Touch, Taste & Position: Non-Conventional Trade Marks In The Evolving Landscape Of Branding
“Products are made in the factory but brands are created in the mind”, a quote by Walter Lander has the ability to convey the impetus behind contemporary forms of branding. As companies continue to battle over creating an edge in the age of “brand perception”, trade mark laws across the globe are continually evolving to keep pace. Trade marks are used as source identifiers and are capable of distinguishing the goods and services of one entity from those of another. In India, the definition of trade marks under section 2(1)(zb) of the Trade Marks Act, 1999 (‘Indian TMA’), sets out the requirements when a ‘mark’ can be considered as a trade mark. These requirements include those of distinctiveness and being capable of graphical representation. Distinctiveness, in its simplest connotation means that a mark must have the capacity to distinguish the goods and services of one person from those of the rivals/competitors. Graphical representation indicates that the mark should be capable of being drawn on the Register. However, in today’s dynamic marketspace, companies are devising unique means to distinguish their products and help make them stand out in the market. Stiff competition and technological advancement have paved the way for newer, more non-conventional marks to thrive. In our article published in 2018, we had discussed in detail about colour, sound and shape marks. This article is a further attempt to discuss the evolving literature on unconventional marks, particularly touch and feel marks (also known as tactile marks), taste as well as position trade marks.
Tactile Trade Marks
Touch is a prominent human sense and this is the reason tactile marks for product branding are becoming increasingly popular. Such marks were first recognized in 2006 when the International Trade Mark Association (INTA) passed a resolution supporting such marks. Since then, INTA has established that touch or tactile marks shall be included within the list of non-conventional trade marks.  In 2006, the World Intellectual Property Organisation (WIPO) also released a report on the new types of marks and included “texture or feel marks” within the list of non-visible signs. The report stated that, “With this type of mark, it is the surface of the product that might lead to recognition, for instance because the surface touched has a specific recognizable structure or texture.”
It is also worth noting that in addition to providing a marketing advantage, tactile marks are considered a boon for the visually impaired since textures, patterns and shapes can be felt with your fingertips and can easily be used to distinguish between products. Therefore, brands attempting to improve their corporate social responsibilities and image overall may also consider this as a beneficial means in addition to a marketing tactic.
Such marks still remain relatively few and are almost an uncharted territory for brands since converting the sense of touch into detailed description capable of graphic representation is not an easy task. Notably, the first of such marks was introduced in 2004 when Diageo, the international beverage and alcohol manufacturer introduced the “crackle glass texture” for one of its products; a blended scotch whisky, the Grand Old Parr in Ecuador. The Ecuadorian Institute of Intellectual Property (EIPI) found the mark to be distinctive, perceptible as well as capable of graphic representation.
In the United States, tactile trade marks seem to have gained momentum in recent years. For instance, the USPTO accepted registration of ‘cotton-texture paper wrapped around oval-shaped soap and tied with a silver-colored wire that is coiled around and fastened to a semi-precious stone bead’.  Leather textured wrapping around the middle of a wine bottle has also been granted registration as a tactile mark by the USPTO. Raised texture designs on products have also been granted protection by the USPTO in various other cases.
However, registration of a tactile mark may be refused if its description cannot be deduced to writing. The question of graphic representation continues to loom over such marks. In the European Union, the term “graphic representation” has been replaced and it has been established that a mark may be protectable if it is capable of “being represented on the Register […] in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.
In the Procter & Gamble Company case, an application was filed for registration of the “tactile feeling” mark in Class 3. It was found that the requirements for “graphic representability” were not satisfied. The applicant was unable to identify with certainty the claimed ‘tactile feeling’. Therefore, it is necessary that when applying for the registration of a tactile mark, one must establish with certainty the feeling of the mark which the brand is attempting to create.
In the Indian context of sensory branding, Louis Vuitton v Malik, a case for violation of Louis Vuitton’s “EPI STYLE” trade mark and surface pattern was instituted before the Delhi High Court. The Court issued an ex parte interim injunction and Anton Piller order against the Defendant. According to the Court’s decision, due to Louis Vuitton’s long standing use of the EPI pattern (since the mid-1980s) and its consistent promotion of the mark, it has been a famous trade mark in the eyes of the fashion industry and general customers alike. Orders of this nature have enabled India to create a global presence in the IP landscape for recognition of perception infused forms of branding.
Taste Trade Marks
The taste or flavour of a particular product is capable of being registered. However, such marks may only be registrable if they are capable of graphic representation through a written description. The real challenge with such marks is embedded in functionality since before purchase, it may be impossible to taste the product. Therefore, on practical terms, although it may be possible to register a taste mark, it may not be a very useful source identifier capable of distinguishing the products of one entity from another.
In the United States, the functionality doctrine often leads to refusal of registration of taste trade marks. For instance, in the case of Re N.V. Organon, the trade mark Trial and Appeal Board, refused a pharmaceutical company’s application for the registration of the orange flavour of its pills. Furthermore, in the case of New York Pizzeria Inc. v. Ravinder Syal, the U.S. The District Court for the Southern District of Texas found that it was unlikely that flavours can be “inherently distinctive”. Therefore, it may be established that only once a flavour has acquired distinctiveness, only then can consumers identify the products and in turn, can the taste be considered registrable as a trade mark.
Similarly, in the European Union, the taste must have distinctive character to be considered capable for trade mark registration. In the case of Eli Lilly v OHIM, strawberry flavour for pharmaceutical products was denied for lack of distinctive character. It was also observed that the taste or flavour of a medicinal product would inherently be considered functional in nature. As per Article 4 of Regulation EU 2017/1001 on the European Union Trade Mark Law, although there is no requirement for graphic representation per se, taste trade marks may still be difficult to represent in a clear and precise manner.
In India, the legal framework under the Trade Marks Act, 1999 and the Trade Marks Rules, 2002 must be considered. Taste marks that may be used as a source identifier and those that may be capable of sufficient graphic representation may be capable of gaining protection under the ambit of trade mark law. However, there are no cases where taste marks have been registered as of now.
In general, taste trade marks are not commonly used and are difficult to protect as well as register. The coca-cola recipe is a well kept trade secret and this may provide a competitive edge to the product. Although the company could consider trade mark registration for the taste, it is a far fetched imagination as of now. Many hurdles may have to be overcome within the current legal frameworks in order to actually gain such protection.
Primarily, there is a difficulty in representing such marks graphically. Even if a written description of the taste is provided, it may be subjective and not precise enough to warrant trade mark protection. Furthermore, proving distinctiveness of the taste may also be difficult. Therefore, in order for taste trade marks to be considered in the future, perhaps a more uniform classification on a universal basis may be required. The future of these non-conventional marks is still uncertain and although there is much talk surrounding them, perhaps changes in the judicial interpretations may bring about some hope for such marks in the future.
Position Trade Marks
Some brands acquire popularity and distinctiveness based on the way their marks are placed on their products. Position trade marks are granted when the positioning of a mark becomes a source identifier for a particular brand. The World Intellectual Property office (WIPO) defines position trade marks as “a sign, represented graphically, positioned on a particular part of a product in a constant size or particular proportion to the product”. As per the European Union Trade Mark Manual, “a trade mark consisting of the specific way in which the mark is placed or affixed on the product…” is a position trade mark. Thus, there are two integral elements in position trade marks; one is the mark or sign itself and the other is the actual position or placement of the mark on the product. Christian Louboutin’s red soles at the bottom of their shoes are a good example of position marks. Not only is the colour itself a trade mark, the position/placement of the colour at the bottom of the shoes is also capable of gaining protection as a position trade mark.
As compared to tactile or taste marks, it may be easier to register position trade marks since establishing distinctiveness as well as graphic representation may be relatively easier. As per the EUTM Manual, “reproduction must appropriately identify the position of the mark and its size or proportion with respect to the relevant goods.” One of the longest legal battles based on position trade marks, is the case of Shoe Branding Europe BVBA v Adidas instituted before the European Intellectual Property Office. Adidas had filed an opposition against BVBA claiming that the latter's trade mark application for '2 stripe design', for footwear, (image 1) is 'confusingly similar' to Adidas' prior registered and well-known '3 stripe design' (image 2). Pictorial representations of the competing marks are as below:
The opposition panel of the European Intellectual Property Office (OHIM) eventually decided that the two marks can be distinguished based on the difference in inclination/ spaces between the stripes. However, aggrieved with the order, Adidas appealed against this decision before the EU General Court, which thereafter opined that the three stripes widely used by Adidas had in fact acquired distinctiveness, and hence, BVBA's two stripe design would most definitely adversely impact Adidas' reputation. Going forward, BVBA filed an independent suit before the EUIPO challenging the registrability of Adidas' 3 stripe mark, claiming that the same lacked distinctiveness and the characteristics of a source identifier. BVBA managed to win the case after all, wherein Adidas' 3 stripe mark was ruled to be an 'ordinary figurative mark' and not a distinctive pattern. Adidas was unable to establish that they had acquired distinctiveness across all the countries of the European Union, and hence, their registration of the 3 stripe mark was cancelled in 2019. This order is significant in adding to the augmenting literature of position trade marks, thereby, facilitating infusion in other jurisdictions.
Non-conventional marks play a significant role from a commercial standpoint since they have a tendency to redefine brand models. Apart from colour, shape and smell, it seems that newer types of non-conventional marks such as touch and feel marks, taste and position marks are actively gaining popularity since brands continue to run on the spinning wheel of a competitive marketplace. While such marks shall push boundaries of traditional trade mark norms, jurisdictions around the world may also have to ensure that their laws are transitory to include protection for such fluid marks.