherein the European Court of Justice (“ECJ”) opined that visual representation is not necessary for a trademark of olfactory goods till the time they can be graphically represented.
The ECJ decided that graphical representation per se is not enough for registration, and it must meet the following criteria:
It must be complete, clear and precise, so that object of the right of exclusivity is immediately clear.
It must be intelligible to those persons having an interest in inspecting the register, i.e. other manufacturers and consumers
Similarly, the shape of the product can also be trademarked provided it is distinctive and can be represented graphically. Protection to shape of goods is even mentioned in the Trademark Act 1999 under –Section2 (ZB) "trade mark" means 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.
Thus, shape of goods is already protected under the Trademarks Acts.
In the case of Gorbatschow Wodka Kg v John Distillers Limited, the shape of the bottle of Vodka was in question. It was claimed by the Plaintiff that over the years the bottle shape had gained goodwill and distinctiveness. A similar bottle for sale of Vodka was being used by the Defendant. The Plaintiff thus, filed a suit against the Defendant claiming to have trademark registration over the shape of the bottle. The court, in this case, accepted the contentions of the Plaintiff and therefore, restrained the Defendant from using the shape of the bottle or anything similar to the trademark of the Plaintiff.
Another interesting case of unconventional trademarks is the latest attempt by one of the world’s biggest consumer goods companies, Proctor and Gamble (P&G) which has filed several applications in the United States Patent and Trademark Office to get the abbreviations such as “WTF”, “LOL”, “FML” and “NBD” trademarked. Surprisingly, the USPTO has accepted the application of P&G due to lack of objections filed. This is a further extension to unconventional trademarks and it would be interesting to see the extent to which India follows the liberal approach taken by the United States of America.
Thus, the law on unconventional trademarks in India is still a little ambiguous and is in the development phase. There is no concrete law in favour of unconventional marks. However, the Indian courts, in the recent past, have been flexible in accepting these unconventional trademarks within the ambit of the conventional trademark law. The need of the hour is to codify the laws in relation to unconventional trademarks in order to avoid any confusion or contradictory judgments. This seems to be the next logical step forward.
 Case No.- C-273/00
 Arka Majumdar, Subhojit Sadhu and Sunandan Majumdar, “The Requirement of Graphical Representability for Non-Conventional Trademarks”, JIPR 11 (5) 313-317 (2006).
 2011 (3) AIR (BOM) 762
The article was originally published on lexology.com on September 20, 2018 and can be accessed here.