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The document is a Ph.D. thesis titled 'A Critical and Comparative Analysis of Unconventional Trade Marks with Special Reference to India' submitted by Ruchir Singh under the supervision of Prof. R.K. Murali at Banaras Hindu University. It includes various formal declarations, acknowledgments, and a list of abbreviations and cases relevant to the research. The thesis aims to explore the nuances of unconventional trademarks within the Indian legal context.

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137 views288 pages

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A Critical and Comparative Analysis of

Unconventional Trade Marks with

Special Reference to India

THESIS SUBMITTED FOR THE DEGREE OF

Doctor of Philosophy
in
Law

Supervisor Submitted By
Prof. R.K. Murali Ruchir Singh

FACULTY OF LAW
BANARAS HINDU UNIVERSITY
VARANASI- 221005
INDIA

Enrolment No. : 302909 Year 2021

Copyright Certificate
Copyright © Department of Law
Faculty of Law
Banaras Hindu University,
Varanasi-221005, INDIA, 2021
All rights reserved.
UNDERTAKING FROM THE CANDIDATE
I hereby declare that I have completed the research work for the full time
period prescribed under the Clause VIII.1 of the Ph.D. Ordinances of the Banaras
Hindu University, Varanasi and that the research work embodied in this thesis entitled
“A Critical And Comparative Analysis Of Unconventional Trade Marks
With Special Reference To India ” is my own work.

I avail myself to responsibility such as an act will be taken on behalf of me,

mistakes, errors of facts and misinterpretations are of course entirely my own.

Date:

Place:Varanasi (Ruchir Singh)

ANNEXURE-E
[Clause XIII.2(b)(iii)]
Candidate’s Declaration

I, Ruchir Singh certify that the work embodied in this Ph.D. thesis is my own
bonafide work carried out by me under the supervision of Prof. R.K. Murali for a period
of September 2014 to March 2021 at Banaras Hindu University. The matter embodied in
this Ph.D. thesis has not been submitted for the award of any other degree/diploma.

I declare that I have faithfully acknowledged, given credit and referred to the
researchers wherever their works have been cited in the text and contents of the thesis.
I further certify that I have not willfully lifted up some other's work. Para, text, data,
results, etc. reported in the journals, books, magazines, reports, dissertations, thesis,
etc, or available at web-sites and included them in this Ph.D. thesis and cited as my
own work.

Date:
Place: Varanasi (Ruchir Singh)

Certificate from the Supervisor/Head of Department

This is to certify that the above statement made by the research scholar Ruchir
Singh is correct to the best of my knowledge.

Supervisor Head& Dean

(Prof. R.K. Murali) (Prof. Ali Mehdi)

Faculty of Law Faculty of Law
Banaras Hindu University Banaras Hindu University
Varanasi Varanasi
ANNEXURE-F
[Clause XIII.1(c)&XIII.2(b)(iv)]
Course Work Completion Certificate

This is to certify that Mr. Ruchir Singh is a bonafide research scholar of this
department. He has successfully completed the course work and passed
comprehensive examination required for completion of his Ph.D. programme.

Date: Head& Dean

Place: Varanasi (Prof. Ali Mehdi)

Faculty of Law
Banaras Hindu University
Varanasi
ANNEXURE-F
[Clause XIII.1(c)&XIII.2 (b) (IV)]
Pre-Submission Seminar Completion Certificate

This is to certify that Mr. Ruchir Singh, a bonafide research scholar of this

Department, has successfully completed the pre-submission seminar requirement

which is a part of his Ph.D. programme. The thesis entitled, "A Critical And

Comparative Analysis Of Unconventional Trade Marks With Special

Reference To India"embodies the results of his investigation conducted during the
period he worked as a research scholar under the supervision of Prof. R.K.Murali.

His pre-submission was conducted on o9.11.2020 and he was permitted to

supplicate his thesis on the aforesaid topic.

Date: Head& Dean

Place: Varanasi (Prof. Ali Mehdi)

Faculty of Law
Banaras Hindu University
Varanasi
ANNEXURE-G
[Clause XIII. 2(b) (v)]
Copyright Transfer Certificate

Title of the Thesis : "A Critical And Comparative Analysis Of

Unconventional Trade Marks With Special
Reference To India "
Candidate’s Name : Ruchir Singh

The undersigned here by assigns to the Banaras Hindu University all rights
under copyright that may exist in and for the above thesis submitted for the award of
the Ph.D. degree.

Date:
(Ruchir Singh )

Note: However, the author may reproduce or authorize others to reproduce material
extracted verbatim from the thesis or derivative of the thesis for author’s
personal use provided that the source and the University’s copyright notice are
indicated.
ACKNOWLEDGEMENT

In acknowledging the help and support that I have received from others in the
work presented here, I must begin with the Almighty God who has been very kind and
has blessed me in many ways.

This work is benefited immensely because of my mentor and supervisor Prof.

R.K. Murali Sir, Faculty of Law, B.H.U. who has inspired me to work in this area,
enabled me to evolve my ideas and has helped me with his marvelous supervision to
proceed with this work.

My greatest obligation, irredeemable by verbal expressions is towards the

entire teaching staff of my faculty specially Dr. Rajnish Kr. Singh and Prof. S.K.
Gupta who acted in the capacity of my subject expert and research nominee. I
consider myself to have been really blessed to be a part of this institution and get
benefited with its tremendously talented teachers who have not only enlightened me
with their knowledge about the subject, but have also guided me with the true lessons
of life and have been very affectionate throughout.

Along with that I would also like to thank the entire library staff of my faculty
for their assistance and contribution which has helped me in multiple ways.

At home, it is impossible for me to express my gratitude towards my parents

and family for their invaluable support and patience during the development of
various stages of this work. I would also like to thank my friends Abhishek, Anuraag,
Anand and Vaishnavi Yashasvi for their help, support and critical comments over
this work which has really helped in improvements therein.

(RUCHIR SINGH)
LIST OF ABBREVIATIONS
& And

AIR All India Reporter

ANDRC Asian Domain Name Dispute Resolution

Centre

Art. Article

D.L.R. District Law Review

D.L.T. Delhi Law Times

e.g. For Example

ECR European Court Reports

EIPR European Intellectual Property Review

ETMR European Trade Mark Reports

FSR Fleet Street Reports

HARV. LR. Harvard Law Review

i.e, idest (that is)

ibid idem (in the Same Place)

ICANN Internet Corporation for Assigned Names and

Numbers

INTA International Trademark Association

IPLR Intellectual Property Law Review

Minn. L. Rev. Minnisotta Law Review

P.T.C Patent and Trademark Cases

pp. Pages

i
Pub. Publication

RPC Reports of Patent Cases

SA South Africa

SC Supreme Court

SCALE Supreme Court Almanac

SCC Supreme Court Cases

Sec. Section

Supra In the Work Previously Cited

Tex. L. J. Texas Law Journal

TRIPS Agreement on Trade Related Aspects of

Intellectual Property Rights

U.K. United Kingdom

U.S. United States

UDRP Uniform Dispute Resolution Policy

UOI Union of India

V. Versus

Vol. Volume

WIPO World Intellectual Property

Organization

WTO World Trade Organization

YALE LJ Yale Law Journal

ii
TABLE OF CASES

 August Storck KG v. OHIM (Storck I), (C-24/05 P) [2006] E.C.R. 133

I- 5677, 61- 62
 Axions and Christian Belcev. OHIM, (T-324/01 and T-110/02) 183

[2003] E.C.R. II-1897 (ECJ).

 BBC Worldwide Ltd v Pally Screen Printing Ltd [1998] FSR 665. 20

 BIC SA v. OHIM, (T-262/04) [2005] E.C.R. II-5959 181

 Bongrain's Tradmark Application [2004] EWCA Civ. 1690. 44

 BP Amoco Plc v. John Kelly, [2001] F.S.R. 21 (High Court of 179

Justice in Northern Ireland)

 Britannia Industries Ltd. v. ITC Ltd., 2017 (70) PTC 66 (Del) 180

 Brunswick v. Corp. v. British Seagull Ltd., 35 F.3d 1527 (Fed. Cir.

1994).
 Buzz Bee Toys, Inc. v. Swim ways Corp., 20 F.Supp.3d 483, 497– 235

505 (D.N.J. 2014).

 Cadbury v. Darrell Lea, [2007] F.C.A.F.C. 70 (Federal Court of 179

Australia)
 Cadbury v. Darrell Lea, [2008] F.C.A. 470 (Federal Court of 178

Australia).
 California Fig Syrup Co. Mark [1888] 6 R.P.C. 126. 82

 Carter Medicine Co. Trademark [1892] 9 R.P.C. 401. 81

 Cases T-433/12 and T-434/12 - Steiff v OHIM (Étiquette avec bouton 102

en métal au milieu de l'oreilled'unepeluche), ECLI:EU:T:2014:6

Case C-521/13 P - Think Schuhwerk v OHIM,
ECLI:EU:C:2014:2222
 Christian Louboutin SAS v. Abubaker and Ors. (25-05-2018- 273

DELHC)
 Christian Louboutin SAS v. Pawan Kumar and Ors. 2018(73)PTC 273

403 (DEL).

iii
 Cipla Limited v. M. K. Pharmaceuticals MIPR 2007 (3) 170 272

 Coca-Cola Co. v. AG. Barr and Co, 1961 RPC 387. 44

 Coca-Cola Co. v. Koke Co. of Am., 254 U.S. 143 (1920). 222

 Cohen v. California, 403 U.S. 15, 26 (1971) 249

 Colgate Palmolive Company and Ors. v. Anchor Health and Beauty 179

Care Pvt. Ltd 2003 (27) PTC 478 Del.

 Deere & Company &Anr. v. Mr. Malkit Singh &Ors. CS(COMM) 272

738/2018 decided on 8-08-2016.

 Dyson Ltd v Registrar of Trade Marks, (C-321/03) [2007] 41

E.T.M.R. 34
 Dyson Ltd v. Registrar of Trade Marks, [2003] E.W.H.C.
1062 (Ch) (Court of Justice of the European Communities 171, 173
(ThirdChamber));[2003]E.T.M.R.77(ChD).
 Eli Lilly Case R 120/2001-2. 45

 Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1018 (3d Cir. 2008). 231

 Glaxo Wellcome UK Ltd &Anor v. Sandoz Ltd &Ors [2019] EWHC 196

2545.
 Globefill Inc. v. Elements Spirits, Inc., No. 2:10-cv-02034 (C.D. Cal. 226

filed March 22, 2010

 Hall v. Barrows (1863) 4 De GJ & S 150, 157. 16

 Heidelberger Bauchemie, (C49/02)[2004]E.T.M.R.99 122, 174

(European Court of Justice).

 Henkel v. OHIM, (C-456/01P&C-457/01P)[2004]ECRI- 182

5089,38 (European Court of Justice).

 Hoffman La Roche v. Centra farm [1978] ECR 1139. 205

 In re Brunetti, 877 F.3d 1330, 1349–50 (Fed. Cir. 2017). 233

 In Re Celia Clarke, USPQ 2d 1238 (1990) (TTAB). 24,34, 129

 In Re Ferris Corporation, 59 U.S.P.Q. 2d 1587 (T.T.A.B.2000). 178

 In re Florists’ Trans world Delivery, Inc., 105 U.S.P.Q.2d (BNA) 178, 236

1377 (T.T.A.B. 2013).

 In re General Electric Broadcasting 199 U.S.P.Q 560, 563 (T.T.A.B. 126

iv
1978).
 In re Int’l Flavors & Fragrances, 183 F.3d 1361, 1366 (Fed. Cir. 111,115

1999).
 In Re N.V. Organort 79 U.S.P.Q. 2d (BNA) 16.39 (TTAB 2006). 45

 It Off Promotions [2005] (2) SA 46 (SCA). 10

 John Lewis of Hungerford™s Application [2001] ETMR 1193. 253

 KUKA Roboter GmbH v Office for Harmonisation of Internal Market 218, 219

(Trade Marks and Designs) (OHIM), [2010] 2010/C 301/41.

 KWS SaatC-447/02, October 21, 2004, ECJ. 42

 L’Oreal SA v. Bellure, NV, [2006] E.W.H.C. 2355 (Ch) (European 161, 260

Court of Justice); [2007] ETMR 1

 LancÃ´meParfums et Beaute et Cie SNC v Kekofa BV, Case 263

C0200726/MA, Court of Appeal, Den Bosh, The Netherlands, Hof

(NL), 8 June 2004. Reported in English at [2005] ECDR 5.
 Lego Juris v. OHIM, Mega Brands, (T-270/06) [2009] E.T.M.R. 185

15 (European Court of Justice).

 Libertal C-104/01[2003] E.C.R. I-379. 41, 70,
121, 162
 Mag Instrument Incv. OHIM, (C-136/02 P) [2005] E.T.M.R. 46 182

 Mahendra & Mahendra Paper Mills Ltd v. Mahindra & 159

MahindraLtd., (2002)2S.C.C.147
 Marico Ltd. v. Mr. Mukesh Kumar &Ors. 2018(76) PTC 168(Del). 272

 Matal v. Tam, 137 S. Ct. 1744, 1751–60 (2017). 232

 Metro-Goldwyn-Mayer Lion Corp’s Application Case R-781/1999-4, 125, 165

2004 E.T.M.R. 34.

 Mirage Studios v Counter-Feat Clothing (Turtle Ninjas) [1991] FSR 20

145.
 Myles Ltd.’s Application (2003) ETMR 56. 24, 34

 NAACP v. Button, 371 U.S. 415, 432–33 (1963). 233

 Nation Fittings v. Oystertec Plc and Anr., [2005] S.G.H.C. 225. 156

 Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 111

v
1395 (3d Cir. 1985)
 Nestlé v. Mars, (C-353/03) [2005] E.C.R. I-6135, 26 181

 Norwich Pharmacal co: v. Sterling Drug, Inc., 271 F.2d 569 (1959). 202, 210

 Parmanand Lalwani v. Caltex (India) Ltd., AIR 1969 Bom 24.

 Philips Electronics v. Remington Consumer Products, (C-299/99) 169, 185

[2002] E.T.M.R. 81 (European Court of Justice).

 Philips Electronics v. Remington Consumer Products, (C-299/99) 181

[2002] E.T.M.R. 81 79-80 (European Court of Justice).

 Philmac Pty Ltd v. The Registrar of Trademarks (2002) 56 IPR 452. 70

 Procter & Gamble v. OHIM, (C-468/01 P to C-472/01 P) [2004] 159

E.C.R. I-5141(ECJ); [2004] E.T.M.R. 88 (European Court of

Justice).
 Procter and Gamble v. OHIM,(T241/05,T262/05toT264/05,T346/ 215

05,T347/05,T29/06toT31/06)[2007]E.C.R. II-1549
 Publ’ns Int’l, Ltd. v. Landoll, Inc., 164 F.3d 337, 342 (7th Cir. 1998). 227

 QualitexCo.v.JacobsonProds.Co.,514U.S.159,162(1995). 41, 70,

121, 158,
257
 Re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985). 25

 Reckitt & Colman Products Ltd v Borden Inc. and others [1990] RPC 261

341.
 Reed v. Town of Gilbert, 135 S. Ct. 2218, 2226–33 (2015). 232

 Ross Whitney Corp v. SKF, 207 F.2d 190 (9th Cir. 1953). 200

 Savant Homes, Inc. v. Collins., 809 F.3d 1133, 1146–50 (10th Cir. 235

2016).
 Shell Oil Co. v. Commercial Petroleum Inc., 928 F.2d. 104, 107 (4th 13

Cir. 1991)
 Shield Mark BV v. Joost Kist Case C-283/01, 2004 E.T.M.R. 33. 74, 115,
124, 164
 Shire v. Barr, 329 F. 3d 348. 211

 Sieckmann v. Deutsches Patent- und Markenamt, 2003 E.T.M.R. 37, 35,

74,114,115

vi
 SK&F v. Premo Pharm. Labs., Inc., 625 F.2d 1055 (3rd Cir. 1980). 200

 The Rock and Roll Hall of Fame v. Gentile Productions, 134 169

F.3d 749 (1998) (Court of Appeal (First Circuit)

 T-Mobile US, Inc. v. Aio Wireless LLC, 991 F.Supp.2d 888 (S.D. 246

Tex. 2014)
 TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 32–35 186

(2001).
 Turner Broad. Sys. v. F.C.C., 512 U.S. 622, 641–52 (1994). 232

 Ty-Nant Spring Water Ltd.’s Trademark Application (1999) ETMR 41, 163

974.
 United States v. O’Brien, 391 U.S. 367, 376–77 (1968). 232

 United States v. Stevens, 559 U.S. 460, 468–69 (2010) 231

 Venootschap Firma Senta Aromatic Marketing’s Application (1999) 35

E.T.M.R 429 OHIM BoA R 156/1998/2.

 Wal-Mart Stores v. Samara Bros., 529 U.S. 205 (2000). 118, 244

 Ward v. Rock Against Racism, 491 U.S. 781, 791–803 (1989). 232

 William R Warner & Co. v. Eli lilly & Co., 265 US 526 (1924). 200

 Windsurfing Chiemsee GmbH v. Boots-und Walter Huber, (C- 180, 214

108/97) [1999]E.T.M.R. 585 (European Court of Justice).

 Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F. Supp. 670, 694-95 111, 154

(S.D.N.Y. 1963).

vii
PREFACE
Nowadays, the complex structure that trade mark law has developed has
motivated law scholars and practitioners to explore the particulars of this structure in
the hope of assessing its consequence on the modern day market. Surprisingly, less
attention has been given to the rationale of Trade Mark law. Having said that, key
aspects of the investigation are the issues of trade mark registration and regulation but
in order to so, there is the need to research into the basis of trade mark protection.

The law relating to trade mark registration seems to be straightforward since

it appears to be in note form and thus, a trade mark only needs to fulfill certain
requirements. Yet the complexity of such requirements makes the trade mark legal
system far from simple. It appears however that this latter issue has been forgotten.
Manufacturers try to expand their marks and thus extend their exposure by reaching
beyond the goods and services with which they are associated. Added to this is the
fact that consumers are increasingly heightening their expectations of new products
and so, for their branding. Clearly, the pressure is on the Trade Mark law system
which needs to adapt and evolve at the same pace. Because of these pressures, there
has been a failure to consider that there are certain trade marks that cannot adapt and
evolve at this rate.

As a result, the whole aim of this thesis is to consider the registration of

unconventional trade marks under the trade mark system, and to probe that chemical
senses suffer from the same problem as others non-common signs, to be precise
colour marks, and sound marks for example. However, through the development of
the present work it is questionable if unconventional trade marks should follow the
same pattern as others conventional marks or it is time to recognize that
unconventional trade marks do not belong to the trade mark system.

It is important to bear in mind that the legal system I am concerned with is

India and European Union; nonetheless, comparison with the US and other countries
leading in IPR discussions will be made as well with other areas of law that may
protect trade mark, such as passing off.

viii
While embarking into the discussion of unconventional trade marks it is
crucial to cover more general issues because one cannot depart from the rationale of
trade mark law. Therefore, in order to understand the central argument of the thesis:
the registration of unconventional trade marks, the research starts by giving a history
of the legislative framework of trade mark followed by the reasons for protection.
Modern trade marks have developed beyond the concept of origin-function and now
represent a variety of characteristics. Therefore, while the range of registrable signs
have increased over succeeding Trade Marks Acts, it is imperative to consider if
unconventional trade marks are signs which were brought by the development of the
trade mark system or unconventional trade marks are just signs brought by capricious
manufacturers and/or consumer’s desire. This point will clarify if unconventional
trade marks accomplish with the functionality of trade mark and so, by keeping pace
with society, in need of protection under the trade mark system.

Accepting sensory marks and more precisely, chemical senses (smell and
taste) as marks might protect not only manufacturers but also consumers.
Nonetheless, the issue that chemical senses should be protected is clearly a matter of
fact, but how to register them is a matter of law. To examine this issue I start the
second part of the thesis by opening with the institutional and procedural aspects of
Trade Mark law in India, European Union and America.

Consequently, I endeavour to examine the relevance of crucial requirements

to different types of trade marks because while they should follow a pattern, the
requirements appear to be modified and so adapting to new types of signs. In
principle, when applying for registration, any sign must fulfill the same burden.
However, by the developing of the second part of the thesis the research probes that
the burden is not only different but that it must be so.

Starting with the background of the current trade mark legislation and the
discussion of whether unconventional trade marks are signs, it is demonstrable that
while they are not indicated in the list of potential marks, they are not excluded from
being one. This is demonstrated in Chapter IV which opens by describing the
European Union legal system as such due to the fact that most of the cases analyzed in
this thesis are ruled by the EU superior law. Therefore, it is important for the reader

ix
to become aware how this system works. The Chapter continues describing the Trade
Mark system as a whole, the intention is not much to analyze the law but to position
the reader in front of the structure and thus to start questioning how the registration
process work.

The thesis continues to study one of the most controversial requirements

applicable to non-visual marks, namely, graphical representation. To this effect, the
Directive does not impose a certain manner in which a sign should be represented but
unfortunately, unconventional trade marks appear to have found an unreachable
burden. The purpose of the requirement of graphical representation is to make the
potential mark be precise and clear. To investigate whether it is or will be possible for
unconventional trade marks to fulfill this requirement, the work studies the situation
of others non-common signs. The reason for this is that in the past only few
unconventional trade marks were capable of registration but after the Sieckmann case,
it appears that the burden for chemical senses has been raised.

The research work deals with the concept of distinctiveness with a motto for
a better recognition of unconventional trade mark. This condition relates to consumer
perception: marks can only be distinctive where the consumer perceives it
immediately as an indicator of origin. The situation with unconventional trade marks
is that they belong to certain type of marks that are difficult to be indentify by
consumers as an indication of commercial origin. The argument that brings this
concept forms part of the central element of the thesis. Distinction is an obligation
that appears to have fallen from proper discussion by officer and scholars when
unconventional trade marks are in place. The reason behind this situation is that once
a sign has not fulfilled a preceding requirement (in this case, the graphical
representation) then there is no need to scrutinize the forthcoming ones. Therefore,
there is the need to study this obligation.

The work also discusses the last requirement for a sign to be registered,
namely, functionality; it embraces not only its structure but attempts to analyze its
public policy by bringing into the frame other areas of Intellectual Property law such
as Design law and Patent law.

x
Functionality is a requirement that is only scrutinized when shapes marks
are in place. However, the argument that is to be brought into this work is that the
doctrine of functionality is a logical principle of Trade Mark law and therefore, there
is no reason to limit the application to shapes only. The midpoint of this research
work is that functional features are not explicitly implemented by shape marks.
Moreover, the rationale of the doctrine of functionality can be applicable to any other
type of signs because the idea is to preclude the registration of trade marks that are
crucial to ensuring a function and thus, should not be directed only to shapes but also
applicable to unconventional trade marks as it does happen in the India and US.

The final part of the thesis starts with which endeavours to make scholars
and practitioners aware that even if registration of unconventional trade marks is
possible, the issue of infringement is as arduous as the process of registration itself.
While the aim is to investigate the frequent burdens presented to unconventional trade
marks at the registration process: administrative, the argument for dealing with
infringement is that it relates to registration. However, the analysis brought into this
work gives a basic outline of how the system work because up to today there has not
being any case regarding unconventional trade marks infringement in the EU.
Therefore, the researcher endeavours into an etymological meaning that refers to
different aspects that might be presented if a chemical sense mark is infringed.

Finally, Chapter VII discusses the nature of chemical senses and their
repercussions on present market. The difficulties that smell and taste have when
intending to work as trade marks are overshadowed by the complexity of enforcing.
The reason is that chemical senses nature is subjective and therefore legal analysis can
differ. The Chapter also opens the debate on whether chemical senses should be
protected under the trade mark system or they are more suitable in another type of
system. At the end, the thesis tries to adapt or accommodate unconventional trade
marks into the trade mark legal system but this Chapter specifically investigates
through case law different movements that can assist to protect chemical senses. Thus,
the complexities involved into the subject matter discussed above makes it a worthy
contender to be discussed in detail.

xi
CONTENTS

Chapters Titles Page No.

List of Abbreviations i-ii
List of Cases iii-vii
Preface viii-xi
Chapter 1 INTRODUCTION 1-8
1.1 Identification of the Problem 1
1.2 Importance of study 3
1.3 Objectives of The Study 3
1.4 Research Hypothesis 4
1.5 Literature Review 4
1.6 Research Methodology 6
1.7 Framework of the Study 7
CHAPTER 2 GENERAL PRINCIPLES OF TRADE MARKS 9-63
AND THE EVOLUTION OF TRADE MARKS
2.1. The Idiosyncrasy of Trademarks 9
2.2. The Basis for Trademark Protection 10
2.3. Meaning of A Trademark 10
2.4. Variety of Functions 14
2.4.1. Quality-Origin Function, An Extended 15
Information Function?
2.4.2. Economic Function - Trademarks As 19
Creature Of Commerce: From Branding To
Merchandising
2.5. Historical Overview of Trade Marks with 22
Reference to Unconventional Trade Marks
2.6. Special Characteristics of Unconventional Trade 25
Marks
2.7. Economic Justifications of Unconventional 26
Trademarks
2.8. Rationale for Protection 29
2.9. Meaning and Garden Variety of Unconventional 33
Trade Marks
2.9.1. Olfactory Marks 34
2.9.2. Sound Marks 36
2.9.3. Tactile Marks 39
2.9.4. Colour Marks 40
2.9.5. Shape Marks 43
2.9.6. Taste or Gustatory marks 44
2.9.7. Holograms And Moving Images 46
2.10. Some Registered and Recognized 47
Unconventional Trademarks
2.11. Conclusion 62
CHAPTER 3 INTERNATIONAL CONVENTIONS AND 64-109
GLOBAL ARRANGEMENTS FOR
UNCONVENTIONAL TRADE MARKS
3.1. INTRODUCTION 64
3.2. Non-Traditional Marks Under the Trips 65
Agreement
3.2.1. A Universally Binding Definition 66
3.2.1.1. Trademark definition in Article 66
15.1 of the TRIPS Agreement
3.2.1.2. Trademark definition in the WTO 67
Members’ trademark legislation
3.2.2. Protectable Trademark Forms 67
3.2.2.1. Registrable signs in Article 15.1 of 67
the TRIPS Agreement
3.2.2.2. Registrable signs in the WTO 68
Members’ trademark legislations
3.2.3. Limitations On Trademark Form: Visual 72
Perceptibility
3.2.3.1. Visual perceptibility requirement 72
3.2.3.2. Non-visual signs in the WTO 74
Members’ trademark legislations
3.3. Non-Traditional Trademarks Registrations Under 76
The Paris Convention
3.3.1. Principle of Independence 77
3.3.1.1 Article 6 of the Paris Convention 77
3.3.1.2. Registration of non-traditional 77
trademarks under Article 6
3.3.2. Principle of ‘Telle Quelle’ 78
3.3.2.1. Article 6quinquies of Paris 78
convention
3.3.2.2. Implementation of Article 80
6quinquies in WTO members
3.3.2.3. The significance of Article 84
6quinquies for non-traditional
trademarks
3.3.3. Comparison Between Two Ways Of 94
Trademark Registration
3.3.3.1. Different prerequisite 94
3.3.3.2. Different treatment 94
3.3.3.3. Different applicable law 95
3.3.3.4. Different refusal grounds 95
3.4. Singapore Treaty on the Law of Trademarks 96
(2006)
3.4.1. Visible Signs 97
3.4.1.1. Color marks 97
3.4.1.2. Holograms 98
3.4.1.3. Slogans 99
3.4.1.4. Titles of films and books 99
3.4.1.5. Motion or multimedia signs 100
3.4.1.6. Position marks 101
3.4.1.7. Gesture marks 103
3.4.2. Non-Visible Signs 104
3.4.2.1. Sound marks 104
3.4.2.2. Olfactory marks 107
3.4.2.3. Taste marks 108

3.4.2.4. Texture or feel marks 108

3.5. Conclusion 108

CHAPTER 4 COMPARATIVE PERSPECTIVES OF 110-152
COMPETEING JURISDICTIONS
4.1. Introduction 110
4.2. Trademark Law in the European Union 114
4.3. Trademark Law in the United States 117
4.4. Treatment of Unconventional Trademarks in the 120
European Union and the United States of America
4.4.1. Colour Marks 121

4.4.2. Sound Marks 124

4.4.3. Olfactory Scent Marks 128

4.5. Canada 131

4.6. Switzerland 132
4.7. Germany 133
4.8. France 135
4.9. Argentina 136
4.10. Andean Community of nations 137
4.11. Uruguay 139
4.12. Chile 140
4.13. Australia 141
4.14. Korea 144
4.15. China 146
4.16. Japan 147
4.17. Conclusion 149
CHAPTER 5 UNCONVENTIONAL TRADE MARKS: AN 153-194
INDIAN PERSPECTIVE
5.1. Introduction 153
5.2. Overarching Issues 157

5.2.1. A Functional Definition of a Trade Mark 158

5.2.2. Graphical Representation and Procedural 160

Requirements

5.2.3. Outer Limits: Can Anything Be A Trade 168

Mark?

5.3. Specific Categories 173

5.3.1. Color Marks 174

5.3.2. Shapes Marks 180

5.3.3. Holograms 189

5.3.4. Sound Marks 190

5.3.5. Smell Marks 193

5.4. Non-Conventional Marks Filed / Registered in 194

India

5.5. Conclusion 194

CHAPTER 6 RECENT TRENDS AND ISSUES IN 195-250

UNCONVENTIONAL TRADE MARKS
6.1. Introduction 195
6.2. Unconventional Trade Marks in Pharmaceutical 197
Sector
6.3. Protection for Unconventional Trade Marks and 204
Access to Medicine
6.4. Issues of Competition 211
6.4.1. Rights over Unconventional Trademarks V. 211
Free Competition
6.4.1.1. Concept of free competition 212
6.4.1.2. Unconventional trade marks in 213
the light of free competition
6.4.1.3. Balancing unconventional 214
trademarks and free competition:
in favour of unconventional
trademarks
6.4.1.4. Balancing unconventional 215
trademarks and free competition:
against unconventional
trademarks
6.5. Need for Clear and Balanced Approach 219
6.6. The Normative Case Against Unconventional 221
Trade Marks
6.6.1. Sense Depletion 221
6.6.2. Sense Confusion 222
6.6.3. Ability To Act As A Trademark 223
6.6.4. Is It Worth It? 224
6.7. Unconventional Trademarks and Inherently 225
Valuable Expression
6.8. The Right to Freedom of Expression 229
6.9. Unconventional Trade Mark Laws 234
6.9.1. Certain Non-Traditional Trademark Laws 238
May Violate The Free Expression Right
6.9.1.1. “Expression” capable of protection 239
by the free expression right
6.9.1.2. Balancing non-traditional 243
trademark rights and free
expression
6.10. Conclusion 250
CHAPTER 7 CONCLUSION AND SUGGESTIONS 251-276
7.1. Chemical Senses-Subjective Nature 251
7.1.1. Chemical Senses: Aptitude To Function As 253
Marks
7.1.2. Examination Of Socio-Economic 254
Problems: The Market Conditions
7.1.3. At The Point Of Sale 257
7.1.4. Revisiting The Function Of Trade Marks 258
7.1.5. Protection Of Chemical Senses: Is It An 261
Overprotection Of Intellectual Property
Rights?
7.1.6. Adaptation To Social Change, Is It Wise? 265
7.2. Demerits of Unconventional Trade Marks 266
7.3. Conclusion 268
7.4. Suggestions and Recommendations 274
Bibliography 277-287
Publications
Curriculum Vitae
A Critical and Comparative Analysis of
Unconventional Trade Marks with
Special Reference to India

ABSTRACT
THESIS SUBMITTED FOR THE DEGREE OF

Doctor of Philosophy
in
Law

Supervisor Submitted By
Prof. R.K. Murali Ruchir Singh

FACULTY OF LAW
BANARAS HINDU UNIVERSITY
VARANASI- 221005
INDIA

Enrolment No. : 302909 Year 2021

ABSTRACT

1. IDENTIFICATION OF THE PROBLEM

Trademark law continues to be one of the most interesting branches of law,
not just in the realm of intellectual property law but in terms of general legal
developments as well. The rationale behind trademarks is multi-layered. A trademark
is economically efficient because it allows the consumer to identify the service or
good that he prefers and to buy that to the exclusion of others in the future.

Traditionally, firms have registered words or certain logos/designs as

trademarks. However, increasingly all over the world, recognizing the potential
contained therein, different combinations have been sought to be trademarked. This
includes a variety of things ranging from the Intel jingle to the shape of the Coca Cola
bottle. The common feature of all these marks is that none of them are visually
perceptible, and hence the label of ‘non-conventional’ has been conferred on them.
Trademark law has traditionally stressed on visual perceptibility, as it enables
trademark authorities, competitors and consumers to have clarity on what has secured
trademark protection. Nonetheless, statutes have been amended, making place for non
visual trademarks. Such inclusion has brought with it a requirement in most
jurisdictions that the mark be capable of “graphical representation”. Hence, for
instance, a smell would only be registered if, inter alia, it was capable of being
graphically represented. Such a requirement has been brought in for enabling
competitors and others to know what has been trademarked. This requirement is in
addition to the standard requirements that the mark be unique and not be an inherent
part of the product itself. Such an amendment has necessitated the inclusion of a
graphical representation requirement.

Page | 1
Abstract

producers across the globe to participate in “extreme branding” aimed at making the
public at large recognize their product with the help of sound, packaging shape,
colour and smell, among others aids. Such other aids, that are not restricted to two
dimensional representations, constitute unconventional trademarks. Trademark laws,
which earlier only took cognizance of words, symbols, letters, devices and colour
combinations, now give similar treatment to unconventional trademarks.

The inclusion of unconventional trademarks raises various questions: Is their

inclusion leading to an undesirable depletion of available intellectual property
resources? Are these marks capable of fulfilling the purpose of the trademarks?
Finally, does the fact that these marks are not visually perceptible create any
confusion on what has been registered? The present work aims to help device a
balanced approach to recognition of untraditional marks.

2. IMPORTANCE OF STUDY
In today’s world, companies have to be creative and stand out from their
competitors to remain in a good market position. Companies must invest, besides a
word trademark, into so-called non-traditional trademarks, such as smell, sound and
colour marks applied, for example, on the products packaging to make it depart
significantly from the sector’s norms. Indeed, “in order to have a viable future, brands
will have to incorporate a brand platform that fully integrates the five senses”, where
“virtually any perceptible feature in the sensory world can be used to attract custom”.
Moreover, marketing and branding methods are growing into a farfetched way as
companies start to surf on the social media movement of our information society.
Besides, traders also invest into the circulation of the brand image like Apple which
registered its cube-shaped glass store in New York.

However, traders need to be careful, as educating consumers to associate a

Page | 2
Abstract

overtone. These modern marks are recurrently employed in the global market place
nowadays, but a worldwide valid trademark does not exist as registration is territory-
based. On the other hand, these “new trade mark forms” represent one of the most
important changes in trademark law and one significant concern for policy-makers is
to guarantee that (intellectual property) laws continue to match with technological
improvements.

3. OBJECTIVES OF THE STUDY

The purpose of the work is, to delve deep into the trademark waters with
special reference to unconventional trademarks and to discuss the paradigm shifts in
the nature definitions and aspects of registration of unconventional trademarks
without evoking any statutory model. In a nutshell, the work seeks to examine the
following quests:

1. Whether there is any functional difference between the nature, definition and
characteristics of trademarks and unconventional trademarks?
2. Whether an unconventional trademark can get a concurrent protection in different
fields of Intellectual Property?
3. Whether the requirement of graphical representation is a sine qua non for
registration of an unconventional trademark?
4. Whether there exists symbiotic relationship between courts of different competing
jurisdictions with regard to the registration of unconventional trademarks?
5. Whether issues of Free Competition and Unconventional Trademarks can be
resolved together?
6. Whether the Trade Marks Act, 1999, Trade Mark Rules, 2002, and Draft Manual
for Trademark Practice and Procedure, 2009 and the Trade Mark Rules, 2017
provides sufficient machinery for regulation of unconventional trademarks in the
Indian terrain?
4. RESEARCH HYPOTHESIS

The hypothesis of the work rests on the presumption that adherence to

domestic laws and reconstruction of the same on the lines of European Union laws is
sufficient for the protection of unconventional trademarks with special emphasis on
revamping the domestic legal framework.

Page | 3
Abstract

5. LITERATURE REVIEW

For the purpose of the literature review, present research work scrutinizes the
work of various authors mentioned below:

Kenneth L. Port1, argues, International substantive trademark law

V.K. Ahuja2, makes a relative investigation of the acceptance given to three

According to Bently and Sherman3, the protective function counteracts the

possible advantages trade mark proprietors would obtain over other traders if they had
an indistinctive, descriptive or generic sign registered as their mark.

Charlene Elliott,4correctly points out, that, while developments in intellectual

property have opened the door for trademarking colour alone or colour per se, it is
important to observe that colour codification is not a new phenomenon. This article
outlines the quest to metaphorically trademark purple in antiquity and to provide it
with clear "secondary meaning." It highlights how language, literature, and sumptuary
1
Port Kenneth L. “On Non-Traditional Trademarks ” (2011) Faculty Scholarship Paper, paper 235,
pp.23-29, at http://open.wmitchell.edu/facsh/235 accessed on 13-03-2019.
2
Ahuja, V.K.,.: Law Relating To Intellectual Property Rights , 2nd edn., (Nagpur: Lexis Nexis
Butterworths, 2013)
3
Bently, L., & Sherman, B., Intellectual Property Law, 3rd edn., (New York: Oxford University Press,
2009).
4
Charlene Elliott, Purple Pasts: Color Codification in the Ancient World , Law & Social Inquiry, Vol.
33, No. 1 (Winter, 2008), pp. 173-194 at http://www.jstor.org/stable/20108752 accessed on 31-12-
2019.

Page | 4
Abstract

law was deployed to infuse purple with the appropriate symbolism, and it links
contemporary debates to some of the historic moves to sequester colour.

David Vaver,5talks about shape, senses and sensation. He reviews recent

European trends relating to trademarks featuring shape, smell, sound and colour—
rights in shape and senses—and also attempts to introduce a right of publicity for
celebrities—rights in sensation. The tendency in these cases is to expand protection,
although in a less pronounced way than in the United States. A trend towards “the
more trademark rights, the merrier” is nevertheless evident. He makes some
observations on the desirability of that tendency as the paper proceeds.

6. RESEARCH METHODOLOGY

The present study has been carried out adopting analytical method to draw
conclusions and inferences. The work deals with the crucial aspects of unconventional
trademarks and its evolution as a registered identity. The legal position of protection
of unconventional trademarks from abusive registration and infringement in various
jurisdictions and dispute resolution mechanism are discussed by way of case laws in
the present work. The materials for the present study have been collected from
primary as well as secondary sources and it also relies on relevant statutory provisions
of relevant laws together with the judgments delivered by various courts of different
jurisdictions.

7. FRAMEWORK OF THE STUDY

In terms of layout, this work is a vivid and lucid presentation classified into
eight chapters. It has been pursued with an idea of comprehensive analysis comprising
the following:
5
David Vaver, Recent Trends in European Trademark Law: Of Shapes, Senses and Sensation, 95 The
Trademark Reporter, (2005).
6
Jeremy Blum and Amy Cullen, The Apple Store and Unconventional Trademarks: How Easy are
they to enforce? Journal of Intellectual Property and Practice, 2014, Volume 9, No. 12 at
http;//jiplp.oxfordjournals.org/, accessed on 2-02-2018.

Page | 5
Abstract

Chapter I begins with introductory remarks precisely introducing the topic, its
rationale, highlighting the framework of study, objectives of the study, hypothesis,
and the methodology adopted and outlining the brief remarks over the entire study.

Chapter II of this work explains basic tenets of trademark law, such as what
constitutes a trademark, what is meant by an unconventional trademark, what’s the
pattern of behaviour of these terms, relationship and co-existence, theoretical
foundations and special characteristics, and what standards are used to establish
infringement in the cases of confusion and trademark dilution. Further it also
endeavours to intrude into the principal characteristics of the doctrines of graphical
representation, functionality, distinctiveness and the need of a new legal order.

Chapter III of this work focuses on the International conventions affecting

unconventional trademarks.

Chapter IV of the work will focus on a relative and comparative view of

different countries with a special emphasis on United States, European Union and
other countries leading in Intellectual Property disputes and discussions. The notion of
jurisdiction along with enforcement issues that have created a caveat which needs to
be addressed have been dealt extensively with reference to conflicting jurisdictions
with the help of case laws and commentary of experts.

Chapter V of the work will be focussing on critical Indian reflections with

overarching issues of a functional definition of a trademark and debates on its outer
limits and specific categories.

Chapter VI of this work will be highlighting the concept and issues of free
competition, unconventional trademarks in the light of free competition, and
balancing an approach between unconventional trademarks and free competition.

Chapter VII of the work deals with some arrived generalizations in form of
some suggestions and concluding remarks worth mentioning.



Page | 6
CHAPTER-I

INTRODUCTION

1.1. IDENTIFICATION OF THE PROBLEM

Trademark law continues to be one of the most interesting branches of law,

not just in the realm of intellectual property law but in terms of general legal
developments as well. The rationale behind trademarks is multi-layered. A trademark
is economically efficient because it allows the consumer to identify the service or
good that he prefers and to buy that to the exclusion of others in the future.
Consequently, the maker of the preferred good is encouraged to maintain the
production of quality goods. Moreover, since good quality is associated with that
particular trademark, infringement claims exist when another undertaking uses a
similar mark. This prevents the latter from unjustly enriching from the labour and
reputation of the holder of the original mark, and protects consumer interests.

Traditionally, firms have registered words or certain logos/designs as

Page | 1
Introduction

part of the product itself. Such an amendment has necessitated the inclusion of a
graphical representation requirement.

The advent of untraditional marks has been rather belated in India. While
countries such as the United States recognized the use of unconventional marks in the
early 1970s itself, India has granted registration to Yahoo!’s yodel in the past decade.
An analysis of the laws in different countries to device a balanced approach is the
need of the hour to match the fast progressing technological developments and rights
of people who may be split into two categories, competitors and consumers. Recent
years have witnessed a dynamic evolution in the jurisprudence of trademark
protection laws on account of unprecedented technological progression which allowed
producers across the globe to participate in “extreme branding” aimed at making the
public at large recognize their product with the help of sound, packaging shape,
colour and smell, among others aids. Such other aids, that are not restricted to two
dimensional representations, constitute unconventional trademarks. Trademark laws,
which earlier only took cognizance of words, symbols, letters, devices and colour
combinations, now give similar treatment to unconventional trademarks.

The inclusion of unconventional trademarks raises various questions: Is their

1.2. IMPORTANCE OF STUDY

In today’s world, companies have to be creative and stand out from their
competitors to remain in a good market position. Companies must invest, besides a
word trademark, into so-called non-traditional trademarks, such as smell, sound and
colour marks applied, for example, on the products packaging to make it depart
significantly from the sector’s norms. Indeed, “in order to have a viable future, brands
will have to incorporate a brand platform that fully integrates the five senses”, where
“virtually any perceptible feature in the sensory world can be used to attract custom”.

Page | 2
Introduction

Moreover, marketing and branding methods are growing into a farfetched way as
companies start to surf on the social media movement of our information society.
Besides, traders also invest into the circulation of the brand image like Apple which
registered its cube-shaped glass store in New York.

However, traders need to be careful, as educating consumers to associate a

particular colour, smell, sound, etc. with a brand demand huge expenditures in
marketing and communication, where “cleverness alone does not ensure legal
protection”. Also, non-conventional trademarks pose a “marketing dilemma”, using
them in a sensory marketing could sound the “legal death knell” for the trademark
itself as it will not fulfil its source indicator function. New technologies brought the
possibility to exploit a different type of marks and globalization has stimulated the
utilization of these non-verbal signs because of their autonomy from linguistic
overtone. These modern marks are recurrently employed in the global market place
nowadays, but a worldwide valid trademark does not exist as registration is territory-
based. On the other hand, these “new trade mark forms” represent one of the most
important changes in trademark law and one significant concern for policy-makers is
to guarantee that (intellectual property) laws continue to match with technological
improvements.

1.3. OBJECTIVES OF THE STUDY

Page | 3
Introduction

4. Whether there exists symbiotic relationship between courts of different competing

jurisdictions with regard to the registration of unconventional trademarks?
5. Whether issues of Free Competition and Unconventional Trademarks can be
resolved together?
6. Whether the Trade Marks Act, 1999, Trade Mark Rules, 2002, and Draft Manual
for Trademark Practice and Procedure, 2009 and the Trade Mark Rules, 2017
provides sufficient machinery for regulation of unconventional trademarks in the
Indian terrain?

1.4. RESEARCH HYPOTHESIS

The hypothesis of the work rests on the presumption that adherence to

1.5. LITERATURE REVIEW

For the purpose of the literature review, present research work scrutinizes the
work of various authors mentioned below:

Kenneth L. Port1, argues, International substantive trademark law

harmonization has been an abject failure. This failure is manifested in the inconsistent
treatment of non-traditional trademarks. This article exposes the perceived broad
protection of non-traditional trademarks for the great deception that it is. By allegedly
protecting non-traditional trademarks, the United State renders true trademark
harmonization impossible. The United States itself and commentators go too far in
expressing this protection. In fact, non-traditional trademark protection is extremely
limited, very rare and almost never enforced. Yet, the United States requires trading
partners to protect non-traditional trademarks as if it is a mainstay of trademark
jurisprudence in the United States, when it is not. The World Intellectual Property
Organization (WIPO) and the international community are in the process of

1
Port Kenneth L. “On Non-Traditional Trademarks ” (2011) Faculty Scholarship Paper, paper 235,
pp.23-29, at http://open.wmitchell.edu/facsh/235 accessed on 13-03-2019.

Page | 4
Introduction

harmonizing to this fictitious standard. This will render real efforts at genuine
trademark harmonization even more difficult to attain.

V.K. Ahuja2, makes a relative investigation of the acceptance given to three

explicit non-traditional trade marks– sound, fragrance and shapes – in India, the
European Union and the United States of America. It is inferred that while America
has embraced a liberal methodology towards the enlistment of these imprints, the EU
has been more mindful in its acceptance of these imprints. India, as can be measured
from the Draft Manual for Trademark Practice and Procedure, a manual for the Trade
Marks Act, has just imported the EU approach. With regards to these various
methodologies, it is contended that in case untraditional imprints fulfil the essential
tests expected of any imprint for securing enlistment there is no reason why these
imprints ought not to get enlistment. The contention that they represent irrational
limitation on the accessibility of intellectual property in not viable as just those
properties which have depleted all avenues of intellectual property rights protection
can be said to be free. In addition, visual perceptibility ought not to be and isn't a sine
qua non for building brand relationship in the brains of the buyers. Non-traditional
brand names, being multi-tactile in nature, likewise take into account buyers who are
visually impaired and illiterate/ ignorant.

According to Bently and Sherman3, the protective function counteracts the

possible advantages trade mark proprietors would obtain over other traders if they had
an indistinctive, descriptive or generic sign registered as their mark.

Charlene Elliott,4correctly points out, that, while developments in intellectual

2
Ahuja, V.K.,.: Law Relating To Intellectual Property Rights , 2nd edn., (Nagpur: Lexis Nexis
Butterworths, 2013)
3
Bently, L., & Sherman, B., Intellectual Property Law, 3rd edn., (New York: Oxford University Press,
2009).
4
Charlene Elliott, Purple Pasts: Color Codification in the Ancient World , Law & Social Inquiry, Vol.
33, No. 1 (Winter, 2008), pp. 173-194 at http://www.jstor.org/stable/20108752 accessed on 31-12-
2019.

Page | 5
Introduction

law was deployed to infuse purple with the appropriate symbolism, and it links
contemporary debates to some of the historic moves to sequester colour.

David Vaver,5talks about shape, senses and sensation. He reviews recent

Jeremy Blum and Amy Cullen,6continues the debate following the judgment
of the Court of Justice of the European Union in Apple Inc, regarding the potential
registrability of a store front and layout as a trade mark, his article considers its
potential enforcement value, if registered. It reviews some of the main cases relating
to both the scope of protection afforded by such marks and the potential grounds of
infringement. The article notes that so-called unconventional marks are often used in
conjunction with word marks or other branding, and this will apply equally to
potentially infringing signs. The impact of this other branding on the assessment of
infringement is considered. The article concludes that, over and above the challenges
associated with the registrability of unconventional marks, there are hurdles to their
enforcement. Nonetheless, in certain contexts, obtaining this type of trade mark will
provide greater protection, for example where passing off may be difficult to
establish.

1.6. RESEARCH METHODOLOGY

The present study has been carried out adopting analytical method to draw
conclusions and inferences. The work deals with the crucial aspects of unconventional
trademarks and its evolution as a registered identity. The legal position of protection
of unconventional trademarks from abusive registration and infringement in various
5
David Vaver, Recent Trends in European Trademark Law: Of Shapes, Senses and Sensation, 95 The
Trademark Reporter, (2005).
6
Jeremy Blum and Amy Cullen, The Apple Store and Unconventional Trademarks: How Easy are
they to enforce? Journal of Intellectual Property and Practice, 2014, Volume 9, No. 12 at
http;//jiplp.oxfordjournals.org/, accessed on 2-02-2018.

Page | 6
Introduction

jurisdictions and dispute resolution mechanism are discussed by way of case laws in
the present work. The materials for the present study have been collected from
primary as well as secondary sources and it also relies on relevant statutory provisions
of relevant laws together with the judgments delivered by various courts of different
jurisdictions.

1.7. FRAMEWORK OF THE STUDY

In terms of layout, this work is a vivid and lucid presentation classified into
eight chapters. It has been pursued with an idea of comprehensive analysis comprising
the following:

Chapter III of this work focuses on the International conventions affecting

unconventional trademarks.

Chapter IV of the work will focus on a relative and comparative view of

Page | 7
Introduction

Chapter V of the work will be focussing on critical Indian reflections with

overarching issues of a functional definition of a trademark and debates on its outer
limits and specific categories.

Chapter VII of the work deals with some arrived generalizations in form of
some suggestions and concluding remarks worth mentioning.



Page | 8
CHAPTER-II

GENERAL PRINCIPLES OF TRADE MARKS AND THE

EVOLUTION OF UNCONVENTIONAL TRADE MARKS
2.1. THE IDIOSYNCRASY OF TRADEMARKS

Trademarks are signs and as such they can carry multiple meanings. The sign
‘Chiemsee’ may distinguish windsurfing products of one undertaking from those of
other undertakings; it is, however, at the same time the name of the biggest lake in
Germany. While ‘Barbie’ is the trademark for the most famous doll on the planet, it is
also a symbol for a blonde submissive and slightly dumb girl. Most of these meanings
are composed through social convention, i.e. they become accepted once a sufficient
amount of people understand these signs to ‘signify’ a certain meaning. Trademark
right holders can also use advertising to forge a distinctive meaning or to make a sign
highly commercially attractive.

The term idiosyncrasy describes the fact that trademarks can simultaneously
have multiple meanings, e.g. one or several commercial meanings, as well as a
cultural, social or political one. While it is justifiable to grant exclusive rights to one
specific trademark right holder over some of these meanings (i.e. primarily the
distinctive meaning), in the case of other meanings it may be too much of a burden to
exclude third parties, as they may need to use such meanings or as such exclusive
rights may impair their freedom of expression.1

Trademark law must thus make many precise differentiations between this
multitude of idiosyncratic meanings, e.g. allowing only for distinctive signs to be
registered, or allowing third parties to use trademarks in a descriptive sense
(Chiemsee for products stemming from the area of the Chiemsee other than
windsurfing products). Overall, trademark law does differentiate quite well between
the different commercial meanings of trademarks. However, sometimes it fails to
sufficiently differentiate between commercial and social, political, or cultural

1
The Institutional Repository of the University of Amsterdam available athttp://dare.uva.nl/
documents, accessed on 28-05-2019.

Page | 9
General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

meanings carried by one and the same sign.The chapter deals with the meaning of
trademark and unconventional trademarks along with theoretical foundations,
characteristics and justifications for its protection.

2.2. THE BASIS FOR TRADEMARK PROTECTION

Trade mark protection has progressed from the traditional orthodoxy, which
viewed the function of a trade mark as identifying the source or origin of the goods, to
a point, which now recognizes that the only rational basis for a trade mark's protection
is to be founded on the need to preserve the uniqueness of a trade mark.2This new
orthodoxy takes into account that the value of the modern day trade mark is to be
found in its selling power, which depends in large part upon the trade mark's
psychological hold upon the consuming public.3

The fear generated by trade mark protection, and the expansion of trade mark
protection against dilution is that it will create a monopoly. This fear may however be
dispelled rather painlessly if one bears in mind that trade mark protection does not
prohibit fair trading, and, at most, a limited monopoly is created that cannot genuinely
be said to affect legitimate competition4 : “All the rest of infinity is open to the
defendant.”5 Trade mark protection prevents second-handers from relying on a trade
mark's selling power in order to sell their own goods, which may dilute the well-
known trade mark by tarnishing its image in the consumer's eyes, thereby adversely
affecting the well-known trade mark's selling power.6

2.3. MEANING OF A TRADEMARK

As the famous American historian and educator Daniel J Boorstein quotes”

An image is simply not a trademark, a design, a slogan or an easily remembered
picture. It is a studiously crafted personality profile of an individual, institution

2
Frank I. Schecter, “The Rational Basis of Trademark Protection” (1927) 40 Harvard Law Review
813, 831.
3
Ibid
4
Ibid
5
Coca-Cola Co v Old Dominion Beverage Corp271 Fed. 600, 604 (C.C.A. 4th Cir, 1921) cited in
Schecter, “The Rational Basis Of Trademark Protection” (1927) 40 Harvard Law Review 813, 833.
6
Laugh It Off Promotions [2005] (2) SA 46 (SCA) at 54.

Page | 10
General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

corporation, product or service”7. So every mark denotes an individualistic persona

that has to be respected and the goodwill maintained. A trademark is (or should be) a
badge of origin. In other words it indicates the source or the trade origin of the goods
or services in respect of which it is used. A trademark may do other things as well, but
it must act as a badge of origin.8

A trademark is any sign that individualises the goods of a given enterprise and
distinguishes them from goods of its competitors. Marketing of a particular good or
service by the producer is much better off as by trademark because recognition
becomes easier and quality is assured. The owner of the mark can prevent the use of
similar or identical signs by competitors if such marks can lead to confusion.9 By this
way similar low quality substitutes will be prevented from replacing good quality
ones.

A trademark is a word or symbol or combination thereof used by manufacturer

or vendor in connection with a product or service. The distinctiveness is maintained as
well as sales are much smoother as people are able to identify with that particular
commodity or service.

Article 15 of TRIPS agreement defines a trademark as any sign, or any

combination of signs, capable of distinguishing the goods or services of one
undertaking from those of other undertakings, shall be capable of constituting a
trademark. Such signs, in particular words including personal names, letters,
numerals, figurative elements and combinations of colours as well as any combination
of such signs, shall be eligible for registration as trademarks. A mark can be further
defined as which includes a device, brand, heading, label, ticket, name, signature,
word, letter, numeral, shape of goods, packaging or combination of colours or any
combination thereof.10

Trademark is one of the areas of intellectual property and its purpose is to

protect the mark of the product or that of a service. Hence a trademark is defined as a

7
http://thinkexist.com/quotes/daniel_j._boorstin accessed on 22-01- 2018.
8
David Kitchin, David Llewelyn, et. al. (eds.) Kerly’s Law of Trademarks and Tradenames, pp.77-85,
(London: Sweet and Maxwell 2005, 44th edition).
9
Article 16 TRIPS
10
Section 2(m) Trade Marks Act,1999 (India)

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

mark capable of being represented graphically and which is capable of distinguishing

the goods and services of one person from those of others and may include shape of
11
goods, their packaging and combination of colours ,they include a device ,brand,
heading ,label ticket ,name ,signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination thereof. Registration of
trademark is not mandatory but in the present day scenario there is increasing
infringement and a lot of cases are challenged so it is advisable to register
Trademarks. There is also a need for trademarks to be globally protected. This is said
because most have regional or local name brands and most constantly push these
weak names while struggling to get global clearance.

A trademark can thus be called a device that gives distinctiveness and a mode
of identification to a particular product or service. An increasing number of countries
also allow for the registration of less traditional forms of trademarks such as single
colours, three dimensional signs (shapes of product packaging), audible signs
(sounds) or olfactory signs (smell).12Marks fall into distinct categories depending on
the type of product or service they represent. The level of protection given to each
mark is based on the classification, geographic location, and strength of the mark. As
long as they continue to be used in the trade these signs are prominent part of the
goodwill and rights in them cannot be subject to any maximum duration.13

It is said that a trademark is a valuable business asset and a marketing tool

which could help in financing of the business in a way. A brand is always a trademark
but a trademark is not always a brand. This is quoted because there is often confusion
between trademarks and brands, a brand is simply a name, logo or symbol whereas a
trademark is a distinctive sign or indicator of some kind in a business organisation,
because of these trademarks has a wider connotation than brands. A trademark may
also function to symbolize or guarantee the quality of goods which bear the
trademark. People are often induced to buy a particular product due to its distinctive
trademark that denotes quality. Trademark symbolises the value or goodwill

11
Supra note 10, See Section 2(zb)
12
Making a Mark: An Introduction to Trademarks for Small and Medium-sized Enterprises by WIPO
,2003 edition page no. 3
13
W. Cornish, D. Llewelyn, et.al., Intellectual Property: Patents, Copyright, Trademarks and Allied
Rights. (London: Sweet & Maxwell Limited, 7th edition, 2010) at p. 32.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

associated with the goods and which can be assessed by the extent to its perception in
the public mind with regards to its quality and specific source.

Trademarks are generally placed in any manner on the goods, their containers,
and displays or on tags or labels attached to the goods or service.14 The immense
economic value a successful trademark has is the primary reason for their protection
under the law. Trade mark owners by powerful advertising campaigns in collaboration
with licensees create a brand loyalty and establish product differentiation.

The use of a trademark benefits the merchant or manufacturer of a product as

well as consuming public. For the merchant or manufacturer, a trademark serves as an
advertising tool, facilitating repeat sales, and the successful marketing of new
products.15 Individual consumers rely on trademarks to distinguish among competing
products and to represent a certain level of quality that they have come to expect
when purchasing products or services with which a particular mark is used.16

In the initial rounds of GATT India emphasized more actually a few of the
perceived problems that an internationally harmonized trademark regime can pose to
developing countries. India’s opinion was that the “use of foreign trademarks in the
domestic market of the developing countries has several adverse implications for their
social and economic development. It is well recognized that foreign trademarks tend
to encourage the production and consumption of non-essential and luxury goods in
poorer societies, thereby distorting their socio-cultural objectives and values. There is
ample evidence to show that this tendency has led to mis-location of resources
towards the production and consumption of goods that are irrelevant to the basic
minimum needs of the society in poor developing countries”. India added that the use
of foreign trademarks entails the outflow of foreign exchange without a corresponding

14
Carl W Battle, Legal Forms for Everyone (5th edition, Allworth Communications Inc, 2006) p. 145
available at www.altacit.com, accessed on 16 December 2018.
15
Shell Oil Co. v. Commercial Petroleum Inc., 928 F.2d. 104, 107 (4th Cir. 1991) (with respect to the
trademark owners who widely license their marks, the court noted that the federal trademark law
affords a trademark holder the right to control the quality of the goods manufactured and sold under
its trademark).
16
Michael E. Epstein, Intellectual Property (New Delhi: Wolters Kluwer, Law and Bussiness, 5 th edn.
2008) at p.7.01.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

inflow of foreign technology.17 India’s position also purported the need for measures
ensuring that foreign trademarks perform their quality assurance function.
Additionally, it emphasized that criteria and requirements for the registration of
trademarks should be left to national law.18

2.4. VARIETY OF FUNCTIONS

For the purpose of describing the role of trademarks, two functions of

trademarks can be traced as: the identifier function and the communicator function.

The identifier function refers to the part of the trademark that informs
consumers about product characteristics and, thus, enables them to take a rational
decision about the product. It also allows trademark right holders to identify their
goods and services.

The communicator function features in advertising, where trademarks are used

as communicators, allowing advertisers to transport messages to consumers. Such
messages are often unrelated to the goods and services covered by the trademark and
are given extra credibility by trademarks as a symbol of trust.

It has been talked about that some imprints/marks, for example, cutler's
imprints were more to do with quality; nevertheless pottery marks utilized in Roman
civilization could be said to have worked as genuine commercial marks since they
recognized and distinguished certain items from others. Another illustration of earlier
imprints that were not viewed as true commercial marks are branding and/or
proprietorship marks which were forced as a need; or individual imprints which were
forced as a desire and thus, not trade marks in a modern sense.

These days, the functionality of commercial marks goes farther than those
uses. They surely have changed from being utilized for individual pride to pointers of
beginning, from pointers of value to promoting apparatuses.19 Hence, if we were to
pose question what do trade marks do? We expect answers, for example, create
17
Nuno Pires de Carvalho, The TRIPS Regime of Trademarks and Designs (Netherlands: Kluwer Law
International 5th edn. 2006) at page no.210.
18
Ibid.
19
T D Drescher,”The Transformation and Evolution of Trademarks: from Signals to Symbols to
Myth˜ (1992) Trademark Reporter 301, 325.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

peculiarity and in this manner acknowledgment of the item, demonstrate the

root/origin source, give data/information about the item, invigorate the craving to
purchase, symbolize guarantee, and give monopoly power in a market.

Nonetheless, a potential imprint might be denied enrollment in the event that it

doesn't work as a commercial mark. Undoubtedly, not every imprint that is perceived
or connected with a business is fundamentally a registrable commercial mark. As
stated, an imprint needs to work as a trade mark. The inquiry is: do non-traditional
marks work as trade marks? Or on the other hand, they just act as a marketing tool?

It is perceived that until the industrial revolution there was a two-fold purpose:
one, ensuring the shopper (protection against deceptive use) and the other securing the
manufacturer. Nevertheless, these days there is a third function: an economic function
which is a marketing tool, an asset. A few scholastics allude to three fundamental
purposes of imprints: origin, quality, and asset. In this work we will allude to two:
origin and quality as one function and the second, an economic function. Now we turn
to these.

2.4.1. Quality-Origin Function, An Extended Information Function?

Most importantly, buyers approach items with a specific degree of

obliviousness. Most of customers purchase product/services that they can genuinely
assess at first hand. In this manner, the item being referred to is audited by buyers. It
is then that commercial marks become a familiar means for distinguishing for that
specific customer.20Surely, after we recognize a commercial mark, it has an impact on
us. Generally, buyers purchase, not just as an impulse of a physical trait of the item; it
is more than that. There is something different engaged with the experience of
purchasing a specific item; it could be memories of experience, word of mouth,
emotions towards an advertisement, cost and comfort zone, etc. In the event that we
are searching for quality, financial, fashion or economic wellbeing, commercial marks
produce such information and/or desire. Consequently, in this situation, trade marks
can be seen as fulfilling the informative purpose. They fulfill the capacity of
distinguishing the item, maybe for certain shoppers an origin function. Additionally,

20
S Carter, The Trouble with Trademark (1990) 99 Yale Law Journal 759, 770.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

as customers depend on their past experience, this invigorates, or not, further

purchases; maybe for certain customers a quality function.21These two functions give
affirmation and are undoubtedly fundamental ingredients of trade marks.
Additionally, with the origin function, commercial marks are advantageous to both of
them: customers and producers.

To act as a badge of origin should be taken in a broad perspective, implying

that it isn't just about the disclosure of the maker, where the item comes from (nation
as well as producer) yet in addition that it encourages the buyer to understand that
there is a difference between one specific item and another. This given capacity, a sort
of identification, permits customers to assess the item. Additionally, it gives
customers information about quality and accordingly, can be treated as a derivative
function. Drawing a line between quality function and origin function is possible but
not necessary, at least for customers, since they go inseparably.

A clear illustration of how origin and quality fit together can be found in the
following inquiry: does buyer purchase MR CLEAN, FEBREZE, CHARMIN,
PAMPERS, PRINGLES, OLD SPICE, and CLAIROL on the grounds that he realizes
that they come from a particular producer, PROCTER and GAMBLE? In the event
that he realizes that, for what reason does he need to purchase those items? As
clarified, marks are representatives. The shopper may purchase those items since he
sees the imprint as an emblem of esteem or an assurance of value. Nevertheless, what
might occur for the situation that he doesn't know about the manufacturer? Would he
still purchase the item as a result of its quality? As early as the eighteenth century,
Lord Westbury clarified that an imprint could be ensured even in situations where the
public didn't know about the maker yet utilized the connection with a trade source
simply as a sign of quality.22

There is no justification why protection should be given to commercial marks

dependent only on the origin function, if it doesn't demonstrate to customers anything
but a manufacturer. For what reason would they need to know an imprint and
distinguish it from another if they can't connect it with quality? It is contended that

21
F Schechter, The Rational Basis of Trademark Protection (1927) 40 Harvard Law Review 813, 824.
22
Hall v Barrows (1863) 4 De GJ & S 150, 157.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

according to the customer there is an automatic affiliation: mark equals quality. In

addition, to think that the reason to regulate marks depends only on protecting and
forestalling deception of general public on the source is unreasonable. It goes further.
It is accepted that the protection of the imprint in this origin-quality function is also to
safeguard and hold the custom.

These days, Trade Mark law doesn't safeguard customers in a direct way since
they are neither capable of declining enlistment of an imprint nor of bringing an
action against commercial mark encroachment. However, though customers can't
benefit directly, they actually can acquire some aberrant advantages. Remember that
customers are different and hence quality isn't to be taken in a real sense but as per the
shopper's view. What is implied by quality is that the item, which has affixed a
particular imprint, is the one that a specific shopper needs, the one that satisfies his
desires. Thus, quality is to be categorized what the customer needs from the item,
specifically: top notch quality, great value for cash, fashion, etc. Undoubtedly, in this
sense quality is subjective; it relies upon the individual buyer and it depends on his
satisfaction. Thus, in the customer's psyche a numerical equation could be utilized:
Mark = source = quality =guarantee of satisfaction.

The quest is therefore, is the essential purpose of commercial imprints to

recognize the origin of the item? Is it what is secured and that's it? Customers assume
that merchandise/administrations which present similar imprints come from a specific
source yet it doesn't imply that he must be comfortable with the origin as such. In the
public perception what is more significant and what is related with an imprint is the
item's quality (more than its origin).23 To strengthen the mathematical equation
referenced, explicitly the idea that source equals quality; we don't need to look further
than the possibility of commercial mark licensing. If source and quality were isolated,
licensing would be impossible since the imprint's proprietors would part with the
imprint. In this manner, a maker's reputation would be given to an individual/seller
permitting him/it to utilize it without the proprietor having authority over quality.
Regardless of whether licensing is acknowledged, it is on the grounds that even
though that the source isn't the equivalent, and there is an assurance of quality.

23
B Cutter, The Rational Basics of Trademark Protection; Control of Quality and Dilution - Estranged
Bedfellows? (1990) 24 Journal Marshall Law Rev 69.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

The significance of the quality function can likewise be approved by situations

where the courts have denied equitable relief if the proprietor changes the quality of
the item. Would it be the equivalent if the source is changed? Assume that the items
referenced before were not made any more by PROCTER and GAMBLE but by
UNILEVER keeping up a similar quality. Could the court deny relief? Legitimizing
around the basis of goodwill, the source-quality function of imprints replicate very
much what goodwill reflects: uprightness/integrity, financial trustworthiness/
economic honesty and productivity/efficiency.

The selling power is unmistakably the affiliation that is delivered in the

purchaser's psyche. It is so powerful that established commercial marks in one
product offering are moved to another product offering with a base exertion/minimum
effort; its standing/reputation goes with the imprint and hence, there isn't the necessity
for get-up.

The origin likewise alludes to the trustworthiness of the item that gives rights
and commitments to the maker. In any case, note that the quality function doesn't
supplant the source function yet is coordinated with it. Two points should be
emphasized regarding the origin-quality function not being essential to buyers. On
one hand, the imprint as opposed to the item is the thing that makes
inclination/preferential choice and henceforth, changes the normal role of commercial
marks. Sometimes commercial marks give a personality/identity to the customer, a
lifestyle that is transferred by the experience envelope that the imprint conveys e.g.
advertisements patronized by pop stars, models and sports ideals.24 In the cases of
imprints that are of a specific monetary classification, they give the buyer a legendary
status25e.g. ASTON MARTIN, POLO, CARTIER. On the other hand, instead of
being instructive/informative the imprint is persuasive.26 This is gained by mass
media promotional propaganda. A few scholastics accept this activity is
manipulative.27 In both cases though, the interest of the purchaser is centered not
simply around the particular quality of the imprint, but is based on a desire.

24
Supra note 23.
25
C W Grimes and G J Battersby, The Protection of Merchandising Properties (1979) 69 Trademark
Reporter 431, 432.
26
Brown, Advertising and the Public Interest: the Legal Protection of Trade Symbols (1948) 57 Yale
Law Journal 1165.
27
Supra note 13 at 43.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

At this stage, it is noticed that there are two sorts of imprint: one being what
the customer needs; the other kind of imprint which is the one that the customer
wants. The first, is the imprint that identifies the item (conventional trade marks) -
origin/quality function and, the latter, is an economic function in which advertizing,
branding and merchandising do play an important role. This 2nd function seems to be
essential for non-traditional imprints. In the following chapters of the research work it
will be clarified that non-traditional imprints are not perceived at first as commercial
marks, thus, advertizing is significant. Then, the way to promote non-traditional
imprints seems to make purchasers mindful of the imprint however in a
surprising/unusual manner - not identified with origin/quality but to make customers
to desire the characteristic (the trade mark) of the item.

One thing that was not discussed by Schechter and which adds to a significant
part in the capacity of commercial marks is culture. As referenced in past areas,
buyers make marks. It implies that due to customer's pressure, trade mark
development is directed by culture, language and history. Appropriately, it is correct
to imagine that current situation of the market has brought new sorts of commercial
marks.

2.4.2. Economic Function - Trademarks As Creature Of Commerce: From

Branding To Merchandising

In this subsection trade marks will be concentrated as to how makers amplify

the origin-quality function, urging shoppers to purchase their items. To deliver an
attractive item, producers use advertizing and sometimes psychological campaigns.
Advertisements cause purchasers to accept that a specific item would fulfill them.
Undoubtedly, the present adverts convince individuals. Accordingly, it is conceivable
to contend that commercial marks are marketing ads; nonetheless, is the trade mark
function to advertize rather than to inform? It is noticed how a commercial mark
which gives information becomes persuasive - a marketing technique. Indeed, there
are conditions in which commercial marks publicize items as a lifestyle; it makes a
character/personality.28 Buyers may purchase an item since it creates sentiments.

28
D Aaker, Brand Portfolio Strategy (Simon & Schuster, London 2004) p. 179.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

Consequently, buyers attempt to characterize themselves through the trade marked

item which vows to give them perhaps, power, fun or experience/adventure.29

In fact, today, makers are worried about making characters/identities for their
brands. Hence, commercial marks will in general be utilized as brand names rather
than simply for recognizing an item, seeking customer's attention. However, it doesn't
imply that commercial marks don't recognize the item any more. They actually serve
their conventional function but such identification is more centered on an image
function in the present market. Having said that, commercial marks have come to
represent not only a specific item but also represent awareness of different links
including politics, conduct, environmental obligation, and numerous others. It appears
then that purchasers mainly purchase a brand rather than a product.30

Having said that, it appears as though this issue is to be decided by the

customer - regardless of whether they see an item coming from or under the control of
the manufacturer. On one hand, shoppers may accept that the proprietor of the
commercial imprint or brand is involved somehow in the merchandised object. This
methodology was acknowledged in the Mirage Studios v Counter-Feat Clothing
(Turtles Ninjas)31where the respondent not having a permit to utilize the photos of the
turtles implied that there was deceptiveness (fundamental for an action of passing off
to succeed). Notwithstanding, such a approach is to be followed if the
misrepresentation of the license principle is accepted.

On the other hand, Laddie J in the Teletubbies case,32 refused to grant an

application for summary judgment for passing off in respect of shirts bearing pictures
of the Teletubbies, due to customers seeing simply the work of art bearing
delineations of the characters. The adjudicator didn't have any regard as to the source
of supply and thus, misrepresentation cannot be proved since there was no link.
Nonetheless, remember that these two cases were inspected/examined under the law
of passing off.

29
K Drawnbaugh, Brands in the Balance: Meeting the Challenges to Commercial Identity (Reuters,
London 2001) p. 231.
30
Ibid., p. 17.
31
Mirage Studios v Counter-Feat Clothing(Turtle Ninjas) [1991] FSR 145.
32
BBC Worldwide Ltd v Pally Screen Printing Ltd [1998] FSR 665.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

Looking at the two sides of the coin, on one side it is correct to recognize the
image creator’s right; to benefit from the reputation of his name/item and thus
denying those endeavoring to exploit the achievement of his creation. On the opposite
side of the coin, there is an expansion of a vast monopoly, or at least advancing such
conduct; it would secure the symbol due to its meaning not because of its function.
Henceforth, marketing rights may limit the utilization of the sign itself rather than its
utilization as a commercial mark. If so, then nobody would have a legitimate right to
use a sign.

Unmistakably it is a questionable theme since apparently shoppers everywhere

wouldn't mind where the picture/image is coming from. At the end of the day, they
appear to have an interest in the product due to fashion, status or other reasons.
Customers purchase the item since it is the thing that they need; they get it in view of
the importance of the picture. Henceforth, for this situation the shopper isn't the
immediate casualty/direct victim of perhaps a fake merchandise. In fact, it is dubious
that purchasers could be viewed as victims at all if they purchase the item as a result
of its image and not in light of the origin-quality function. It is worth remembering
that it is hard to legitimize protection where customers are not confounded/confused.
In spite of this, it is unjustifiable to exploit another person's business. It is then an
issue of who has the right to exploit it.

In general it is contended that Trade Mark law doesn't give an absolute and
exclusive control over an item as such gives control over the utilization of the
exchange mark association with an item/good. However, it is conceivable to contend
that commercial imprints can be viewed as a monopoly given to the producer and not
much of a benefit to customers. Nonetheless, the functionality of trade marks (not
Trade Mark law) has a twofold advantage; one to the customer and another to the
manufacturer, but why do people register?

It is significant now to turn into the motivation of commercial marks. Along

these lines, there is the need to inspect the purposes behind enrolling because at the
end, the purpose of this research work is to investigate the method/procedure while
enlisting non-traditional trade marks and so, the reason behind this process deserves
some account.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

2.5. HISTORICAL OVERVIEW OF TRADEMARKS WITH REFERENCE TO

UNCONVENTIONAL TRADEMARKS

The historical backdrop of trade marks is as old as the history of humankind. It

started with the start of the dissemination/circulation of products. The Roman
blacksmiths are accepted to be the first users of ID marks on their blades. In ancient
Greek and Rome, potters utilized 'potters imprints' to recognize the creator of the jars.
The 'merchants mark' appeared up in the tenth century especially to prove ownership
rights of missed merchandise because of shipwrecks and different calamities. The
craftsmen and traders used to fasten 'production imprints' in guilds to recognize their
merchandise from substandard quality products.

This assisted them with keeping up trust in the guilds and to make a move
against the producers of mediocre quality products for not fulfilling the guild’s
standards. The Parliament of England owes the credit to pass the 1stbrand name
enactment in 1266 expecting bakers to utilize a particular imprint for their bread.
France passed Manufacture and Goods Mark Act in 1857 and Britain passed
Merchandise Marks Act in 1862. The US Congress set up a federal brand name
system in 1870. Trade Marks Registration Act, 1875 allowed formal enlistment of
commercial marks at the UK Patent Office. The Act characterized trade mark as "a
gadget/device, or imprint, or name of an individual or firm imprinted in some specific
and particular way; or a written signature or duplicate of a written signature of an
individual or firm; or a distinguishable name or ticket." With the progression of time
various strategies for recognizable proof and qualification evolved.33 In present day
lawful sense, any imprint, gadget, brand, heading, name, ticket, name, signature,
word, letter, numeral, shape of products, bundling or any combination thereof would
now be able to be utilized as a brand name.34

Indeed, a trade mark is one of the most valuable assets35 of every well known
company. Although the original purpose of a trade mark is an indication of ownership

33
Lionel Bentley, Jennifer Davis, et.al. (ed s.), Trademarks a n d Brands: A n Interdisciplinary
Critique (Cambridge University Press, UK, 2008).
34
The Indian Trademark Act, 1999, section. 2(m).
35
L. Bently, B. Shreman, Intellectual Property law, 2nd edition, Oxford, Oxford University Press,
2004, p. 694.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

over a particular good or service,36 this purpose has extended to advertising, with
trademarks becoming indicators of the source of goods or services. 37 They serve as an
identity sign, both to consumers who purchase a good or service and to other
members of the society, signifying the style, status and preferences of a person who
chooses to buy this particular good or service. A Louis Vuitton handbag, sports shoes
with a Nike Swoosh or a Mini Cooper car can say a lot about their owners. This is
why trademarks have a unique power of immediately creating an association in
people’s minds between the label, its origin, and value and quality.38

Due to this power, and because competition in the market does not permit any
break and requires constant activity in traders’ race for consumer preferences, the
concept of a trade mark has expanded to include fields that were not originally
covered, such as shapes, sounds, colours, holograms, and even scents and tastes.
These types of trade mark are commonly known as non-traditional or non-
39
conventional trademarks. Technological development has enabled such marks to be
valid and protected, making the system of trade mark registration and enforcement
much more liberated. This is, no doubt, an encouraging trend for all traders who are
happy to make their production or services stand out, be original and recognisable.

The traditional and customary brand names, for example, plain words,
gadgets/devices, logos and designs have been utilized since long for recognizing
merchandise. After some time, different components other than words, logos, color
blends and graphic design have come to fill in as identifiers of the wellspring of
products/services, accordingly serving the purpose of brand names. These new

36
Supra note 3, p. 693.
37
Ibid
38
W. Cornish, D. Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights,
6th ed. London, Sweet & Maxwell, 2007, p. 603.
39
V.K. Ahuja, “Non-traditional Trade Marks: New Dimension of Trade Marks Law”,
E.I.P.R.(European Intellectual Property Review) 2010, 32(11), 575-581, 575.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

imprints/marks go beyond the conventional brand names in nature, attributes, scope

and financial possibilities. The digital and online media transformation brought
paradigm shift in the marketing methodologies. Unconventional trade marks are the
most striking branding strategy of the 21st century.40 The technical revaluation
convinced numerous organizations to explore different avenues regarding 'outrageous
branding' with the aid of color;41 sound;42 smell;43 fragrance of raspberries;44 touch,45
etc.

Shape, color, stitching pattern, and sound were being used by various
organizations for over 10 years to signify origin of the mark, although their legal
protection and enlistment were resulting advancement. For example, the coca cola
shape bottle, which was initially planned in 1915, got brand name enrollment just in
1960. Coco-cola's bottle shape of packing has accomplished famous status and in
itself it is the absolute most conspicuous brand on the planet.46 Color imprints were in
presence since 1830s. Tiffany maintains a color trade mark on its particular 'tiffany
blue' bundles - unique blue boxes for its adornments/jewelry. Tiffany blue is a shade
of light blue made by the organization for its own items from 1845. 47

Another illustration is pink color trade mark. From 1956, Owens Corning
Corporation's48insulation has been colored pink to give visual difference. Because of
this, the organization turned out to be so connected with its pink insulation item that it
enlisted the word mark PINK for its insulation. Although color combinations, had for
quite some time been protectable as brand name, it was distinctly in 1980s that the US

40
Lindstorm Martin, Brand Sense: Build Powerful Brands through Touch, Taste, Smell, Sight a n d
Sound (Kogan Page Publisher, 2005).
41
For e.g., pink colour for fiber insulations of Owens Corning.
42
Dhin chik dhin chik tune of ICICI is an example.
43
For e.g., floral scent of thread as found in In Re Celia Clarke, USPQ 2d 1238 (1990) (TTAB).
44
Myles Ltd. ’s Application (2003) ETMR 56.
45
Velvety surface of wine bottle of Diageo is an example.
46
B.M. Katherine, “Non-traditional Trademarks: Tips for the 21st Century” Brands in the Boardroom
37-39 (2011).
47
Tiffany’s Blue Book published this colour long back in 1845 with PMS number 1837 signifying
Tiffany’s year of foundation. They spent more than one century to establish colour alone as a
trademark. Tiffany blue reveals the story of creativity in selection of a non-traditional trademark
and more than 100 years dedication in the promotion of the colour mark to develop into a famous
brand icon. See, Michelle Gonzale, “So Let the Paint be Spread, We’re Painting the Soles Red” 15
(1) Wake Forest Journal of Business And Intellectual Property Law 52 (2014).
48
Owens Corning Corporation is rated as the world’s largest manufacturer of fiberglass and related
products.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

law perceived a solitary color as a brand name when Owens-Corning launched the
Think Ink campaign for its fiberglass building insulation. In the end through legal
49
settlement in 1985, pink color was held to be protectable as a brand name and the
US court decided that the organization reserved the option to restrict others from
utilizing 'pink tone' for insulation. 50

History likewise uncovers that even a stitching pattern can be a brand name.
From 1873 Levi Strauss and Co. reliably applied the precise sewing design
plan/stitching pattern or a protruding piece of fabric (protruding red tab) to pants/jeans
as brand names.51 Since 1924Metro-Goldwyn-Mayer Corporation (MGM) utilized
lion's thunder as sound imprint to report the start of film. It applied brand name
application to enroll the sound imprint in 1985.52 The NBC chimes got sound trade
mark enlistment way back in 1950. Intel utilizes its sound imprint as an audio
signature since 1994 and is enrolled in different nations worldwide and heard at
regular intervals somewhere on the planet. Brand name rights in an unconventional
imprint are being established through buyer acknowledgment.

2.6. SPECIAL CHARACTERISTICS OF UNCONVENTIONAL TRADEMARKS

The modern technology has produced products more to see, smell, touch taste
or hear in the physical world than people would otherwise get through their non-
augmented faculties. Nevertheless, these brand names are comparatively hard to be
enrolled because of legal oversights and absence of uniform practice. As examined
above brand name laws of a few jurisdictions include non-conventional brand names
as qualified sub-matter of security by not barring them from the meaning of brand
name. They include a full range of tactile recognition beyond typical visual signs.
These are marks dependent on appearance, shape, sound, smell, taste and surface.

49
Re Owens-Corning Fiberglas Corp, 774 F.2d 1116 (Fed. Cir. 1985).
50
The cartoon character of the Pink Panther is being used by Owens Corning as a visual
representation. According to the company, for years, it has used the colour pink and the Pink
Panther as a way to distinguish its insulation products from other companies. Also see, Jerome
Gilson and Anne Gilson LaLonde, “Cinnamon Buns, Marching Ducks And Cherry-Scented Racecar
Exhaust: Protecting Nontraditional Trademarks” 95 (4) TMR 773820 (2005.)
51
To promote the images of the acurate stitching design and the red tab, the company ran regular
advertising campaigns and it could establish consumer recognition in these marks.
52
USPTO registration no: 1395550.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

Without a doubt, they are imaginative manifestations. They may either be

visual signs, for example, color, shapes, moving pictures, multi dimensional images or
non-visible signs, for example, sounds, aromas, tastes and surfaces. Non-traditional
brand names are imaginative approaches to speak with customers the origin of
merchandise/administrations. It offers dynamic occasion to the merchants in the
worldwide market. These imprints bear a high capability of financial resources and
leave on shopper's more significant level of business impression with its novel smell
or touch. Variables to decide if these signs could be enrolled include: the business
impression of the imprint, the significant practices in the trade whether the sign is
peculiar in the specific field or is just a refinement of a typical element and or there
are any secondary functions of the sign. An imprint that didn't intrinsically as an
imprint on account of its tendency, proof of obtained peculiarity would be required.
For registration these imprints ought not to be functional, for instance,
practical/functional aromas if intrinsic in the item itself, for example, smell for
perfume, are not acknowledged for enlistment in numerous countries. As per the
'doctrine of functionality', regardless of whether a sign was utilized and might act as
an imprint, it probably won't be fit for recognizing as a public policy matter, if it was
basic to the utilization or purpose for the item or if it influenced its expense or
quality.53

2.7. ECONOMIC JUSTIFICATIONS OF UNCONVENTIONAL TRADEMARKS

Richard A. Posner and William M. Landes54 in their scholarly work proposed

a formal legal model describing the function of trademark as reducing consumer
search cost. As already studied they argued that information produced by trademark is
of two sorts. One is information that enables the consumer to identify the source of
goods through distinctive marks and the other sort of information produced by the
trademark is the information about the product itself.55 We find that the justification

53
Non Traditional Trademarks”, available at: http://www.inta.org/TrademarkBasics/FactSheets/
Pages/NontraditionalTrademarksFactSheet.aspx. (last visited on Feb. 24, 2018).
54
This model was formulated by Richard. A Posener and William M. Landes and is referred to as
Posener’s model in my study.See Jean Praniskas, “Trade Name Creation: Processes and Patterns”
J. Econ. 101 (1968); See alsoJacon Marschack, “Economics of Language”, 10 Behavioral Science
135 (1984).
55
Ibid

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

of smell marks revolves around Posner’s model. As provided by Posner’s model we

define the full price (α) of good “Y” as it money price (M) plus the search cost (S)
incurred by the buyer in obtaining information about the relevant attributes of Y:56

α = M + S (T; A &W)

α = full price of good ‘Y’

M = money price of good ‘Y’

S = search cost incurred by buyers in obtaining information of good ‘Y’T =

trademark of good ‘Y’

A = search cost (S) also depends on factors other than ‘T’, such as cost of
advertising, the technology available for producing information and the number of
competitors for good ‘Y’

W = index of availability of words and symbols, which can be used as

trademarks

The proposition provided by Posener’s model is very simple, if the full price
of good ‘Y’,i.e. α = 500, a producer with (search cost) S = 200 will sell its brand of
‘Y’ for 300, and a producer with (search cost) S = 100 will sell its brand of ‘Y’ for
400. It is pertinent to note at this juncture that Posener’s model ignores factor (A) and
assumes that factor (W) is always greater. In other words the greater the availability
of words and so on for the use as trademarks (the greater is ‘W’), the lower will tend
to be values of ‘S’ for a given value of trademark ‘T’ making the mark distinctive. It
is our argument that the market for words is getting congested. Accordingly if the
availability of words and so on for the use of trademarks is lower (the lower is ‘W’),
the greater will tend to be values of ‘S’ for a given value of trademark ‘T’. In other
words any decrease in the market for words would increase the search cost and will
make the mark non-distinctive and accordingly lack of distinctiveness would make
the mark incapable of identifying the good and recalling to a consumer the

56
Ibid

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

information which will lower his search costs and enable the producer to charge a
higher price. Furthermore the distinctive marks need more than mere traditional
television and print advertising to reach consumers. Our argument is also well
supported by the words of branding guru Martin Lindstorm who states that, “if
branding wishes to survive another century it will need to change track and more
communication by using mere words in an already overcrowded world simply won’t
do it”57. Lindstorm58 further argues for new track which would have brands go beyond
sight and sound to reach consumers through smell and taste.

Secondly it is our argument that smell marks increases the cost of duplication
and accordingly the incentive to free ride is much lesser when compared to other
standard marks, where the cost of imitation is minimal. Incentive to free ride in case
of standard marks depends on three factors:

 Profits generated by the marks of good Y [P(T)]

 Cost of duplication (D)
 Cost of Infringement (I)

If we write a firms incentive to free ride function ‘β’ as

β = P (T) – D – I

It is argued that every firm would have incentives to free ride on the profits
generated by the marks until the P (T) > (D + I); the moment P (T) < (D + I), there is
less incentives to free ride. In a given case where the cost of infringement is fixed, the
smell marks by the very nature increase the cost of duplication or imitation and
thereby ensure that marks produce information which identify the source and reduce
the search cost for the producer of the good (Y) and thus encourages expenditures on
quality. A firm’s incentive to invest resources (through advertising) in developing and
maintaining a strong mark depends on its ability to maintain consistent product
quality. In other words trademarks are valuable because they denote consistent

57
See, Martin Lindstorm, “BRAND Sense: Build Powerful brands through touch, taste, smell, sight
and sound” (Free Press: New York 2005).
58
His ideas come from a market research study that began with focus groups in 13 countries exploring
the role of the senses in creating brand loyalty to ten global and local brands. The study also
involves an online survey with 2000 people in United States and United Kingdom providing
information on sensory associations and purchase intent and more.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

quality, and a firm has an incentive to develop trademark only if it is able to maintain
consistent quality.59 It is our argument that non standard marks with specific regard to
smell marks will increase the cost of duplication and consequently help in preserving
the quality, which is the most important function of any mark.

2.8. RATIONALE FOR PROTECTION

The TRIPS Agreement explicitly acknowledges the enrolment of shape of

products, their packing, trade dress and blend of shadings/colors as brand names.
Despite the fact that imprints, for example, smells, sounds, taste, touch, 3D images
and so on are not unequivocally referenced in the definition clause, a literal exposition
of the section proposes that since the arrangement gives a comprehensive definition, it
is sufficiently wide to incorporate these non-traditional imprints inside its ambit. All
jurisdictions give comprehensive definition of brand name and as such there is no
legal denial to safeguard non-conventional brand name provided other legal
necessities are conformed to. Unconventional brand name performs four basic
functions: (i) identification of the source or the origin of the product; (ii)
interfaces/synthesizes the imprint, the item and the owner; (iii) quality assurance and
(iv) advertisement of the goods.60 It has more noteworthy potential than that of regular
brand names. They have most influence on customers in the new climate of
worldwide trade. Since the essential capacity of brand name is to distinguish the item,
the acknowledgment of non-customary brand names is significant particularly where
individuals in low literacy areas, can't perceive traditional imprints and ordinarily
recognize merchandise by their shapes, color, touch or smell. They have become
essentially significant for a part of society like the visually impaired and the
uneducated wherein individuals can't perceive the traditional trade marks.

The acknowledgment of non-traditional brand names could likewise be

legitimized taking into account the improvements in trading and business practices
and the expanding globalization of trade and industry. Numerous nations including
US and EU have perceived and allowed enrolment for several non-traditional brand
59
A firm with a valuable trademark would be reluctant to lower the quality of its brand because it
would suffer a capital loss on its investment in the trademark. SeeCarl Shapiro, “Premiums for High
Quality Products as Returns to Reputations”, Q.J. Econ. 659 98 (1983).
60
Kerly, Law of Trademarks and Trade Names (Sweet and Maxwell, South Asian edn., 2007).

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

names. Like traditional commercial marks, to an undertaking, non-traditional brand

names' assets are of extraordinary business value and a significant part of evolving
business strategy and intellectual property portfolio.61

In fact, the primary proposition of this postulation is to analyze, upon different

issues, whether non-traditional trade marks could ever act as true trade marks. If this
is so, then without a doubt they deserve protection under the regulatory mechanism in
legal terms. On the other hand, if non-conventional brand names don't acts as signs,
the inquiry is: can they still be protected?

There is a need to interfere into the abstract/subjective nature of these imprints

by investigating how non-traditional brand names are seen in the market. Generally
speaking, it can be contended that these imprints do conflict with the snags they meet
for example being viewed as brand names by customers.

However, attributable to the significance of modern brand names as attractive

images it is critical to inspect the impact of non-conventional brand names on
business and buyers. Hence, to conclude, regardless of what the future holds for non
customary imprints as brand names, there is consistently the chance of securing them
through alternative rights, i.e., passing off, unfair competition and even copyright.

If not all non-traditional imprint, do have a similar issue - functioning as trade

marks. By and large, conversations encompassing any traditional imprint would be
pertinent to compound/chemical senses since the equivalent or comparative issues do
emerge, specifically graphical portrayal, peculiarity and functionality. An underlying
assumption represents that color marks, three-dimensional shape imprints and even
sound imprints experience issues in being enlisted yet not as much as chemical sense
marks. The most successive explanation behind the refusal of substance faculties has
been that of graphical portrayal. Along these lines, the discussion about absence of
peculiarity and usefulness has been set aside. I do accept notwithstanding, that these
issues are as hard to defeat as the issue of graphical portrayal. An overall review,
particularly from manufacturers, favors registrability of non-traditional imprints.

61
See Graham Dutfield and Uma Suthersanes, Global Intellectual Property Law (Edward Elgar
Publishing Ltd., 2008).

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

However, it appears that chemical senses may not function as commercial marks at all
because of their abstract/subjective nature.

While evaluating smell and taste, the presence of chemical interactions is at

issue. Subsequently, to discuss chemical senses is challenging because of this subject
being inadequately perceived. Without a doubt, smell and taste are among the most
un-available tactile boosts to the methods of science. Nobody is sure regarding the
number of or what sort of essential compound/chemical faculties/senses there are. For
instance, the most regularly acknowledged smell sensations are: fruity, flowery, spicy,
resinous, burning, and putrid. For taste it would be: salt, sour, bitter, and sweet.

Added to this is the fact that our olfactory and taste stimulus depend on our
responses to specific chemicals. Besides, taste sensations vary contingent on
temperature. An illustration can be seen in the following example: sensitivity to
unpleasant/bitter tastes increases as temperature decreases; alternately, sensitivity to
sweet tastes increases as temperature increases. Adaptation also plays a crucial role.
The intensity of an odour appears to decrease the more we are exposed to it. In a
similar line, adaptation to the flavor of one substance may either enhance or decrease
our vibes of another taste. Remembering that numerous scents can be remembered,
they are hence charged with emotional and social content. To entangle matters, each
day we are confronted with a variety of smell and taste stimuli at the same time and
thus, the blend of these can deliver novel/unique outcomes that can't be portrayed as
the sum of independent sensations.

It is indeed impossible to try to create a sign that is objective which in nature

is subjective. However, observe the following: art work is very much subjective but
this subjectivity does not make the work any more or less artistic. The question is:
would the same apply to chemical senses? The subjectivity of a smell and/or taste will
make the sign more or less distinctive. This will result in a sign being barred from
registration ab-initio. Moreover, subjective marks are bound to be problematic when
assessing infringement. Therefore, because of the subjective nature of chemical
senses, I am concerned about their potential for protection under the trade mark
system.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

Without question, the faculties that overwhelm our lives are sight and hearing.
Nonetheless, makers have understood the business capability of scent and taste and
have begun to advance these. For instance, scratch and sniff have been utilized in
promoting/advertising for quite a long time. Surely, the market has evolved in light of
these conditions and now the commercialization of smell just as taste is place among
others.

It is notable that there exist certain events where buyers don't purchase an item
due to its primary function- that it acts as a badge of origin, but because of the
commodity, fashion and style related with it. Verifiably, in the area of smell,
promotion of perfumes and antiperspirants/deodorants induce new identities by
evoking fantasies.

Smell and taste have focused on the standard toiletries market but also has
created its presence in pharmaceuticals, food, and stationary are also used in
administrations/services as a part of their trade dress. In this manner, from being only
an essence of material culture they have ascended as a sign of social status. There is
an immense scope of items where chemical faculties have become crucial to
customers. All things considered, smell and taste are beginning to be utilized in items
to make them more attractive and worth purchasing. These reasons make compound
faculties more uncertain contender for signs as brand names. Also, whenever enrolled,
it will be hard for the proprietors to forestall the utilization of these signs by third
parties because they are used just as marketing tools and not as a commercial mark.

From this point of view, without a doubt the capacity of these signs is to sell
an item rather than to distinguish it. For example, the act of adding fragrance to items
and to some extent taste to eatable items may build their allure/appeal. As indicated
by advertisers, the smell has an immediate association with the brain while the other
senses just impart messages to the mind through intermediary synapses. The
circumstance is that shoppers by and large favor smelled goods due, not only to being
seen as more pleasant, but also to be seen as more effective and of better quality. This
last assertion give rise to a chemical sense mark being trapped in statutory clutches.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

It is worth noting however, that the reasoning for affording protection to these
new kinds of signs is apparent. Non-traditional trade marks are in fact good products
and accordingly are worthy of protection because of the investment of manufacturers
in construction of the image in market. Nonetheless, it can't be failed to remember that
the fundamental capacity of a commercial mark is to recognize the
merchandise/administrations of one business from those of another. Henceforth, what
must be assessed is whether the sign serves to pass on information with regard to the
origin of the item or, is only a product and thus not considered to be a trade mark.

The above mentioned discussion and the issues involved along with
complications contained makes unconventional trademarks a subject matter worthy to
be discussed in detail.

2.9. MEANING AND GARDEN VARIETY OF UNCONVENTIONAL

TRADEMARKS

Due to the recent development of our digital environment and the

diversification of brand marketing means, companies all over the world are actively
conducting their business by using new types of trademarks other than traditional
word marks or devices, and practically, such new trademarks are functioning as a
source identifier.

There are non-traditional trademarks which relate to all five senses. They
would contain any (i) visible signs such as colour, shapes, moving images, holograms
etc. or (ii) any non-visible signs such as smell, sounds, taste or textures. The Manual
(Draft) of Trademarks Practice and Procedure of Indian Trademark Registry, 2015
states that colour, sound, shape of goods, packaging and smell trademarks fall under
the category of unconventional trademarks.62

The level of protection countries afford to these marks varies among

jurisdictions. What is treated as a protectable mark in one country may not be given
protection in another country. From a global perspective, the following are the main
categories of non-traditional trademarks that can be registered.
62
Sr. No. 3.2.4 of Draft Manual, 2015 at 143, available at: http://www.ipindia.nic.in/tmr_new/
TMR_Manual/ TMR_DraftManual_11March2015.pdf (last visited on May 28, 2018).

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

2.9.1. Olfactory Marks

Scent or perfume or fragrance generally attracts and impress one and all. Since
human being can sense the fragrance or perfume which pleases and soothes them,
using fragrance or perfume could be a good idea to attract people. In the commercial
world where attracting consumer based on various reasons and measures is very
important, application of perfume or fragrance representing goods and services could
well get them near the consumer. Meanwhile, there is a requirement under the Trade
Mark law which states that the chosen mark should not essentially detail or describe
the nature, content or characteristic features of the goods or services that it
represents.63Descriptive Trade Marks are not considered as valid Trade Marks. A
mark which describes about the goods or services on which it is used are considered
descriptive marks. These marks provide some information or some indication about
the features or qualities of the mark. On the same lines if the fragrance is essentially
from the content of the product it could very well describe the product. Therefore,
applying the principle underling the descriptive Trade Mark, fragrance which
essentially makes out the product, its content and the function cannot be a valid Trade
Mark.

Scent is theoretically protectable as a trademark. Generally, smell marks are

applied on cleaning preparations, cosmetics and fabric softeners. For the first time,
recognition to the smell marks was given by the US courts64 wherein the application
for registering the written description of the smell of ‘a high impact, fresh floral
fragrance reminiscent of Plumeria blossoms’ for sewing thread and embroidery yarn
was accepted as a graphical representation and granted trademark protection. Smell
was compared to colours in this case, though this is scientifically un-recommended.
The court differentiated between functional and non functional smells - smell not
being an inherent attribute of products from those products which have it as its
inherent attribute such as perfumes etc. In John Lewis of Hungerford Ltd's Trade
Mark Application the brand name was graphically spoken to by the portrayal that 'the
commercial mark involves the smell, fragrance or embodiment of cinnamon' in regard

63
David Vaver, Recent Trends In European Trademark Law: Of Shape, Senses and Sensation, 95,
Trademark Reporter. Pg. No: 85
64
In Re Celia Clarke, USPQ 2d 1238 (1990) (TTAB).

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

of furniture. The application was declined on the ground that the phrasing 'smell,
fragrance or substance of cinnamon' needed exactness/precision because of the level
of subjectivity it permitted in the determination of the question whether a fragrance
exemplified 'the smell, essence or embodiment of cinnamon' and the degree to which
contrasting impression of various people could similarly be viewed as bench marks
for the understanding of the phrasing being referred to.

In Venootschap Firma Senta Aromatic Marketing’s Application65a written

description of “smell of fresh cut grass” was accepted for tennis balls. “The scent of
raspberries” was accepted in Myles Ltd.’s Application66in respect of fuel and diesels.
In Britain, the Sumitomo Rubber Company successfully registered “a floral
fragrance/smell reminiscent of roses” as applied to tyres. The world’s leading
manufacturer of darts, Unicorn Products, obtained a trademark for “the strong smell
of bitter beer on the flight” of their darts. Smell mark can be afforded protection in
India if the applicant proves that: (i) the smell is used as a trademark; (ii) it is not an
inherent or natural characteristics of goods but is added by the applicant to identify its
goods; (c) the public regard the smell as a mark which identifies the applicant’s goods
and (d) the mark is represented graphically. There are certain practical issues with
respect to smell marks’ registration.

In Sieckmann v. Deutsches Patent-und markenamt67the applicant had

described the scent as “balsamically fruity with a slight hint of cinnamon”. The court
initially observed that a trademark may consist of a sign which is not in itself capable
of being perceived visually, provided that it can be represented graphically. Secondly,
a graphical representation must be clear, precise, self contained, easily accessible,
intelligible, durable and objective. The court ruled that in respect of an olfactory sign,
the requirements of graphical representability are not satisfied by a chemical formula,
by a description in written words. Chemical formula depicting the scent does not
represent the odour of a substance, since it is not sufficiently intelligible, clear and
precise. Moreover, a formula does not represent the odour, but the substance itself. A
deposit of an odour sample does not constitute a graphic representation. Odour

65
(1999) E.T.M.R 429 OHIM BoA R 156/1998/2.
66
Myles Ltd. ’s Application (2003) ETMR 56.
67
C-273/00, 2002 E.C.R. I-1173.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

samples are not sufficiently stable and durable. Smell gets influenced by temperature,
dampness and wind conditions. It can get fortified or debilitated. The perceptibility is
one more factor in the determination of smell and accordingly, physical, mental
capacities, person's sensitivity and wellbeing have an essential role. The issue may
emerge more so than with sound imprints, in depicting the imprint graphically.
Numerous items have added fragrances, as in the case of perfumes, beautifying
agents/cosmetics, texture/fabric conditioners, cleansers and so on, to make the item
more sweet-smelling or impactful. Potential buyers are probably not going to think
about these aromas as a sign of the source of merchandise. Henceforth it is
uncomfortable to demonstrate that a specific smell shows the products of a specific
dealer. The courts have held that a smell mark doesn't fulfil the necessities of
graphical portrayal in the event that it is simply introduced as a substance recipe, by a
depiction in composed/written words, or by the deposit of the odour sample or by a
blend of those components.

2.9.2. Sound Marks

Sound trademarks are also referred to as aural marks/audio signature. The

sound of the famous Tarzan yell;68 merrie melodies theme song;69 the spoken letters
‘AT & T’;70 the sound ‘ooh it’s so good’;71 the melody ‘sweet Georgia Brown’72 are
famous examples of sound marks registered in US. In India, if sound marks can be
represented graphically they are not excluded from registration. Yahoo’s yodel
became the first sound mark to be granted by Indian Trade Marks Registry (2008)
followed by ICICI’s ‘dhin chik dhin chik (2011). US, Austria, Denmark, France,
Germany, Ireland, Italy, the Office for Harmonization in the Internal Market (OHIM),
Spain, Sweden, UK, Norway, Switzerland, Germany recognize sound marks. The test
is “whether other traders are likely, without improper motive, to wish to use the sound
in the ordinary course of their business.” The acceptability of a sound, like words or
other types of trademarks, depends upon whether the sound is or has become a
distinctive mark.

68
Registration no: 2210506, a yell consisting of a series of approximately ten sounds.
69
Registration no: 2473248, the mark consists of thirty musical notes.
70
Registration no: 1761724, the mark consists of the spoken letters ‘AT &T
71
Registration no: 200096.
72
Registration no: 1700895.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

A sound mark may consist of songs, strings of notes-with or without words,

jingles, well-known sounds which occur in nature, unusual sounds which occur in
nature or electronic sounds not occurring in nature. For instance, pieces of classical
music may be acceptable as trademark, prima facie. However, the examiners have to
see how more than a few bars of classical music can serve as a trademark. A mere
sequence of musical notes does not make it possible to determine the pitch or the
duration of the notes, which are essential parameters of the remedy sought to be
represented, and hence fail to meet the requirements of clear representation. Whole or
large sections of classical pieces are likely to be rejected on the ground that they are
not likely to be treated as a trademark. The acceptability of a sound mark depends
upon whether the sound is or has become a distinctive sign; that is whether the
average consumer will perceive the sound as a trademark showing an exclusive
association with a product. Similarly, a simple onomatopoeia cannot, by itself, satisfy
the requirement of graphical representation. If the sound sign is represented
graphically by a simple onomatopoeia, it is unclear whether the sign is the
onomatopoeia itself, as pronounced, or the actual sound or noise of which the
onomatopoeia is the phonetic imitation. Even where it is made clear that the sign is
the onomatopoeia as pronounced, it is likely to lack the required clarity or precision
not least because onomatopoeia may be perceived differently, depending on the
individual. The World Intellectual Property Organisation (WIPO) Standing
Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications (SCT) suggests “offices may require that the representation of sound
marks consist of a musical notation on a stave, a description of the sound constituting
the mark, or an analog or digital recording of that sound - or of any combination
thereof. Where electronic filing is available, an electronic file may be attached to the
application. However, for some jurisdictions, only a musical notation on a stave may
be considered to adequately represent the mark.”73

Sound mark will qualify for acceptance only with evidence of factual
distinctiveness. The examples are: very simple pieces of music consisting only of one
or two notes; songs commonly used as chimes; well-known popular music in respect

73
Report of the Standing Committee, on the law of Trademarks, Industrial Designs and Geographical
Indications, WIPO SCT/16/9 2007.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

of entertainment services, park services etc.; children’s nursery rhymes (especially in

respect of marks on goods/services aimed at children) and music strongly associated
with particular regions or countries for the type of goods/services originating from or
provided in that area. Where the mark consists of a non-distinctive sound but includes
other distinctive elements, such as a word, it may be considered as whole for the
purposes of registration. The registrar may require the applicant to provide such
further information about any music tendered for registration as the examiner may
need in order to determine whether the mark is distinctive or not. To be registerable,
the proposed sound must be capable of graphical representation. Most sounds are
capable of being represented graphically by visual notation, for example, musical
notation. Sound marks can be represented by musical notation and/or description of
the sound in words.74 The title of the piece of music alone may not satisfy the
requirement of graphical representation. The instrument on which the music is played
needs to be included if it forms part of the mark or if the sound emanates from a
musical instrument. Graphic/electronic measurement of the volume and character of
the sound needs to be given in the representation. Where the sound is partially
represented by visual notation, a clarifying description in words of the sound should
be included in the application. Onomatopoeic words, sonograms spectrograms may
also be accepted as graphical representations. The sound by goods during their use,
and which arises purely as a function of that use, may not serve as a good sound mark.
Sound mark also must be non-functional. The sound of a siren does not serve as a
trademark for a siren. On the other hand, if the applicant can prove that the sound,
although descriptive, has acquired ‘distinctiveness through use’, the application may
be considered. For instance, a toilet flushing sound for plumbing services, which has
acquired distinctiveness through use, may be granted registration.75

2.9.3. Tactile Marks

Sometime, we get the feelers of the goods or products generated out of touch
of the texture of the mark. Touch one among the various senses marks its presence

74
Martin Lindstorm, Brand Sense: Build Powerful Brands through Touch, Taste, Smell, Sight and
Sound, pp. 34, (Kogan Page Ltd., 2005).
75
Also see, Hui Huang, “Comparative Study of Law on Trademark Application and Opposition in
China and other Countries”, available at: http:// www.ipr2.org/storage/ Huang-EN932.doc (last
visited on Feb. 18, 2018).

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

and appeal in the business world though apparently Trade Marks. These marks are
also known as touch marks or texture marks which essentially give the feelers to the
consumer with reference to its existence and the goods or services it is representing.
Perhaps, the touch mark should be distinctive to the consumers; it must not be just a
decorative or ornamental element. It must be a beyond decoration and packaging of
the goods or services that it is representing and must possess the feature of regular
Trade Mark. However, feel marks which ignites the touch sense of human beings has
not been claimed by business man in the lines of other non-traditional Trade Mark and
therefore feel marks remain as less acclaimed or less claimed marks in the sphere of
non-traditional Trade Marks.

Tactile marks are also known as touch/texture/haptic marks. A distinctive

touch such as ‘velvety surface of a wine bottle’ or ‘feel of cotton’ is conceptually
protectable as a trademark to indicate the source of its origin. Touch marks are also
known as haptic marks owing its origin from Greek haptesthai, meaning ‘pertaining
to touch’. In 2006, the International Trademark Association adopted ‘a resolution
supporting the recognition and registration of touch marks’. In 1996, Louis Vuitton
Malletier sought US trademark protection for its ‘distinctive man-made textured
pattern utilized as a surface feature’ on its luxury luggage and leather products. The
Trade Marks Registry of the German Patent and Trade Mark Office in 2003 granted
trademark on the basis of an application filed in the name of Underberg AG for
several goods in classes 32 and 33. Kimberly-Clark has federal trademark registration
for ‘the configuration of the container used to dispense’ facial tissue. United States
Patent and Trademark Office (USPTO) also allowed Kimberly-Clark’s intent-to-use
application for its raised, alternating dot pattern on paper towels. Touchdown
marketing has a registered a trademark in the ‘pebble-grain texture’ and ‘soft-touch
feel’ of its basketball-shaped cologne dispenser and Fresh Inc. has a registered mark
on ‘cotton-textured paper’ that wraps its soap products. In 2006 American Wholesale
Wine & Spirits, Inc. Obtained trademark registration for a sensory, touch mark and
used with its Khvanchkara wine. The registration’s description of the mark is that of a
velvet textured covering on the surface of a bottle of wine.

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Transforming touch into protectable sensory branding is not an easy task. Like
other non traditional trademarks, tactile mark should not be functional. A cell phone
designed to get warmer in one’s pocket as it rings in order to gain the user’s attention
or an artificially sticky steering wheel which enhances its performance may not be
registrable. In the event that the touch is 'fundamental to the utilization and reason for
the article or which innately influences its expense or quality', at that point it won't
warrant a legitimate legal protection. Tactile imprint doesn't automatically act as a
brand name upon its first use. Artificial surfaces are not naturally qualified for brand
name protection. Rights over the tactile imprints are commonly asserted by the
established use over a stretch of time. There is a lack of perceived tactile imprints and
these are least common non-conventional commercial marks. Consequently, the legal
authority is scanty.

2.9.4. Colour Marks

The definitions of mark and trademark refer only to a combination of colours.

Hence, a combination of colours may prima facie be registrable. Combination of
colours or even a single colour in combination with a word or device is statutorily
registrable. Single colour is seldom used as the principal means of distinguishing the
trade source of the goods or services. However, they are capable of being used as
secondary trademark if the proprietor has used the mark distinctively to educate the
public that it is a trade mark. Regard must also be paid to the general public interest of
not unduly restricting the availability of colours for other traders.

A solitary will just in extraordinary conditions be capable of indicating the

origin a good or service. A solitary color might be registerable a commercial mark it
is very unusualand distinct in a trade and is perceived by merchants and customers
alike that it acts as a badge of origin for that class of products as held in Dyson Ltd’s
Trade Mark Application.76As held in Ty-Nant Spring Water Ltd.’sTrademark
Application,77 colours per se without any unusual or fanciful features would be
devoid of any distinctive character, since they are considered to be in the public
domain and form part of the store of signs available to all traders. Evidence filed to

76
2003 RPC 47.
77
(1999) ETMR 974.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

support a claim of factual distinctiveness colour must be very strong and persuasive. It
has to clearly demonstrate that the colour mark exclusively designates the applicant’s
goods or services to the relevant consumer. There is more likelihood of establishing
factual distinctiveness where the goods or services are restricted and the relevant
market is specific.

The US Supreme Court found in Qualitex Co. v. Jacobson Products Co.,78a

green-gold colour used on dry cleaning press pads registrable as a trademark where
the colour had acquired distinctiveness. According to the court, it is the ‘source-
distinguishing ability’ of a sign that permits it to serve as a trademark and not its
ontological status as colour, shape, fragrance, word or sign. In this case, green was
held to be ‘secondary’ colour, it was used in such a way that the brand was totally
identified with the green-gold colour. There was no functional implication. However,
even with acquired distinctiveness a colour may not succeed registration if the colour
is required generally in the trade. In a 2012 judgment Christian Louboutin’s red
colour used on the soles of Louboutin shoes was granted protection for its red color
trademark.

The registrability of colour mark depends on how the colours are presented
and what they are applied to. In Libertal79 the European Court of Justice (ECJ) held
that a mere sample of colour particularly on a paper is unlikely to be sufficiently
durable for the purposes of graphical representation. Designating a colour using an
internationally recognized identification code will constitute a graphical
representation, being precise and stable. If the colours are within a figurative
arrangement such as a circle or square, then as few as two colours could be accepted,
but if they are applied to the packaging of the product, they are less likely to be
recognized as a trademark. In such cases evidence of factual distinctiveness will be
required. One of the basic principles of colour trademark laws is that a functional
colour cannot be trademarked. In other words, if a company makes lawn mowers, no
protection can be granted for green as a functional colour in this case because green is
the colour of lawns.

78
514 U. S. 159 (1995).
79
C-104/01[2003] E.C.R. I-379.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

A single colour per se need not be considered as inherently distinctive. In

ReOwens-Corning Fiberglas, it was held that colour pink could be registered for the
fibrous glass residential insulation. In KWS Saat80an application for single colour
orange trademark in respect of seeds and treatment installations for seeds, consultancy
services and agricultural, horticultural and forestry products was rejected on the
ground of lack of distinctiveness. However, if a particular colour of packaging has
become distinctive in fact as indicating the goods of a particular trader, there must not
be any impediment in accepting the mark for registration. Several national trademark
offices including those in Germany, Sweden, UK, Norway etc. recognize the
registrability of single colour per se with proven secondary meaning or acquired
distinctiveness. If a colour is fanciful in relation to goods/services, it may be treated as
inherently distinctive and afford registration. In order to constitute a trademark, a
colour or combination of colours must be capable of distinguishing the goods or
services of one trader from those of other traders.81

According to the draft manual for Trademark Practice and Procedure of Indian
Trademark Registry, one means of signifying the trade mark significance of colours is
to use them as a livery, i.e., as a consistent colour scheme applied to a range of
products of the same general kind so as to designate the trade source. The use of such
liveries for buses, trains and vehicle service stations are good examples of such use in
relation to services. On the other hand, evidence that an applicant uses a wide range of
colour schemes in relation to goods or services of the same kind tends to point away
from the trade mark significance of any one such colour scheme.

Further, word marks constituted by names of colours, which consist solely of

names of single colour lack the required inherent distinctiveness unless it is unusual
or unlikely to be needed for use by competitors for the goods concerned. But fanciful
names such as ‘pea-green’ for travel services, or ‘red and white’ for cigarettes may
have inherent distinctiveness. Distinctiveness can be established through prior use.
There are also reasons of public interest to prevent the registration of single colour per

80
C-447/02, October 21, 2004, ECJ.
81
For the discussions on consumer protection aspects of trademarks, see Lisa P. Lukose, “Consumer
Protection vis-a-vis Trademark Law” 1(1) International Journal on Consumer Law a n d Practice
89-101 (2013).

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

se marks because the number of colours available is limited. According to the

international colour codes, the number of existing colours is 1,800. On the question of
secondary meaning, certain factors have to be considered for assessing whether a
secondary meaning has been acquired or not. The extent of third party usage and the
attention of the consumer should be directed towards the colour of the product in case
of any sale or advertisement of the product.

2.9.5. Shape Marks

The UK Trade Marks Act, 1994 and the Indian Trade Marks Act, 1999
specifically included the shapes within the definition of trade mark. Shapes with
significant functional features are unregistrable. The Indian Trade Marks Act 1999
specifically provides that an imprint will not be enlisted as a commercial mark if it
comprises solely of (a) the shape of products which results from the nature of the
merchandise themselves; or (b) the shape of merchandise which is important to
acquire a technical result; or (c) the shape which gives generous incentive/substantial
value to the products.

Inherent uniqueness of three-dimensional brand names which incorporates the

shapes of items has been sketched out throughout the years by the ECJ and OHIM and
Indian judicial system. In the US, the Lanham Act doesn't explicitly characterize
shape to be a brand name however present day practice has remembered shape and
design of an item in a 'trade dress'. Shape of the item can be a brand name in the event
that it has obtained peculiarity and isn't functional. In Bongrain's Tradmark
Application82 the court dismissed an application for three-dimensional shape of a
cheese in blossom like structure since the imprint was without any distinguishable
character. It likewise held that there is a public interest in safeguarding certain signs
for other merchants to use in relation to the equivalent or comparative products to
keep up opportunity of activity and competitive rivalry. Public's impression of a sign
is generally of foremost significance and general society isn't commonly acquainted
with the shapes conveying brand name signification. It is simpler to enrol an imprint
in the event that it is shown that a shape mark has indeed gained peculiarity through

82
[2004] EWCA Civ. 1690.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

use. In Coca-Cola Co. v. AG. Barr and Co,83it was contended that the shape of the
container was distinguishable and indicative of the connection to the company.

2.9.6. Taste or Gustatory marks

One among the senses of human being is that of taste sense which identifies
the flavor of the product. Taste or flavor marks are those marks which are identified
with specific taste or flavor. One can choose a particular taste or flavor as the Trade
Mark of his or her product provided that taste or colour has acquired distinctive
character in terms of having consumer association to have identified the same as a
distinct Trade Mark. Substantial use of the taste mark is essential before seeking
protection and registration.84 If it is a common taste or flavor which is available and
known in the market, the same cannot be claimed as a mark. The claimed flavor needs
to be unique and be very specific in its application and marketing. These flavors could
be sensed and the effect could be felt by the users and the consumers. In the western
countries such as US and Europe there is increasing demand for recognizing the taste
or flavor marks. However, in the eastern world these marks have not yet received the
attention of the businessman and the consumer. Flavor Trademarks cannot be
visualized or seen through eyes but could be experienced while using the products.
The requirement of visual representation a requirement of Trade Mark under the
classical Trade Mark law may not be possible to satisfy in case of taste marks. One
needs to liberally or innovatively interpret and implement the Trade Mark law to
project and get these marks as valid Trade Mark.85

Taste and gustatory trademarks are extremely unlikely to be held inherently

distinctive in any jurisdiction without strong prove of acquired distinctiveness. Unlike
sound and smell marks, taste imprints must be applied to products and not services.
WIPO SCT report expresses that the graphical portrayal prerequisite can be fulfilled
by utilizing a composed/written depiction of the taste and an indication that it
concerns a taste mark. Nonetheless, it needs to excel in the test of non-functionality.

83
1961 RPC 387.
84
David I. Brainbride, Smell, Sound, Clour and Shape Trade Marks: An Unhappy Filtration?, J.B.L,
2004, MAR, 219-246.
85
Ibid

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

The US appeal board decision In Re N.V. Organort86highlights this perspective. The

brand name application for 'an orange flavour' for pharmaceuticals for human use, in
particular, antidepressants in fast dissolving tablets and pills was denied enrollment
being not fit for commercial mark security. According to the board, "the flavour
would not be acting in the capacity of trade marks in any case." It was likewise held
that the candidate's taste would not function as brand name since there are various
other orange flavoured meds.

Thus, an orange flavour for antidepressants would not be distinct of N.V.

Organon's item. The board stated: "There are numerous oral drugs with an orange
taste, and by their inclination, taste marks are not innately/inherently particular." The
appeals board likewise noticed that flavour is a quality of the merchandise and not
their origin. As the brand name trials and appeals court pointed out, it is hard to
characterize how taste can go about as a brand name when shoppers only taste
merchandise after buy.

Enrolment of a flavour imprint will require a generous amount of the

connotation i.e. acquired distinctiveness uniqueness. OHIM boards of appeal
dismissed an application by Eli Lilly87for "the taste of artificial strawberry flavour" as
gustatory brand name for drug arrangements by expressing that "it is in any occasion
clear that such a taste can't recognize the drug arrangements/pharmaceutical
preparations of one endeavour from those of another." The court added: "Besides, the
taste is probably not going to be seen by buyers as a trademark; they are
unquestionably bound to expect that it is proposed to mask the terrible taste of the
item."

2.9.7. Holograms And Moving Images

Motion marks incorporate holograms, gesture, motion or moving picture

marks which can combine colors, sounds and aspects of product designs. They are the
result of multimedia innovation/technology. This classification of imprints enlistment
normally requires the utilization of an arrangement/sequence of pictures or drawings

86
79 U.S.P.Q. 2d (BNA) 16.39 (TTAB 2006).
87
Case R 120/2001-2.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

to portray how the brand name functions. A hologram mark speaks to an image
sequence used to play out the brand name purpose of recognizing the business
wellspring of products/administrations. A holographic mark has been utilized for
quite a long time as security device against forging/counterfeiting. In recent times
they are increasingly utilized as brand names however the graphical representation
necessity creates a complication for brand name owners. A segment of the
arrangement/sequence including the whole moving picture, for example, the first or
last frame could be given as long as the description of the imprint unmistakably
references the whole sequence. A solitary picture may not enough represent the
imprint, and it very well might be preferable to juxtapose several representative
frames, to give a better sense of the overall sequence.

Numerous motion marks have been enrolled by the USPTO including an

imprint "comprising of a pre-customized turning sequence of a plurality of high
intensity columns of light extended into the sky to locate a source at the base thereof"
for extreme focus search lights. Another enrolled mark comprises of "the stylized
words 'FREE BREATHER' which showed up in a fixed position on the right side of a
logo" for giving a information service regarding the matters of asthma and
sensitivities through online medium. A dandelion blossom was depicted fancifully on
the opposite side of the logo. The motion feature of the imprint was that the individual
seeds of the blossom's puff ball stage got scattered inferable from the breeze which
had an impact over the words. The application gave four diverse freezed frames of the
moving imprint. The various frames were taken at different points of the movement.
In specific jurisdictions, the movement of the Lamborghini car door has been given
protections as a motion imprint, because of the unique movement of the door as it is
opened or shut.

In EU, however Article 4 of Council Regulation, 1993 perceives any sign

which has the capacity to be represented in graphical terms as mark/imprint, the
Sieckmann criteria limits the extension for a wide understanding of the provision.
According to the decision of the case, graphical portrayal, by pictures/images, lines or
character, must be clear, exact/precise and durable. This definition leaves scope just
for simply structured holograms. Even holograms or moving pictures are not

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

explicitly included in India in the meaning of imprint or commercial mark.

Nonetheless, there appears no reason they may not be enlisted as commercial marks.
Century Fox Film Corporation's logo with floodlights following to and fro over the
sky is an enlisted brand name with USPTO. In US, the brand name manual expresses
that a hologram utilized in various forms does notacts as a trade mark in the absence
of evidence that purchasers would see it as a trade mark.

2.10. SOME REGISTERED AND RECOGNIZED UNCONVENTIONAL

TRADEMARKS

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2.11. CONCLUSION

The protection of trademarks has, historically, walked a fine balance.

Naturally, as a society, we want to protect trademarks so that transaction costs are
lowered as purchasers make a quick and easy purchasing decision. We see Tide, We
know Tide, We buy Tide. However, the protection of unconventional trademarks
upsets this fine balance. If we go too far in the protection we grant unwarranted
monopolies to companies to stifle the precise competition the law was meant to
encourage. Sometimes, we do not have to protect a trademark claimant to recognize
the savings in search costs. In fact, a debatable view is, that, non-traditional
trademarks are ornamental, at best, and, at worst, a horrible distraction from the larger
job of substantive harmonization so that the transactions costs might be lessened for
all companies around the world.

However, the United States requires potential trading partners to protect

unconventional trademarks or will not enter into bi-lateral trade agreements. America
has encouraged the World Intellectual Property Organization to conduct a massive
study on the protection of non-traditional marks. Based on this flawed study, some
countries are now contemplating amending their trademark laws to explicitly
recognize non-traditional trademarks.

This is a cause without an objective. People generally believe that America

routinely protects non-traditional trademarks. My initial data indicates that this is not
the case. Then, countries are attempting to harmonize to the standard of protecting
nonconventional trademarks thinking that is required in the United States when it is
not.

In the end, this provides an amazing distraction to the greater goal of

harmonizing trademark laws. Civil Law countries believe they are harmonizing to an
international standard of trademark law when that standard is a fiction created by the
United States (without malice). Instead of working on far more important goals that
have remained elusive for 120 years and without concern to harmonizing the
underlying theory of trademark protection, countries are focusing efforts on protecting
the motion of a Lamborghini door.

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General Principles of Trade Marks and the Evolution of Unconventional Trade Marks

My argument is that this is unfortunate. We should understand the distinctions

between the different systems and work to close that gap in a meaningful way.

By expanding traditional thinking and understanding what is possible in the

world of non-traditional marks, one can explore new and creative ideas of protection,
while at the same time being aware that elements such as product shapes, packaging,
colour and more may be protected by others and can be a source of liability for any
new product launch and at the same time it should be noted that no matter how many
countries protect the motion of a Lamborghini door opening, so without harmonizing
the underlying theory and without addressing real issues, real harmonization will
remain elusive.

Law of Trade Marks has witnessed unconventional trends and dynamics in the
recent past. Number of non-traditional and unconventional marks are being used or
proposed to be used in the market. Speaking the traditional cannons of Trade Mark
law these new and innovative marks do not fit into the formal definition of Trade
Mark law. However, their specialty lies in being unconventional and innovative.
These new marks tend to alter the traditional principles of Trade Mark law in their
letter and spirit. This chapter tried to outline these new, innovative and non-traditional
Trade Marks while emphasizing on special traits and how traditional Trade Mark law
takes call on while considering their protection.



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CHAPTER-V

UNCONVENTIONAL TRADE MARKS: AN INDIAN

PERSPECTIVE
5.1. INTRODUCTION

In the recent years, trade mark1 registries and courts have wrestled with
applications for outlines, shapes, fragrances, surfaces/textures, tastes, short
cartoons, single colors, body movements, specialized ideas, the position of
labels on items and Tarzan's holler as trade marks. This invasion of the non-
traditional is because of the abstract idea of the lawful meaning of a trade mark.
From one viewpoint, trade mark law has accepted an open-finished definition
that stresses the functional aspect, instead of the ontological status of a sign.
Any sign which accomplishes the informative work of a trade mark, by
recognizing products or administrations based on trade origin, can be enrolled
as one. Then again, trade mark enlistment frameworks have truly evolved
around paradigmatic subject matter: a customary or conventional exchange
mark that is visual and comprises of words, devices or a blend of the two.2 The
need to accommodate these clashing goals – the trade mark enrollment
framework is available to all classifications of signs and it's evidently 'business
as usual', yet the registration framework was planned in view of just words and
metaphorical devices– requires a cautious reevaluation of certain fundamental
suppositions supporting this region of intellectual property.

1
This chapter begins with an appeal to readers. Indian legislation and judicial
pronouncements still refer to ‘trade marks’ and not ‘trademarks’, which is American usage.
Since trade marks, merchandise marks, hall marks and other categories emerged as a result
of historically contingent processes, using ‘trade marks’ is a useful reminder of the
justificatory basis for such protection and still the official usage under Indian law.
2
For descriptions of conventional trade mark subject matter, See: R.H. Falconer, Big Future for
Nontraditional Marks, NAT. LAW. JL. C28 (1998) (“In the past, trade marks tended to fit a mould. They
were words or symbols that derived their strength from their relative degree of distinctiveness and the
amount of use they enjoyed in sales, advertising or both”); WIPO Secretariat ‘New Types of Marks’
(SCT/16/2) Sep. 1, 2006, at 3 (“The types of signs that are nowadays considered as being capable of
constituting a trade mark have expanded beyond words or figurative devices”).

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Unconventional Trade Marks: an Indian Perspective

In India, it may take many precedents and legislative amendments before all
aspects of unconventional trademarks are comprehensively codified as a benchmark
for times to come. While Indian jurisprudence on this subject is still evolving, an
interesting example of trademark protection recently accorded to the image of a
building in respect of services for providing food and drink and temporary
accommodation: namely, the famous Taj Mahal Palace Hotel is one to be reckoned
with. Although it may be argued that the trademark applied for is only the image of the
building taken from a particular point-of-view and thus, a device mark or, at best, the
trade dress, it surely does entail an unconventional nature of protection given the
architectural monument as its subject matter.

While such new kinds of imprints bring up fascinating conceptual issues,3 they
are of a more prompt and pragmatic to an Indian audience. It has been generally
revealed that the Indian trade mark registry recently enlisted a sound imprint for
Yahoo4, followed by another for Allianz Aktiengesellschaft,5 while the Delhi High
Court has reacted well to a trade mark transgression claim to secure the shape of Zippo
lighters.6

There is a customer driven interest in investigating these potential outcomes. It

was likewise an opportune moment to think about such marks on the grounds that the
Trade Mark Registry currently reexamined its Manual for Trade Mark Practice and
Procedure.7 A few areas of the Manual think about new sorts of imprints, since the

3
As a normative question, should we have such an open ended definition? Additionally, if
our frame of reference and doctrinal toolkit (including core concepts like trade mark
distinctiveness or likelihood of confusion analysis) have developed around words and
images, can these be effectively redeployed for new categories of marks? What sorts of
analogies will be drawn? And will we (perhaps unconsciously) draw on concepts borrowed
from copyright law or design law when dealing with musical sounds marks or three
dimensional/trade dress marks? Since these Intellectual Property regi mes pursue different
objectives, is such borrowing appropriate?
4
P. Manoj, Yahoo Awarded India’s First Sound Mark; Nokia in Queue LIVE MINT, Aug. 22, 2008; Yahoo!
Yodels into India’s Trade Mark Registry MANAGING INTELLECTUAL PROPERTY WEEKLY NEWS, Sep. 1, 2008.
5
Yet Another Sound Mark Granted, available at http://spicyipindia.blogspot.com/2009/ 07/yet-
another-sound-mark-granted.html.
6
Zippo, IA 7356/2006, (High Court of Delhi) (13 July 2006) (H.R. Malhotra, J). The decision
is of symbolic importance but very limited precedential value since it concerns an ex parte
ad interim injunction order, based on a prima facie case of infringement. There is no
detailed analysis applying the infringement test to shapes and the validity of the shape mark
was not challenged.
7
A draft of the Trade Marks Work Manual [hereinafter “Draft Manual”], Jan. 23, 2009,
available at http://ipindia.nic.in/tmr_new/default.htm.

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Unconventional Trade Marks: an Indian Perspective

Trade Marks Act of 19998 and the Trade Marks Rules of 20029 explicitly allude to non-
traditional subject matter, in contrast to the Trade and Merchandise Marks Act of
1958.10 Experience across jurisdictions proposes that the clans of signs prepared to
exploit this friendliness can be divided based on tangible discernment or sensory
perception. These can be separated into visible signs (3D imprints, colors, holograms,
slogans, titles of media works, motion or multimedia signs, position marks and
gestures) and non-visible signs (sounds both melodic/musical and non-melodic/non-
musical, olfactory imprints, tastes, surfaces/textures).11 The Manual fills in as a guide
for the examiners who apply the law, while guaranteeing transparency for the clients
of the registration framework.12 It is an evolving document and "will be updated from
time to time in the light of significant decisions and choices of courts involving
interpretations of the arrangements of the Act and Rules".13 The Manual is additionally
open to comparative legal developments, while it fills in as a kind of perspective point
for three terrains– lawful professionals and their customers, the trade mark registry
inspectors/examiners and the individuals who arbitrate on trade mark law, including
the Intellectual Property Appellate Board and the judiciary.14 This section of the
research work is basically routed to these three constituencies and reacts to issues
considered in the Draft Manual.

Prior to beginning with the investigation of procedural and substantive

guidelines, one fundamental point merits underlining. Regardless of the Draft Manual
being available for comparative legal influences, sounding a note of alert is suitable.
Given their mutual common law orientation, Indian trade mark enactment along with
judicial doctrine has generally observed the curves of British law.15

8
No. 47 of 1999. [Hereinafter “the Act of 1999”]. The Act came into effect on Sep. 15, 2003.
See, Gazette of India, Notification No. SO 1048(E) (15/09/2003).
9
See, Gazette of India Extraordinary Pt. II Sec. 3(i) GSR 114(E) (26/2/2002). [hereinafter “the
Rules”].
10
No. 43 of 1958. [hereinafter “the Act of 1958”].
11
WIPO Secretariat, supra note 2.
12
Draft Manual Ch. I, at 5.
13
ibid
14
For the importance of Registry practice, as reflected in the Manual, see, § 98 of the Act of
1999.
15
See, Sunder Parmanand Lalwani v. Caltex (India) Ltd., AIR 1969 Bom 24, 32 (High Court of
Bombay) (“Our Trade Marks law is based on the English Trade Marks law and the English Acts”);
Draft Manual Ch II, at 1.2 (“To a large extent the practice of the Registry in India broadly
corresponds with the practice prevailing in the UK”).

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Unconventional Trade Marks: an Indian Perspective

Nevertheless, with the Trade Marks Act of 1994, British Law has started an
irreversible float away from its customary law roots and turns out to be increasing
European, with various civil law ideas and interpretative strategies notifying the
improvement regarding substantive trade mark law.16 Enlisted exchange mark law in
England today appears to be unique and different from the pre-1994 law, while there is
ostensibly more prominent doctrinal coherence between Indian Acts of 1958 and 1999.
Other common-based law purviews have seen this extending hole too, while re-
stressing the significance of neighborhood conditions and necessities. The South
African Supreme Court of Appeal has noticed that:17

The British Trade Marks Act 1994 (Ch.26) needed to adjust to the [European]
Directive and its explanation by the [European Court of Justice (ECJ)] binds the
English courts. This doesn't imply that we will undoubtedly follow these authorities…
[The South African Act] must be deciphered and applied in the light of our law and
situations. Local strategy contemplations may vary from those relevant in Europe.

Subsequently despite the fact that the language of the Indian Act of 1999
frequently follows the UK's Trade Mark Act of 1994, Indian courts hold interpretative
opportunity and can hold the customary/common law approach of the Act of 1958 in
specific territories, or else depart from UK point of reference. Unexpectedly, the
custom-based law approach to deal with enrolled exchange marks is not, at this point a
possibility for UK courts – the home of the common law – since they are currently
limited by ECJ precedents. UK law is presently European law, though the very reason
for following it in the past was the common law association. In the pages that follow,
the critical understanding to recall is that Indian trade mark law need not be
'Europeanized' by stealth. The remainder of this part of the chapter is separated into

16
See, the manner in which the European Court of Justice bypassed the literal wording of the
legislation and adopted a teleological or purposive approach in Zino Davidoff SA v. Gofkid
Ltd., (C-292/00) [2003] 28 FSR 490 (European Court of Justice). More importantly, much
of European trade mark law has developed against the backdrop of European rules on the
free movement of goods in the common market, while these considerations do not apply
in the Indian context. For this history, see, I. Simon, How does Essential Function Drive
European Trade Mark Law?, 36 I.I.C. 401 (2005); F.K. Beier, The Development of Trade Mark
Law in the Last Twenty-Five Years 26, I.I.C. 769 (1995).
17
Triomed (Pty) Ltd v. Beecham Group Plc, [2003] F.S.R. 27 (Supreme Court of Appeal of South
Africa) (Harms, J.A.); See also, Nation Fittings v. Oystertec Plc and Anr., [2005] S.G.H.C. 225,
72 (High Court of Singapore). (“Although the [Singapore Act] is based on the UK 1994 Act and the
UK 1994 Act is, in turn, based on the European Directive, the interpretation of our Act is not (unlike
the 1994 UK Act) subject to the Directive”).

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Unconventional Trade Marks: an Indian Perspective

three further segments. Segment 1 considers overarching themes, zeroing on both

procedural issues raised by the enrollment of non-traditional imprints, as well as
principled objections in situations where the requirements of contenders or purchaser
interests are undermined by granting a trade mark. Segment 2 proceeds to think about
specific variations of the subject matter. Segment 3 winds up.

5.2. OVERARCHING ISSUES

As of now, the demand for non-traditional imprints is comparatively

moderate. With regard to filing statistics, the Registry's latest Annual Report still
just alludes to the traditional classifications of word, device/gadget, number, letter
and letter and numeral.18 However interest in such marks is gathering movement
and this surely holds a ground to be a future development territory, as makers and
promoters endeavor to stand apart from the group through creative
marketing/branding strategies.19 The "variety of signs which ventures look to create
as exchange marks and to use in the commercial center… shows that exchange
mark law is dependent upon a unique cycle from which new kinds of imprints may
continually advance".20 Accordingly, the World Intellectual Property Organization
(WIPO) has arranged a series of reports on non-customary imprints, in light of a
detailed review of the registration practices of nations.21 This development from
words and gadgets/devices to a clearly unlimited field of competitors is made
conceivable by the functional way in which a trade mark has been characterized.

18
Annual Report of the Office of the Controller General of Patents, Designs and Trade Marks 42
(2007-2008).
19
Two practitioner monographs highlight the growing importance of this area: See, T.P.
ARDEN PROTECTION OF NONTRADITIONAL MARKS (2000); S. SANDRI & S. RIZZO
NON- CONVENTIONAL TRADE MARKS AND COMMUNITY LAW (2003). The
International Trade Marks Association (INTA) has also prepared a number of recent reports
on non-traditional marks. See:http://www.inta.org/index.php?option= com_
content&task=view&id=1396&Itemid=231&getcontent=3; See also, A.I.P.P.I.
Summary Report: Q181: Conditions for Registration and Scope of Protection of Non-
Conventional Trade Marks (2004), available at https://www.aippi.org/
?sel=questions&sub=listingcommittees; Special report on Non Traditional Trade Marks
across 15 jurisdictions in World Trade Mark Review (Aug 2009).
20
WIPO Secretariat ‘New Types of Marks’ (SCT/16/2) Sep. 1, 2006, at 57.
21
WIPO Standing Committee on the Law of Trademarks, Industrial Designs and
Geographical Indications (SCT), Sessions 16-21. Documents at: http://www.wipo.int/
sct/en/meetings/.

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Unconventional Trade Marks: an Indian Perspective

5.2.1. A Functional Definition of a Trade Mark

National laws and global arrangements allude to an open-finished

meaning of a trade mark. Article 15(1) of TRIPS22 recognizes that any "sign,
or any mix of signs, fit for recognizing the merchandise or administrations of
one endeavor from those of different endeavors, will be equipped for
establishing a trade mark". US legal language takes a similar stand: A brand
name/trade mark is a designation which incorporates, "any word, name,
image/symbol, or gadget/device, or any blend thereof [which] serves to
recognize and distinguish [the mark proprietor's goods] from those produced or
sold by others and to show the wellspring/origins of the merchandise,
regardless of whether that source is obscure".23 As the US Supreme Court
noticed, since "people may use as a "symbol" or "device" nearly anything at all
that is equipped for conveying meaning, [the legal definition] read in a real
sense, isn't prohibitive".24 The ECJ has joined this tune on an amicable note in
Sieckmann25 and subsequent judicial pronouncements which likewise decipher
the comparable definition in Article 2 of the EU Trade Marks Directive.26
Every one of these arrangements highlights communicative ability that a
contender must have. The sign ought to have the capability to be distinctive; it
must act as a badge of origin and in this way recognize or differentiate the
products or administrations whereupon it is utilized from others on the
commercial center.27 Additionally, the law perceives that brand proprietors can

22
Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994,
Marrakesh; Agreement Establishing the World Trade Organization, Annex 1C (1994) 33
I.L.M. 1197.
23
15 USC § 1127 (Lanham Act § 45).
24
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995).
25
Sieckmann v. Deutsches Patent - und Markenamt, (C-273/00) [2003] E.T.M.R. 37, 43- 45
(European Court of Justice) [hereinafter “Sieckmann”].
26
First Council Directive 89/104/EEC of Dec. 21, 1988 to Approximate the Laws of the
Member States relating to Trade Marks OJ 1989 L40/1. The substantive provisions under
consideration remain unmodified in its successor, Directive 2008/95/EEC of Oct. 22, 2008
OJ 2008 L299/25.
27
Indian statutory language draws on U.K. law, which in turn is derived from E.U.
trademarks legislation. According to consistent E.C.J. case law, for a trade mark to possess
distinctive character, it must serve to identify the product in respect of which registration
is applied for as originating from a particular undertaking, and thus to distinguish that
product from those of other undertakings. See, Procter & Gamble v. OHIM, (C-473/01 P
and C-474/01 P) [2004] E.C.R. I5173, 32 (European Court of Justice). This ability to
distinguish based on origin is also referred to as the essential function of a trade mark.
See generally, Simon, supra note 16.

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Unconventional Trade Marks: an Indian Perspective

instruct the significant public that a sign is being utilized as a trade mark,
through the precept of gained peculiarity or auxiliary/secondary meaning.28 An
illustration would be the three-sided state of Toblerone chocolate, which has
gained trade mark noteworthiness over the long haul.29 This open finished way
to deal with topic is likewise obvious in the Act of 1999. An trade mark is
characterized in section 2(1)(zb) as follows:"'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 colors".

A 'mark' is additionally characterized in section 2(1)(m): "‘mark’

includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging or combination of colors or any combination thereof"
While this is a comprehensive definition, the Draft Manual explains that
specific classifications of imprints, for example, shapes, colors, sounds and
smells, "will require special consideration".30 This 'special consideration' can
be examined along the lines of certain comprehensive themes, cutting across
all variations of untraditional subject matter.31 These emerge because of two
general inquiries: (1) To what degree can the standards appropriate to
traditional trade marks accommodate non-traditional subject matter? (2) Where
loopholes exist in existing standards, what should be the structure and
substance of new supplementary rules? In the accompanying passages, I center
around two of these comprehensive subjects – one concerning procedure and
the other concerning the considerable avoidance of particular sorts of imprints.
At the underlying phases of applying for enrollment, procedural necessities

28
See, Proviso to § 9(1), Act of 1999. (“Provided that a trade mark shall not be refused registration
if before the date of application for registration it has acquired a distinctive character as a result
of the use made of it or is a well-known trade mark”). For acquired distinctiveness, see generally,
Mahendra & Mahendra Paper Mills Ltd v. Mahindra & Mahindra Ltd., (2002) 2 S.C.C. 147
(Supreme Court of India).
29
T. Helbling, Shapes as Trade Marks? The Struggle to Register Three-Dimensional Signs: A
Comparative Study of United Kingdom and Swiss Law, I.P.Q. 413, (1997). For litigation
concerning the imitation of the triangular shape, see, Toblerone/Harrods Gold Bar, Brussels
Court of Appeal, Jun. 2, 2004 (Unreported); Mars v. Kraft The Hague, Court of Appeal, Jan
3, 2008 (Unreported).
30
Draft Manual Ch II, at 3.1.
31
See generally, WIPO ‘Relation of Established Trade Mark Principles to New Types of Marks’
(SCT 17/3) Mar. 30, 2007.

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Unconventional Trade Marks: an Indian Perspective

represent a test for specific sorts of imprints. Moreover, as an issue of principle

or policy, would it be advisable for us to allow the enlistment of specific shapes,
colors or different signs which additionally play out a technical function? Here
we experience the peril of conflating rights over an imprint with rights over a
thing itself, or an industrially important property of a thing.

5.2.2. Graphical Representation and Procedural Requirements

The principal set of difficulties emerges when an application is made to

enlist a non-traditional subject matter. How can one enough flatten out and
speak to a sound, aroma or surface/texture utilizing words and drawings? An
enlistment based trade mark framework is defended on the premise that "it
empowers those occupied with trade, and the public in general, to find rapidly
and economically which signs outsiders have just asserted".32 The framework
thus relies upon the register containing precise data/information and this is the
place where the graphical portrayal necessity, to fix the sign as a kind of
reference point, becomes pertinent.33 The ECJ expounded upon the reasoning
for this necessity in Sieckmann, inferring that the graphical portrayal must be
"clear, precise, self contained, easily accessible, intelligible, durable and
objective" (Sieckmann criteria).34 As indicated by the ECJ these standards have
more extensive signification since they in clear sense "characterize the imprint
itself to decide the precise subject of the protection"; empower the registry
office to satisfy their bureaucratic commitment to analyze and process trade
marks; and furthermore empower contenders to easily distinguish protected
marks.35 Burrell and Handler allude to these as the definitional,
administrative/bureaucratic and informational functions of the trade mark
register.36 Courts have accordingly valued the requirement for clear and exact

32
R. Burrell ‘Trade Mark Bureaucracies’ in G. Dinwoodie and M. Janis (eds.) T RADE MARK
LAW AND THEORY: A HANDBOOK OF CONTEMPORARY RESEARCH 95-98
(Edward Elgar, Cheltenham, 2007). However, Burrell is critical of the claim that trade mark
registers accurately reflect the scope of the registered rights; registers often provide
ambiguous information.
33
Graphical representation is an essential element of the definition of a trade mark in §
2(1)(zb) and specifically defined in Rule 2(1)(k) to mean “the representation of a trade mark
for goods or services in paper form”. Presumably this will include e-filing forms as well.
34
Sieckmann, supra note 25, at 55
35
Ibid., at 48- 54
36
See, R. Burrell & M. Handler Making Sense of Trade Mark Law, I.P.Q. 388 (2003). However, the
authors are critical of the effectiveness of these functions.

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Unconventional Trade Marks: an Indian Perspective

trade mark enlistments with regards to the extent of exclusive rights: "The
structure in which a trade mark is enrolled is significant for various reasons.
The trade mark as enrolled is a fixed perspective by which encroachment is to
be judged. The enlisted mark must be considered in the exact structure in which
it is enrolled."37

Thus the Draft Manual assigns several pages to the graphical portrayal
necessities for color, sound, fragrance/scent, multi dimensional image or
hologram and shape marks.38 It determines that the graphical portrayal should
be independently adequate to distinguish the candidate's imprint; the portrayal
should stand instead of the imprint; and it should empower those investigating
the register to comprehend what the imprint is.39 In doing as such, it explicitly
maps on to UK enrollment practice and embraces the Sieckmann criteria.40

Nonetheless, the consequence of applying these measures in Sieckmann

was that while scent marks in theory can be enrolled, in practice enlistment is
improbable. In that case, Ralf Sieckmann applied to the German trade marks
registry to enlist an smell mark for different administrations/services. He
endeavored to represent the imprint by (i) demonstrating the name of the
chemical substance, methyl cinnamate; (ii) the underlying equation/structural
formula for that substance (C6H5-CH = CHCOOCH3); (iii) showing research
facilities where tests might be acquired; (iv) submitting a odour specimen in a
container; and (v) depicting the aroma in words as "balsamically fruity with a
slight hint of cinnamon". However every one of these strategies for portrayal
was tricky and problematic. For example, the ECJ decided that while the
depiction of "balsamically fruity with a slight hint of cinnamon" was effectively
available and understandable, it was not satisfactory, exact or objective (what
is a 'fruity' aroma and what amount of cinnamon does a 'hint' allude to?). Then
again, the compound recipe/chemical formula was objective however

37
L’Oreal SA v. Bellure, NV, [2006] E.W.H.C. 2355 (Ch) (European Court of Justice); [2007]
ETMR 1, 82 (Lewison J.)
38
See generally, Draft Manual Ch II, at 5.2.
39
Ibid., at 4.2.4.
40
Ibid., at 5.2.2.1 (“The representation must be clear, precise, self-contained, easily accessible,
intelligible, durable and objective”).

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Unconventional Trade Marks: an Indian Perspective

incomprehensible to laypersons and would expect reference to outside, expert

resources to decipher so it was not independent/self contained. It likewise
alluded to the substance, not the smell itself and was an indirect proxy rather
than an immediate portrayal. On closer investigation, the Sieckmann models
appear to have been created in view of conventional visual imprints, 41 and in
fulfilling a few rules a candidate may miss out on others. While visual marks,
for example, words or gadgets/devices can fulfill every one of the seven
criteria, for non-visual imprints this seems troublesome.42 In later choices, the
ECJ has relaxed the 'self-contained' prerequisite and acknowledged that
external clarificatory references might be important for more prominent
accuracy, however simply to a limited extent. In Libertel,43 where the court
defied an application for the unadulterated color orange for media
communications related products and enterprises, it concluded that only
repeating the color on a piece of paper was not adequately solid (because of
blurring over the long haul) and the composed portrayal may be loose (what
number of shades did 'orange' include?). Anyway an outside reference point,
for example, a globally perceived color code was admissible since such codes
were considered to be exact and stable. The UK Trade Marks Registry has
consequently acknowledged these color codes,44 alongside a composed
depiction of the shading (for example 'dark blue') as sufficient graphical
representation/portrayal. Nonetheless it indicates that while a level of
understanding, by means of external reference resources, might be admissible
there are limits to this process: 'It must be sensibly practicable for people
investigating the register, or perusing the Trade Mark Journal, to have the
option to pick up a comprehension from the graphical portrayal of what the
trade mark is. Portrayals which are exact/precise however difficult to decipher
without exorbitant expert gear or administrations, place too high a weight on

41
Burrell and Handler, supra note 36, at 399.
42
On this basis the Draft Manual follows the Sieckmann approach and disallows scent marks
on the basis of graphical representation.
43
Libertel Groep BV v. Benelux-Merkenbureau, (C-104/01) [2003] E.T.M.R. 63 (European Court
of Justice).
44
For further details on colour codes, see, UK TM Registry Practice Amendment Notice 2/06
(Apr. 12, 2006). (“There are a number of colour identification systems in existence e.g. Pantone®,
RAL and Focoltone®”).

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Unconventional Trade Marks: an Indian Perspective

the third parties and are probably going to be dismissed in light of the fact that
they are not "easily accessible".45

Subsequently outside references are allowed given they are easily

available and color codes are considered to fulfill this. Paradoxically, the Draft
Manual adopts an inquisitively phrased and uncertain methodology with
reference to single colors46 for representation. It recognizes the UK position
allowing color codes and then expresses that the 'law or practice in India doesn't
accommodate such translation'.47 It proceeds to allude to a situation where the
candidate utilized exceptionally specialized terminology to portray a color48
and in this manner bombed the graphical portrayal prerequisite, as the reason
for Indian law, without indicating what will fulfill graphical portrayal measures
for colors marks. Since the Manual additionally alludes to the
uniqueness/distinctiveness test for single shading marks in the same section,
one assumes these imprints can be spoken to yet there is a explanatory gap here
regarding how this ought to occur. An arising global agreement proposes that
single colors can be graphically spoken to through a combination of a sample
(for example colored sheet of paper), the common name of the color, reference
to a worldwide accepted color code and a written account including insights
about how the single color will be utilized on explicit merchandise or
administrations.49 It is presented that the Indian Registry ought to think about
this choice. There are various principled contentions against enlisting single
colors,50 yet a procedural prerequisite isn't the space to take on this conflict.

Going to sound marks/imprints, we again notice the ECJ's retreat from

an exact translation of the Sieckmann rules. In Shield Mark51 the court needed
to decide the sufficiency of graphical portrayal for both musical52 and non-

45
Ibid
46
Draft Manual Ch II, at 5.2.1.2.
47
Ibid
48
Ty Nant Spring Water Ltd’s Application, [2000] R.P.C. 55.
49
WIPO ‘Representation and Description of Non-Traditional Marks – Possible Areas of
Convergence’ (SCT 19/2) Apr. 28, 2008, at 23- 28.
50
Considered in § 3(i) below.
51
Shield Mark BV v. Joost Kist, (C-283/01) [2004] R.P.C. 315 (European Court of Justice)
[hereinafter “Shield Mark”].
52
The first nine notes of Beethoven’s popular composition Für Elise.

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Unconventional Trade Marks: an Indian Perspective

musical53 sound imprints. For melodic/musical sounds, it presumed that

adequately definite musical notation/melodic documentation would get the job
done – for example a stave divided into bars and showing, specifically, a clef,
melodic notes and rests whose structure shows the overall worth and, where
needed, accidentals and the entirety of this notation/documentation deciding
the pitch and span of the sounds.54 Because of the contention that not every
person can peruse melodic documentation and it may not be coherent, the court
proposed that even "if such a portrayal isn't promptly understandable, 55 the
reality remains that it very well might be effectively comprehensible" i.e.
immediately intelligible and easily intelligible are two different appproaches
Anyway for non-melodic sounds, a depiction in words ("the sound of a chicken
crowing") was inadequately exact while the onomatopoeia (for example "Cock-
a-doodle-doo") made a gap between the sign as enrolled and the genuine sound
of a chicken crowing.56 This offered ascend to a riddle – how were non-melodic
sounds to be spoken to graphically? Jurisdictions which have a more relaxed
portrayal prerequisite, for example, the US, have maintained a strategic
distance from this issue by basically requiring the deposit of a digital recording
of the sound, which is then accessible online on the trade mark register.57
Anyway given the language of 'graphical' portrayal, the EU's Office of
Harmonization for the Internal Market58 felt constrained to explore different
avenues regarding portraying sounds through complex graphical sonograms, 59
prior to surrendering that the increases in accuracy and objectivity were
counterbalanced by misfortunes in coherence.60 Interpreting these diagrams

53
The sound of a cock crowing.
54
Shield Mark, supra note 51, at 62
55
Ibid., at 63.
56
Ibid., at 60.
57
For an enjoyable overview of sound mark recordings in the US and several examples,
see: http://www.uspto.gov/go/kids/kidsound.html.
58
The Office for Harmonisation in the Internal Market (OHIM) is the body responsible for
registering European Community-wide trade mark and design rights.
59
In a decision concerning the registrability of MGM’s roaring lion. See, Metro Goldwyn- Mayer
(MGM) Lion Corp’s Application Case (R-781/1999-4) Aug. 25, 2003, OHIM 4th BoA, available
at: http://oami.europa.eu/legaldocs/boa/1999/EN/R0781_1999-4.pdf.
60
In a decision concerning the registrability of Tarzan’s yell. See, Edgar Rice Burroughs Inc
(TARZAN yell) (R 708/2006-4), Oct. 27, 2007, OHIM 4th BoA., available at: http://
oami.europa.eu/LegalDocs/BoA/2006/en/R0708_2006-4.pdf.

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Unconventional Trade Marks: an Indian Perspective

was the area of specialists and a complex as well as incomplete substitute for
the sound. The compromise finally adopted was a digital sound recording
deposition as well as graphical portrayal in some form.61

For enrollment in India, the Draft Manual appears to follow the lessons
of Shield Mark to the extent where detailed melodic notation is required,62 yet
the Manual doesn't separate among melodic and non-melodic sounds. How is
one to portray a non-melodic sound (for example a dog barking) utilizing
melodic documentation alone? The Yahoo enrollment in India is a useful
contextual investigation. In the event that the imprint is indistinguishable from
the one documented in the US,63 at that point it has both a verbal and a melodic
part. This expressed segment (a human voice warbling 'yahoo') can't be
satisfactorily spoken to by melodic notes alone. If it is spoken to as a composed
depiction, this prompts ambiguity. There are various methods of expressing
'Yahoo'. As far as I might be concerned, the most striking variant is
permanently connected with the tune 'Yahoo! Chaahe Koyi Mujhe Junglee
Kahe' from the Hindi film Junglee (1961).64 If 'Yahoo' can be shouted or
warbled with significant variety, then words are not a precise method by which
to speak to this sound imprint. A news report proposes that a digital specimen
of the 'Yahoo' sound was submitted alongside melodic documentation65 and
this is with regards to global patterns. An arising agreement – in a universe of
effortlessly digitized music and online data/information resources – proposes
that along with written depiction and melodic documentation, an electronic
deposition of the sound imprint66 is a cumulative representation package which
will fulfill all the Sieckmann standards, despite the fact that sound clips are
acoustic portrayals and not graphical ones.

61
See, Decision No Ex-05-3 of the President of OHIM of 10 October 2005 concerning
electronic filing of sound marks available at http://oami.europa.eu/en/office/aspects/
pdf/ex05-3.pdf.
62
Draft Manual Ch II, at 5.2.2 (“Accordingly, a trade mark may consist of a sound and represented by
a series of musical notes with or without words”).
63
US Serial No. 75807526 and Registration No. 2442140.
64
A potentially (copyright) infringing clip is at: http://www.youtube.com/
watch?v=1KBmYXt_v7w
65
P. Manoj, supra note 4.
66
WIPO Secretariat ‘Non-Traditional Marks – Key Learnings’ (SCT 18/2) Oct. 31, 2007, at
20-26.

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Unconventional Trade Marks: an Indian Perspective

The deposit of sound imprints in digital format also leads us to a more

generalized concern. To empower the trade mark register to play out its
informational purpose in a significant way, it should be easily and widely
available. How is the sound clip easily available in the event that it exists as a
CD-ROM in one of the five Indian trade mark registry workplaces?67 In the
midst of broad web utilization and allegiance to e-administration/ governance,
the Indian Trade Mark Registry is to be urged in its undertaking to set up a
freely searchable and available online Register of Trade Marks. As of now,
there is just a restricted, membership based alternative for searching.68 India is
a perceived worldwide pioneer in data innovation and the Indian Intellectual
Property Office produces significant amount of revenue through its enlistment
exercises, so funds ought not to be a snag. Recent years have seen a promise to
digitization69 and a restricted specimen of enlistments is as of now accessible
on the web.70 Significant commercial mark jurisdictions, for example, the US,
with its Trademark Electronic Search System (T.E.S.S.) 71 and the EU, with its
Community Trade Marks Online (CTM-ONLINE)72 have uninhibitedly
accessible online commercial mark registers, which guarantees that graphical
portrayal and the procedure of enlistment as a rule satisfy their public
information purpose.

Eventually, there are two concluding focal points with regards to

procedural prerequisites for non-customary imprints. The first of these worries
the hailing up of non-customary imprints on the application structure, with the
goal that unique principles can be applied. The Trade Marks Rules73 and
Manual74 are exceptionally evident that in specific cases, the application forms

67
Located in the cities of Mumbai, Delhi, Kolkata, Ahmedabad and Chennai.
68
See, https://www.ipindiaonline.gov.in/etmr/publicSearch/searchmain.aspx.
69
Annual Report (2007-2008), at 41 (“The registry is also in the process of switching over to Web
enabled services including e-filing”); Future Vision Statement at http://ipindia.nic.in/
tmr_new/default.htm.
70
See, Sample of Register of Trade Marks for Test Display at http://ipindia.nic.in/
tmr_new/default.htm.
71
http://tess2.uspto.gov/.
72
http://oami.europa.eu/ows/rw/pages/QPLUS/databases/searchCTM.en.do.
73
See, Rule 25(12): An application for the registration of a trade mark for goods or services
shall…(c) be considered as a three dimensional trade mark only if the application
contains a statement to that effect;
(d) be considered as a trade mark consisting of a combination of colours only if the
application contains a statement to that effect.
74
See, Draft Manual Ch II, at 5.2.2 (“applications for sound marks must clearly state that they are

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Unconventional Trade Marks: an Indian Perspective

must demonstrate the way where an imprint is non-traditional. A drawing of a

3D imprint ought not to be treated as a simple device/gadget mark at the time
of enrollment, since this permits a candidate to escape the stricter examination
available to shape marks, considered in Section 3 beneath. The significance of
this order on the application structure is noted in the OHIM Examiner's Manual:
"The arrangement of imprints (word, metaphorical/figurative and so on) serves
various proposes. Initially… it builds up the lawful prerequisite for the imprint
to be represented, furthermore it can help comprehend what the candidate is
trying to enlist and lastly it encourages research in our information
base/database".75

Notwithstanding, given the open finished meaning of a trade mark, not

all classifications of non regular imprints are referenced in the Rules, so this
prompts the subsequent point. Exchange Mark analysts are qualified for request
further and better specifics, including a written account of the trade mark being
applied for.76 While the written depiction necessity isn't obligatory,77 for
suspected non-traditional marks this should be generously used to demand extra
data/information so the sign being applied for can be characterized suitably.
The point of this segment of the chapter has been to highlight the significance
of process with regards to non-traditional imprints. The following area follows
with more considerable concerns.

5.2.3. Outer Limits: Can Anything Be A Trade Mark?

Since we have an open finished meaning of a trade mark, can a whole

building be a trade mark?78 Should a structure/building be a trade mark?
Obviously, new classifications of topic have hastened blended reactions. From

sound marks”).
75
OHIM Examiner’s Manual (Jun 2009), at 2.7.1.
76
For e.g., see, Rule 29(3)(ii): “Where, however, the Registrar considers that the reproduction of the
mark furnished by the applicants does not sufficiently show the particulars of the three dimensional
mark, he may call upon the applicant to furnish… a description by words of the mark”.
77
Rule 25(12): “An application for registration of a trade mark for goods or services shall:-
a) Explain with sufficient precision a description by words of the trade mark, if necessary to
determine the right of the applicant”.
78
See, The Rock and Roll Hall of Fame v. Gentile Productions, 134 F.3d 749 (1998) (Court of
Appeal (First Circuit)) (The claimant unsuccessfully argued that the design for the Rock
and Roll Hall of Fame and Museum in Cleveland, Ohio – effectively the building itself –
was a trade mark).

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one viewpoint trade mark law is required to stay up with purchaser perceptions.
In the event that buyers experience colors or shapes as signs of business source,
the basic 'commercial center correspondence' rationale of trade mark protection
requests that this is fused into the enrollment framework. Securing the
informative trustworthiness of commercial marks (including non-ordinary
ones) is expected to serve a dual purpose. By allowing absolute rights to the
mark, customer deception or disarray as to origin is forestalled, while at the
same time protecting genuine makers against a specific species of unjustifiable
competitive rivalry.79 Alternately, it is anything but difficult to perceive any
reason why conceding lawful syndications of conceivably limitless span 80 in
ordinary single colors or natural melodic/musical tunes to one maker would
create uneasiness. This prompts to the quest of outer limits.

One technique for barring subject-matter is to find out if purchasers are

probably going to see particular kinds of signs as exchange marks for example
regardless of whether they are really "capable of distinguishing" as needed by
section 2(1) (zb). Regardless of whether they do, there might be substantial
explanations behind keeping certain closes down the register. Here the
discussions twirl around the center idea of uniqueness/ distinctiveness and the
functionality prohibition, which is expressly founded on policy grounds.
Starting with peculiarity/distinctiveness, if a color or shape is seen just
momentarily, or comprehended to accomplish something else apart from
showing the item's trade origination, it won't fulfill the uniqueness necessity.
Illustrations incorporate a color utilized as a basic design or to make an item
more obvious, or if the trade dress is just defensive packaging for the item
inside. Since the spirit of a trade mark is to recognize by acting as badge of
origin, a sign which is "devoid of distinctive character" will fail the absolute
grounds contained in section 9 of the Act of 1999. Uniqueness/distinctiveness
as a limit for color marks is considered in more prominent detail in section 3(i)

79
This is the standard account in Anglo-American trademark jurisprudence. See generally,
W.R. CORNISH & D. LLEWELYN, INTELLECTUAL PROPERTY 586-587 (2003); J.T. MCCARTHY,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION Ch. 3 (2006).
80
Trade mark registrations can be renewed every 10 years and, unlike patent, copyright or
design protection the rights do not expire so long as registration persists. See, Sec. 25, Act
of 1999.

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Unconventional Trade Marks: an Indian Perspective

beneath. With regards to functionality, the focus shifts to the downstream

impacts of giving a solitary maker restrictive rights to the imprint being referred
to. The US Supreme Court sums up it hence: The functionality doctrine
forestalls trade mark law, which tries to advance competitive rivalry by
safeguarding a company's character, from rather hindering genuine competitive
rivalry by permitting a maker to control a valuable item trait. It is the territory
of patent law, not trade mark law, to support development by allowing creators
a monopoly over new item designs or functions temporarily… after which
contenders are allowed to utilize the advancement/innovation. If an item's
functional highlights could be utilized as commercial marks, notwithstanding,
a syndication over such highlights/features could be acquired regardless of
whether they qualify as patents and could be broadened always (in light of the
fact that brand names might be renewed in interminability).81

In the US, doctrine of functionality is a wide restriction and applies to

all classes of commercial marks. So if a specific item shape is picked on the
grounds that it creates a technical outcome, for example, the face plate of the
electric razor which delivered a closer shave in the ECJ's Philips case,82 the
outcome is an unwanted exclusivity in a specialized element prompting to an
anti-competitive advantage for a solitary maker. This obstruction to enlistment
applies to both specialized highlights and stylish highlights. It influences any
component that "is basic to the utilization or reason for the article or if it
influences the expense or nature of the article".83 The basic request is whether
the exclusive utilization of that sign would put contenders at a huge non-
reputation related weakness. Such signs are commonly barred from enrollment
whether or not they are unmistakable and indeed serve to demonstrate trade
inception/origin. Functionality for shapes is considered in more prominent
detail in section 3(ii) underneath. The thinking behind functionality too
proposes the requirement for a more thorough survey of the overlaps between

81
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162, 164-165 (1995).
82
Philips Electronics v. Remington Consumer Products, (C-299/99) [2002] E.T.M.R. 81 (European
Court of Justice).
83
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162, 165 (1995) (Supreme Court).

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Unconventional Trade Marks: an Indian Perspective

different classes of intellectual property and trade mark law.84 Here a few
significant inquiries remain unanswered. If Indian old style music composition
or raagas in the public space can be enlisted as sound imprints, in what capacity
will that influence the ‘restricted monopoly’ rationale of copyright law, which
assumes that social works should be unreservedly accessible where copyright
security didn't exist or has lapsed? Would it be a good idea for us to address
this worry by not permitting the enlistment of public space materials in the first
place, or by giving a limited extent of safeguard in the event that they are
enrolled, or by consolidating explicit protections into commercial mark law to
permit third party use in a non-befuddling way?

So far we have looked at discrete classifications of untraditional subject

matter– shapes, smells, sounds – yet since the meaning of a trade mark is
genuinely open finished, why stop there? Shouldn't something be said about
subjects/themes, ideas/concepts, combinations of elements and different
abstractions?85 A portion of these suggestions were investigated by various
decision makers in the Dyson suit, which strikingly shows the scope of methods
utilized by registries and courts in light of the inconvenience produced by
overbroad applications. As per the candidate, the imprint comprised "of a
transparent bin or assortment chamber framing part of the outer surface of a
vacuum cleaner as appeared in the portrayal". The graphical portrayal included
two photos of two separate models of vacuum cleaners with the externally
noticeable transparent collecting bin displayed. As a result, Dyson seemed, by
all accounts, to be asserting the idea of a transparent collecting bin on vacuum
cleaners as their commercial mark, reinforced by the way that they had
appreciated a span of patent empowered monopoly for those vacuum cleaners
in the commercial center. The UK hearing official86 protested on the premise
that since the sign imparted a functional message it is probably not going to act
as a badge of origin to the purchasers and therefore fell short of inherent

84
See, WIPO Secretariat ‘Trademarks and their Relation with Literary and Artistic Works’
(SCT/16/5) Sep. 1, 2006.
85
For examples, such as a ‘rugby themed restaurant’, See, UK TM Registry’s Practice
Amendment Notice PAN 7/07 on Signs at http://www.ipo.gov.uk/t-pan-707.htm.
86
Notetry Ltd’s Application (O29502), UK Trade Mark Registry, Jul. 23, 2002 (Allan James).

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Unconventional Trade Marks: an Indian Perspective

distinctiveness.87 A transparent bin was a component demonstrating (i) the

cleaner was sack less and (ii) the degree of vacuumed up substance, cautioning
the client when it was full. It is intriguing to take note of that the specialized
capacity of the bin identified with both an absence of peculiarity (it would be
viewed as a valuable component and not a commercial mark) and to
conceivable functionality concerns. Anyway under UK88 - and Indian89 –
enactment, functionality objections just apply to shape or 3D imprints and
Dyson was mindful so as to express that their application was not for a specific
shape. All things being equal, their application was pitched as a general item
feature over their collection of vacuum cleaners. On the issue of acquired
peculiarity, it was held that since the bins had not been advanced explicitly as
individual commercial marks, there was no earned/acquired uniqueness.
Consumers made free or transitory relationship between the item highlight and
the principal organization to market it, however that was insufficient for trade
mark purposes.

On Dyson's appeal, the High Court90 was unconvinced by the candidate's

contentions that an element which was interesting or striking was likewise
innately particular/inherently particular. While most "customers sampled spoke
of the striking and irregular appearance made by the transparent container and
of why they found that a valuable element",91 this was not adequate for
uniqueness. The signs in question were "descriptive of what the container or
the machine all in all, is or does. They don't utter a word about the machine's
business root/trade origin. The way that it is another kind of cleaner doesn't of
itself serve to connect it with a specific proprietor or maker".92 Anyway the
court was dubious about the presence of obtained uniqueness in a circumstance
where a patent monopoly for the item permitted Dyson to be the main makers
available with that highlight. Dyson asserted that during the time of the patent

87
In effect the functionality objection was converted into a distinctiveness objection.
88
As reflected in § 3(2) of the UK Trade Marks Act, 1994.
89
Sec. 9(3), Act of 1999.
90
Dyson Ltd v. Registrar of Trade Marks, [2003] E.W.H.C. 1062 (Ch) (Court of Justice of
the European Communities (Third Chamber)); [2003] E.T.M.R. 77 (Ch D) (Patten J.).
91
Ibid., at 37.
92
Ibid., at 33.

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Unconventional Trade Marks: an Indian Perspective

syndication, the public had come to connect the straightforward bin with their
organization. Would it be a good idea for them to be permitted to change over
a patent monopoly into trade mark rights in this manner? Thus, the court
alluded the issue to the ECJ, requesting an explanation about such affiliations
that would fulfill obtained/acquired peculiarity. Specifically did the transparent
containers must be effectively advanced as commercial marks during this
period or would an unclear or free relationship between highlight, item and
source do the trick?

In an astonishing turn of events, the Advocate General and ECJ 93

sidestepped the inquiries alluded on obtained peculiarity and decided to react
by first setting up and afterward destroying the case that Dyson's application
qualified as a 'sign'. As "an idea which appeals to the creative mind" and exists
in the psyche alone, this was not a sign and consequently couldn't be a
commercial mark. The ECJ proceeded to build up the test for isolating dynamic
ideas from more tangible signs by depending on whether the subject matter
could be seen by one of the five detects. Since as per the EU meaning of a trade
mark94 the application fell at literally the initial step on the road towards
enlistment, it couldn't be spared by gained peculiarity. At last, in parallel
Community Trade Mark procedures, it was concluded that the Dyson
application bombed the graphical portrayal necessity as the written depiction
and accompanying pictures didn't pass on an unmistakable and unambiguous
portrayal of the imprint.95 OHIM underlined the fact that countless changes and
mixes of transparent containers settled upon that one written depiction with the
two rather lonely accompanying photos. The graphical portrayal was deficient.

93
Dyson Ltd v Registrar of Trade Marks, (C-321/03) [2007] E.T.M.R. 34 (European Court of
Justice).
94
Article 2 of the Trade Marks Directive 89/104/EEC stated: “A trade mark may consist of any sign
capable of being represented graphically, particularly words, including personal names, designs,
letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of
distinguishing the goods or services of one undertaking from those of other undertakings” (Emphasis
added).
95
See, Dyson Ltd’s Application (R 655/2001-1) Jul. 2, 2002 (Clear Bin). In response, Dyson
unsuccessfully attempted to argue before OHIM that the application related to a series of
marks.

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Unconventional Trade Marks: an Indian Perspective

What is familiar to every one of these judgments is the anxiety that

floods through them, driven by the possibility of permitting the candidate to
pick up a conceivably perpetual legal monopoly in a utilitarian idea for
vacuuming innovation. The ECJ unequivocally expressed in Dyson that the
sign prerequisite was an important filter "to forestall the maltreatment of
commercial mark law by securing an unjust edge in the competition".96
Through this application, we see the necessities of a sign (or apparently 'mark'
under section 2(1) (m) in India), graphical portrayal, inalienable and gained
uniqueness and functionality all explored as techniques for barring troublesome
and taxing subject matter.

5.3. SPECIFIC CATEGORIES

Three dimensional or shape marks just as single or unadulterated colors

are moderately entrenched classifications of non-traditional themes of trade
mark law. They are possibly the most traditional of the untraditional and in the
course of recent many years, courts have recognized explicit concerns and
created precepts/doctrines in light of them, since the enrollment of such checks
marks the prospect for an unjust legal monopoly being allowed to a solitary
maker.

5.3.1. Color Marks

Aside from graphical portrayal troubles, there are various reasons why
a careful way to deal with the enlistment of such imprints is liked. To begin
with, the issue of whether an unadulterated color is too abstract to ever be a
sign or imprint – in a way like Dyson – has been recognized. In Libertel,97 the
ECJ expressed: "[An abstract] color per se can't be assumed to comprise a sign.
Ordinarily a color is a basic property of things. However it might be establish
as a sign. That relies upon the context wherein the color is utilized".

96
Dyson, supra note 93, at 34.
97
Libertel, supra note 43, at 27.

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Unconventional Trade Marks: an Indian Perspective

In Heidelberger,98 the court thought about the connected issue of a mix

of two unadulterated colors. Here it was "important to build up that in that
perspective in which they are utilized colors or mixes of colors which it is tried
to enroll indeed represent a sign".99 Subsequently, to fulfill graphical portrayal,
a simple assertion, for example, 'Blue and Red' would not be adequate. For an
application concerning "at least two colors, assigned in the abstract and without
contours, [these] must be systematically orchestrated by associating the colors
concerned in a predetermined and uniform way".100 Indeed, even single colors
are constantly applied to particular surfaces in specific ways and the application
structure ought to contain this constraint.101

Embracing this thinking, the Draft Manual additionally recommends

that except if "the colors are utilized… in an exceptional or specific pattern or
course of action, it is probably going to be more hard to demonstrate that in
such cases color would give uniqueness as an identification of the origination
of the product",102 for example the colors might be viewed as commonly
ornamental or a simple property of things, and not adequately distinguishable
as a commercial mark. An illustration of a reasonable type of depiction for a
brand name that comprises of a blend of shadings applied to a pharma pill
would be: “The commercial mark comprises of a maroon shading applied to
one portion of a tablet toward one side, and a gold shading applied to the next
half, as shown in the portrayal on the application.”

98
Heidelberger Bauchemie, (C-49/02) [2004] E.T.M.R. 99 (European Court of Justice).
99
Ibid., at 24
100
Ibid., at 33.
101
The Advocate General in Libertel was critical of the argument that an abstract colour is
specific enough to be a mark. See at, Libertel Groep BV v. Benelux- Merkenbureau, (C-
104/01) [2003] E.T.M.R. 41, 67-68 (Adv. Gen. Opinion), colour is always the attribute of
something else. Unlike the signs listed in Article 2 of the Directive, such as words, designs,
letters, numerals, the shape of goods or their packaging, a colour alone has no independent
existence… it would not be possible to determine precisely how the colour applied for will
appear on the goods in relation to which the application for registration is made. It could
equally well extend to the colouring of the whole of their external surface or their
packaging, or appear on only some of these, or (in the case of very distinct designs)
be surrounded by the generic colour of the goods.
102
Draft Manual Ch II, at 5.2.1.

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On the issue of peculiarity, a more disputable inquiry is whether colors

will in any manner be able to overcome the obstacle of the doctrine of inherent
distinctiveness. The fundamental enquiry here in question is about surveying
whether the applicable public experiencing the color 'cold' i.e. for the first time
ever, will comprehend it to accomplish a commercial mark purpose. For words
marks, customary models for this are whimsical or imagined words, for
example, 'XEROX' or 'KODAK'. For colors, we ought not to assume too
promptly that such signs work as commercial marks, since "there is a public
interest in not restricting the accessibility of colors for different
manufacturers".103 Thus, in adopting the UK/EU approach, the Draft Manual
appropriately embraces a vigilant position towards evaluating peculiarity for
colors.

As color per se as such isn't regularly utilized by manufacturers as a

method for brand recognition proof, in contrast to words or pictures, customers
are not prone to make suppositions about the origin of products and ventures
dependent on their color or the color of their packing. It follows accordingly
that a solitary color will just in extraordinary conditions be fit for meaning the
origin of an item or administration. Imprints comprising of a solitary color will
generally be obligated to protest under Section 9(1)(a) of the Act since they
intrinsically do not have the ability to recognize.

As indicated by the Draft Trademark Manual for Practice and Procedure,

single color imprints might be registrable as a commercial mark in the event
that it is extremely unordinary and distinct in a trade and is perceived by
manufacturers and buyers the same that it fills in as an identification of
inception for that class of merchandise and will just in exceptional conditions
be fit for signifying the beginning of an item or administration. The Draft
Manual further underlines that the assessment of single color marks requires
cautious examination, in light of the fact that there is a public interest in not
restricting the accessibility of colors for the other manufacturers. Each case
must be evaluated independently. Subsequently, the Indian Law requires

103
Ibid., at 5.2.1.2.

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Unconventional Trade Marks: an Indian Perspective

adducing of solid proof for showing factual uniqueness for registrability of

color marks in India.

In India, there exists an uncertainty as for the method to be followed

while petitioning for a solitary color mark. Despite the fact that the Draft
Manual recognizes the UK Practice of permitting marks comprising of color
alone to be graphically spoken to in the event that they are documented as a
composed/written depiction of the colors(s) (eg. dark blue) and are joined by
the pertinent code(s) from a universally acknowledged color identification
framework, the law or practice in India doesn't accommodate such
understanding.

In this state of affairs reference can be made to Cadbury's brand name –

PURPLE Color (#900189) wherein Cadbury had filed series for the underneath
mark, anyway the brand name application for the equivalent was not joined by
any color code.

Anyway this methodology leaves open the likelihood that in extraordinary

conditions, a solitary color may have inborn peculiarity for example the purchaser will
expect it is accomplishing the same purpose as done by a trade mark. Paradoxically,
the US position is that an unadulterated/pure color can never have innate/inherent
uniqueness; it can just acquire peculiarity after some time: According to the Supreme
Court:

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Unconventional Trade Marks: an Indian Perspective

An 'item's color is not normal for "whimsical," "arbitrary," or "suggestive"

words or designs, which consequently advise a consumer that they allude to a brand…
[Instead] over the long haul, clients may come to treat a specific color on an item or
its packing (say, a color that in context appears to be unusual, for example, pink on a
company's insulating material or red on the top of an enormous mechanical jolt) as
implying a brand name.104

Under the new trade marks system, the Indian Registry and the judiciary hold
the adaptability to embrace the US approach rather than the UK/EU one. Cautious idea
should be given to this decision and it is presented that the favored methodology is to
consistently request that candidates show acquired distinctiveness in the commercial
center prior to conceding enlistment. The Registry should solidly close the entryway to
the inherent distinctiveness probability. As far as acquired distinctiveness is, the
Manual is clear: "wherever the absolute rights to color is looked for, profound proof
should be important to conquer objection under Section 9(1)(a) of the Act." 105 Here
once more, it is critical to take note of that there must be proof that purchasers perceive
the color and use it as a trade mark for explicit merchandise and enterprises, not that
they just associate the color with the maker. I associate the color red with Eveready
batteries, yet in addition with Vodafone, Virgin and Coca Cola.106 Free
affiliations/loose associations are not adequate to fulfill peculiarity, regardless of how
long the utilization has been for.

Two further issues should be considered with an eye to future litigation. The
first is whether or not colors can likewise be viewed as functional. Take the case of the
color pink utilized on careful injury dressings, which closely looks like the shade of
human skin,107 or the utilization of fluorescent yellow on a safety clothing apparel. The
US has an overall regulation of functionality which incorporates color marks, yet - as
we find in the accompanying Section of this chapter- Indian enactment just expressly
alludes to functionality based complaints for shapes in section 9(3). It is available to
the IPAB or the courts to receive this overall regulation of usefulness – utilized
protectively to forestall the enrollment of imprints or revoke them – and apply it to a

104
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-163 (1995).
105
Draft Manual Ch II, at 5.2.1.3.
106
Not to mention associating it with sunsets, traffic lights and poorly researched student
essays.
107
In Re Ferris Corporation, 59 U.S.P.Q. 2d 1587 (T.T.A.B. 2000).

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Unconventional Trade Marks: an Indian Perspective

wide range of non customary imprints. One can envision functional colors and shapes
as well as functional fragrances108 or tastes109 and a wide functionality teaching is an
important corrective to a wide definition for a commercial mark. The subsequent issue
thinks about suit about whether one color encroaches another. Here deciphering the
extent of the rights barely under sections 28 and 29 will be significant, as will defenses
like illustrative reasonable/fair use under section 30 (2)(a).110 Certain colors, for
example, Green for ecological merchandise and enterprises, ought to never be
enlisted111 and regardless of whether they are, others should be permitted to keep
utilizing them expressively. Suit concerning the utilization of color marks has just
initiated. BP has disputed based on its enrollment for a specific shade of green for its
service stations,112 while Cadbury's has been associated with extensive litigation in
Australia over the utilization of purple for chocolates.113 When such marks are enrolled,
applying the standards of correlation/comparison developed for words or pictures under
encroachment arrangements must be adjusted for colors, shapes and sounds in a similar
fashion.

According to the Act, if an imprint is enlisted without constraint of color, it will

be considered enrolled for all colors. In spite of the fact that the law doesn't
unequivocally recognize protection of 'single colors' denotes, the Indian courts
sometimes have seen that even single colors might be safeguarded, for example, in

108
Either with technical functionality such as the smell of Odomos, All Out or Good Knight
mosquito repellents; or with aesthetic functionality such as the pleasing fragrance of
perfumes. Any feature which adds non-trade mark value to a product and is not protected
by another IP right should be free to be imitated. This is what ensures a competitive
marketplace.
109
In re Organon, NV 79 U.S.P.Q. 2d 1639 (T.T.A.B. 2006) (The sign applied for was the
flavour orange. The T.T.A.B. held that exclusive rights over a pleasant orange taste
would be an important advantage over conventional antidepressant tablets. These pills
were designed to dissolve on a patient’s tongue; consequently, there is a practical need
for the medicine to have an appealing taste).
110
The use is non-infringing under § 30(2)(a) if “the use in relation to goods or services indicates the
kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods
or of rendering of services or other characteristics of goods or services”.
111
As noted in the Draft Manual Ch II, at 5.2.1.2.
112
BP Amoco Plc v. John Kelly, [2001] F.S.R. 21 (High Court of Justice in Northern Ireland);
BP Amoco Plc v. John Kelly, [2002] F.S.R. 5 (Court of Appeal in Northern Ireland) (on
appeal).
113
Cadbury Schweppes Pty Ltd v. Darrell Lea Chocolate Shops, [2006] F.C.A. 446 (Federal
Court of Australia); Cadbury v. Darrell Lea, [2007] F.C.A.F.C. 70 (Federal Court of
Australia); Cadbury v. Darrell Lea, [2008] F.C.A. 470 (Federal Court of Australia).

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Unconventional Trade Marks: an Indian Perspective

extraordinary situations where the color is unusual/strange to a business and perceived

as a 'badge of origin'.

In instances of complex brand names including word/non-literal components

just as colors, it is for the application to demonstrate that the latter is the essential part
of the imprint since the word or non-literal component is normally attempted to be so.

In Colgate Palmolive Company and Ors. v. Anchor Health and Beauty Care
Pvt. Ltd.,114 the color blend of Red and White, which the offended party professed to
be a piece of its brand name for dental items was being referred to. It was seen by the
Delhi High Court that if an item having distinguishing color blend, style, shape, and
surface/texture has been in the commercial terrain for quite a long time, it prompts
unavoidable inference of having obtained secondary meaning by virtue of its
standing/reputation and altruism/goodwill, procured at colossal expense.

Nevertheless, most recently in Britannia Industries Ltd. v. ITC Ltd.,115 the

Division Bench of the Delhi High Court held that since ITC neglected to set up that the
mix of yellow and blue in its trade dress has become a 'badge of goodwill, Britannia
couldn't be limited from utilizing a similar color mix in its trade dress for bakery items.

5.3.2. Shapes Marks

With regards to shapes, from a relative viewpoint two principle

groups of issues can be noticed. The 1st cluster concerns establishing
uniqueness for shapes, while the second concerns usefulness/functionality
based objections with the enrollment of specific kinds of shapes. Starting
with peculiarity/distinctiveness, the Indian Registry has embraced the EU's
position that similar uniqueness criteria– as needed by section 9(1) – ought
to apply for a wide range of commercial marks, including shapes.116 Here
establishing acquired peculiarity for shape or 3D imprints, under the proviso
to section 9(1), is moderately clear.117 The Manual imports the Windsurfing

114
2003 (27) PTC 478 Del.
115
2017 (70) PTC 66 (Del)
116
Draft Manual Ch II, at 5.2.5.3.
117
Draft Manual Ch II, at 5.1.3.
A mark that is said to have acquired a distinctive character must be shown to have come to

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Unconventional Trade Marks: an Indian Perspective

criteria118 to help structure the proof required: the applicant's market share
under that mark, the power and topographically boundless use, investment
in advancing the imprint, proof of buyer acknowledgment of the sign as an
imprint and proof from the trade that the sign is considered to work as an
imprint. Notwithstanding, one of the key necessities is that the shape
probably been utilized as a commercial mark;119 it isn't adequate to
guarantee a shape mark dependent on proof of general advertising
containing photos of the item shape and customer acknowledgment of the
related word mark. In the event that the candidate submits general proof of
the expenditure for advertisement use, it could identify with their word mark
instead and that is not good. What is required is proof that relates accurately
to the 3D sign applied for.120 The proof should explicitly show that the
relevant public trusts the shape to demonstrate business/commercial origin
similarly that they would believe a word mark.121 At last, through proof of
obtained uniqueness/acquired distinctiveness, the shape must be capable to
stand alone as a trade mark.122

When it comes to inherent distinctiveness, matters are more

convoluted. It is conceivable to petition for enrollment on the premise that
a shape has inherent peculiarity, since there is no separation between the

operate as a guarantee of origin. For that to be so consumers must rely on it as a means of

returning to the same undertaking if their experience of its products is positive, or to avoid
that undertaking if their experience is negative.
118
Windsurfing Chiemsee GmbH v. Boots- und Walter Huber, (C-108/97) [1999] E.T.M.R. 585
(European Court of Justice).
119
See, ‘Mark must have been used distinctively – as a trade mark’, Draft Manual Ch II, at
5.1.3.1.
120
BIC SA v. OHIM, (T-262/04) [2005] E.C.R. II-5959 (Ct. of First Instance (Third
Chamber)) (3D disposable lighter shape application where much of the evidence was only
relevant for advertising the word mark ‘Bic’).
121
The Draft Manual refers to the ECJ’s decision in Philips Electronics v. Remington
Consumer Products, (C-299/99) [2002] E.T.M.R. 81 (European Court of Justice).
122
Nestlé v. Mars, (C-353/03) [2005] E.C.R. I-6135, 26 (European Court of Justice) (“In regard to
acquisition of distinctive character through use, the identification… of the product or service as
originating from a given undertaking must be as a result of the use of the mark as a trade mark”);
August Storck KG v. OHIM (Storck I), (C-24/05 P) [2006] E.C.R. I- 5677, 61- 62 (European
Court of Justice) (Where the applicant sought to register the shape of a sweet, a picture
of the sweet on the external packaging was considered use to describe the contents of the
packet and not use of the shape as a trade mark.).

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Unconventional Trade Marks: an Indian Perspective

different classes of imprints and similar guidelines are applied. Nonetheless,

this has a significant admonition.

While the legitimate test for uniqueness is the equivalent for shape
imprints as the same for other imprints, acknowledgment must be given to
the different perceptions of the normal customer in connection to non-
conventional trade marks. Specifically, the normal customer may not as
promptly acknowledge the presence of the merchandise themselves as a
sign of trade inception. This is on the grounds that "normal buyers are not
prone to make suppositions about the origin of the items based on their
shape or the form of their packing without any graphical or word
component". 123

By receiving this comprehension of customer discernment with

respect to shapes, the Manual echoes the findings in the ECJ's Henkel
case.124 As a pragmatic issue, it is hence hard for shape imprints to build up
innate uniqueness. However as per the ECJ, such peculiarity is as yet
achievable for a sign "which departs altogether from the standard or
customs of the concerned domain and in this manner satisfies its basic
purpose of showing the origin of the product".125 The Manual additionally
imports this position.126 There is an undeniable threat here. The commercial
mark registry will no doubt be drawn nearer by candidates with novel, well
designed or profoundly stylized items asserting that they additionally work
as commercial marks. Anyway a shape which is just extraordinary or differs
from that of contending items isn't inevitably a commercial mark. Trade
mark law isn't to be mistaken for the law of Design. The prerequisite that

123
Draft Manual Ch II, at 5.2.5.3
124
Henkel v. OHIM, (C-456/01 P & C-457/01 P) [2004] ECR I-5089, 38 (European Court of
Justice). This was further endorsed in Mag Instrument Inc v. OHIM, (C-136/02 P) [2005]
E.T.M.R. 46 (European Court of Justice) (The application was for stylised torch shapes
and the ECJ held that while in theory they could have inherent distinctiveness, it was
unlikely in practice for this reason).
125
See, for instance, the authorities cited in Deutsche SiSi-Werke v. OHIM, (C173/04 P) [2006]
E.T.M.R. 41, 31 (European Court of Justice).
126
Draft Manual Ch II, at 5.2.5.4 (A “mark constituted by a shape must be sufficiently different from
a shape which is - a) characteristic of the product; b) the norm or customary in the sector
concerned”).

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Unconventional Trade Marks: an Indian Perspective

the shape withdraws essentially from the standard and consequently

satisfies its origin indicating function needs to be taken seriously.

In the EU, unsuccessful contentions to bring down this inherent

peculiarity limit have included suggestions that (a) the 3D sign is basically
a variation (or an aesthetically striking or alluring variation) of a typical
shape and along these lines discernibly unique;127 (b) the uniqueness
threshold is crossed if a 3D sign is essentially novel (never been done);128
(c) if its parts, for example, geometric shape and colour, albeit individually
common place, consolidate in non-obvious ways;129 (d) there are adequate
contrasts between the highlights of the sign and that of comparable items,
which isn't owing to a specialized explanation;130 (e) the pertinent public are
trained professionals and sensitive to minor differences/contrasts;131 and (f)
where the 3D imprint is for regular purchaser items, the normal buyer is
mindful to minor contrasts during exercise of his purchasing power.132
European registries and courts have opposed such contentions and the
steady message is that "departs considerably from the standard" won't be
watered down. The Draft Manual recognizes this peril and proposes that for
inherent uniqueness contentions to be effective, some extra factor –
separated from the unusual nature of the shape – is required. This could be
"proof that, in opposition to the typical presumption made about customer’s
propensities, shoppers in the relevant sector do indeed depend upon the
presence of the state of the item or its packing as a method for recognizing

127
Mag Instrument Inc v. OHIM, (C-136/02 P) [2005] E.T.M.R. 46 (European Court of Justice).
128
Procter & Gamble v. OHIM, (C-468/01 P to C-472/01 P) [2004] E.C.R. I-5141(ECJ); [2004]
E.T.M.R. 88 (European Court of Justice).
129
Ibid. For the combination of features argument, see also, Eurocermex v. OHIM, (C- 286/04 P)
[2005] ECR I-5797 (European Court of Justice); Procter and Gamble v. OHIM, (T 241/05, T
262/05 to T 264/05, T 346/05, T 347/05, T 29/06 to T 31/06) [2007] E.C.R. II-1549 (Court Of
First Instance).
130
Henkel v. OHIM, (C-456/01 P & C-457/01 P) [2004] ECR I-5089 (European Court of Justice).
131
Axions and Christian Belce v. OHIM, (T-324/01 and T-110/02) [2003] E.C.R. II-1897 (ECJ);
De Waele v. OHIM, (T-15/05) [2006] E.C.R. II-1511(Court of First Instance); Georg Neumann
v. OHIM, (T-358/04) [2007] E.C.R. II-3329 (European Court of Justice).
132
Henkel v. OHIM, (C-456/01 P & C-457/01 P) [2004] ECR I-5089 (European Court of Justice);
Procter & Gamble v. OHIM, (C-468/01 P to C-472/01 P) [2004] E.C.R. I- 5141(European Court
of Justice); [2004] E.T.M.R. 88 (European Court of Justice).

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Unconventional Trade Marks: an Indian Perspective

the origin of the item".133 Hence the recipe for inherent uniqueness for
shapes commands that it (a) departs considerably from the standard and
accordingly demonstrates origin; as well as (b) it is applied to products for
which customers are usually sensitive to this distinction. The last segment
of this chapter considers the functionality based policy objections with the
enlistment of specific kinds of shape marks. These strategy avoidances
supersede peculiarity and they are contained in section 9(3): An imprint will
not be enlisted as an trade mark in the event that it comprises exclusively
of-

(a) the shape of goods which results from the nature of the goods
themselves; or

(b) the shape of goods which is necessary to get a technical result; or

(c) the shape which gives substantial value to the products.

Explanation— For the purpose of this section, the nature of products or

services according to which the trade mark is utilized or proposed to be
utilized will not be a ground for refusal for refusal of registration.

These standards reflect Art 3(1) (e) of the EU's Trade Marks
Directive and Art 7(1)(e) of the Community Trade Mark Regulation.134 The
reason for these exclusive justification for refusal was distinguished by the
ECJ in Philips: The reasoning of the justification for refusal of enrollment
set down in Article 3(1) (e) of the Directive is to forestall commercial mark
protection from granting its owner a monopoly on technical solutions or
functional characteristics of an item which a client is probably going to look
for in the results of contenders.135

133
Draft Manual Ch II, at 5.2.5.3. The authority for this proposition is Daimler Chrysler v.
OHIM, (T 128/01) [2003] E.T.M.R. 87 (European Court of Justice) (Purchasers of motor
vehicles habitually make assumptions about the commercial origin of the vehicle based
on external features or shapes.)
134
Council Regulation (EC) No 40/94 of 20 Dec 1993 on the Community Trade Mark L 11,
14/01/1994 p. 1. This has been recently replaced by Council Regulation (EC) No 207/2009
of 26 February 2009 on the Community Trade Mark.
135
Philips, supra note 82, at [78].

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Unconventional Trade Marks: an Indian Perspective

While there has been minimal legal thought of "shapes which result
from the nature of the products" (section 9(3) (a)), the reasoning for this
arrangement is to keep free fundamental shapes of merchandise that should
be accessible for use by general public,136 and there might be more than one
basic shape for those merchandise which should be kept free. Conversely,
we locate a more itemized thought of the standard that a "mark will not be
enlisted… if it comprises solely of… the shape of products which is
important to get a specialized outcome i.e. a technical result" (section 9(3)
(b)). This arrangement was broadly bantered during the Philips suit
concerning the shape of a 3-headed electric turning shaver and two issues
emerged for deliberation:

1. If a shape has both technical/specialized traits just as non-technical traits,

is it still a shape solely orientated towards a technical outcome? On the
other hand, if the shape likewise has some non-technical (for example
adapted or impulsively picked) traits, would it be a good idea for it to get
away from this preclusion? The ECJ's reaction was that the initial step is
to distinguish the 'basic attributes' of a shape. All of the shape need not
be specialized/technical, but if its fundamental qualities were technical,
then the prohibition applied.137

2. What was the signification of necessary? Philips contended that other

potential shapes existed for electric razors and the three-sided shape it
had picked was by all account not the only chance. Since decisions and
options existed, its shape was not 'necessary' for example the main
conceivable approach to accomplish that outcome. Anyway the ECJ
received a causal comprehension of this prerequisite – where 'the
essential functional qualities of the shape of an item are attributable
exclusively to the specialized/technical outcome', for example, where the

136
Philips v. Remington, [1999] RPC 809, 820 (CA) (Aldous LJ). This position is also followed
in the Draft Manual Ch II at [5.2.5.1]. Further guidance on this provision can also be found in
Société de Produits Nestlé v. Unilever, [2002] EWHC 2709 (Ch) (Shape of the ‘Viennetta’ ice
cream).
137
Philips Electronics v. Remington Consumer Products, (C-299/99) [2002] E.T.M.R. 81 79-80
(European Court of Justice).

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Unconventional Trade Marks: an Indian Perspective

shape was picked in view of a technical end-result in mind, this was

adequate to attract the prohibition.138

In an ongoing use of the Philips standards, the ECJ Court of First

Instance's (CFI's) recent Lego judgment139 has affirmed that 'exclusively'
and 'necessary' are to be deciphered purposively, to legitimize this
disallowance. Lego, in their continuous mission for everlasting life under
the haven of IP law, had applied to OHIM to enroll the shape of their natural
toy blocks/bricks as a commercial mark. The blocks are built in order to
accommodate the contending technical requests of interlocking safely
enough to fabricate a structure, while likewise being effortlessly pulled
separated by a small kid. The court embraced the way to deal with these
avoidances set out in Philips: 'exclusively' proposed that the basic attributes
or highlights of a shape ought to accomplish a specialized outcome (rather
than necessitating that the entirety of the shape creates a specialized
outcome), and 'necessary' implied that there should be a causal association
between the shape picked and the ideal outcome (the presence of other
accessible shapes didn't make a difference). This choice is likewise
intriguing for its investigation of the purposes of convergence among patent
and commercial mark law around there. Anyway its importance lies in the
verbalization of a test to recognize the 'basic qualities' of a shape. Lego
recommended that such highlights or attributes 'must be resolved from the
perspective of the important buyer and not by specialists according to a pure
technical analysis'.140 The CFI couldn't help contradicting this 'eye appeal'
test and received a more teleological/technical methodology.141 The court
presumed that: The 'impression of the objective customer isn't pertinent to
the investigation of the functionality of the fundamental attributes of a
shape. The objective shopper might not have the specialized information

138
Ibid., at 83.
139
Lego Juris v. OHIM, Mega Brands, (T-270/06) [2009] E.T.M.R. 15 (European Court of
Justice).
140
Ibid., at 52.
141
In doing so, they have departed from the ‘eye impact’ approach previously adopted by the
UK courts. See, Koninklijke Philips Electronics v. Remington Consumer Products &
Rayovac, [2006] E.W.C.A. Civ. 16 (Court of Appeal (Civil Division)).

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Unconventional Trade Marks: an Indian Perspective

important to evaluate the basic qualities of a shape and thus certain

attributes might be basic from his perspective despite the fact that they are
not fundamental with regards to an investigation of functionality and the
other way around. [These characteristics] must be resolved objectively…
based on its graphical portrayal and any depictions documented at the hour
of the application for the trade mark'.142

Lego is likewise important in light of the fact that it raises an issue

considered by the US Supreme Court in TrafFix Devices,143 in particular
the evidentiary importance of a prior patent identifying with the shape being
asserted as a commercial mark. The US choice set up that a "prior patent…
has crucial importance [and] is solid proof that the highlights in that asserted
are functional in nature".144 Lego had a patent relating with the grip- and-
release technical highlights of the block/brick and, while this didn't set up a
certain assumption, the CFI affirmed that an earlier patent can be utilized as
proof that the fundamental qualities of the block were functional.145 It is
proposed that the Indian Registry ought to receive the US way to deal with
prior patent, since it sets up a rebuttable assumption that the shape is
functional and afterward moves the weight on to the candidate to then
contend that the basic attributes of the shape are not covered by the patent.

The last policy exclusion is for shapes which "gives

substantial/generous value/incentive to the products" (section 9(3) (c)). The
Draft Manual is sure about the policy basis for this prohibition: "This
arrangement is planned to forestall the securing of a permanent monopoly
in the kind of design of products which should be secured under Designs
enactment, restricted in length of time".146 The Manual is evident that
certain purely fancy items, for example, gems/jewelry will be caught by this

142
Lego Juris v. OHIM, Mega Brands, (T-270/06) [2009] E.T.M.R. 15, 70 (Court of First
Instance).
143
TrafFix Devices v. Marketing Displays, 121 S. Ct. 1255 (2001) (Supreme Court).
144
Ibid., at 1260.
145
Lego Juris v. OHIM, Mega Brands, (T-270/06) [2009] E.T.M.R. 15, 86 (Court of First
Instance).
146
Draft Manual Ch II, at 5.2.5.3.

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Unconventional Trade Marks: an Indian Perspective

arrangement. Notwithstanding, for other stylized shapes, it is "fitting to

think about whether as a generous extent of the value of the item to the
shopper is owing to its shape. Much of the time this will require a
comparative assessment of the value of the shape being referred to when
contrasted with those utilized on contending items".147 Here, a more detailed
and accommodating test can be found in an ongoing OHIM Board of
Appeals choice concerning an endeavor to enroll pencil (or organ pipe)
shaped amplifiers/loudspeakers. In Bang and Olufsen,148 the Board
concluded that since the speakers added significant worth, enrollment as a
brand name would evade the restricted span of design or copyright
protection otherwise available for such aesthetically appealing shapes.
Notably, the test for 'considerable worth' embraced by the Board was to
enquire whether the shape "can possibly decide to an enormous degree the
purchaser's conduct to purchase the item… [i.e.] where the shape is the main
or one of the basic selling highlights of the item/product".149

With respect to whether purchasers were moved to purchase the item

as a result of its design features, the Board recognized two appropriate
inquiries: (a) What pertinence does the producer provide for the shape of
the item as a marketing tool? Here glance at the candidate's own assertions
in promotions, trade literature and so on (b) Do 'purchasers really purchase
the item for its stylish worth'? Here the vault should take a look at
experimental proof from the retail area.

Rule 29 (4) (i) of the Trademark Rules, 2002 gives that where an
application to the enlistment of commercial mark comprises of shape of
merchandise or its packing, the reproduction given must comprise of at least
five different perspectives/views of the trade mark and a portrayal by word
of the imprint.

147
ibid
148
Bang & Olufsen (R 497/2005-1) Sep. 10, 2008, OHIM 1st BoA (Unreported), available at
http://oami.europa.eu/LegalDocs/BoA/2005/en/R0497_2005-1.pdf.
149
Ibid., at 24.

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Unconventional Trade Marks: an Indian Perspective

The brand name application for the ZIPPO shape mark showed its
shape in the application as under:

5.3.3. Holograms

None of the arrangements under the Indian Trademark Law goes about as a ban
to the security of visualizations. The Draft Manual of Trademarks gives that on a
fundamental level there isn't anything to keep holograms from working as brand names,
if they are capable for recognizing the merchandise or administrations of one endeavor
from those of different endeavors and are fit for graphical representation.

Three dimensional imprints

The Trademark Rules epitomize explicit guidelines to be followed while

applying for a three-dimensional imprint. Rule 25 (12) and 29(3) of the Trademark
Rules, 2002 involves arrangements with respect to recording/filing of a three
dimensional imprint in India and states that:

Rule 25(12) (c) - An application for the enlistment of a commercial mark for
merchandise or administrations will be considered as a three dimensional trade mark
just if the application contains an assertion with that impact;

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Unconventional Trade Marks: an Indian Perspective

Rule 29 (3) in this regard further explains that where the application contains
an assertion such that the commercial mark is a three dimensional imprint, the
reproduction of the imprint will comprise of a two dimensional graphic or photographic
reproduction as follows, to be specific:-

(i) The propagation outfitted will comprise of three different views on the
commercial mark;

(ii) Where, nonetheless, the Registrar thinks about that the reproduction of the
imprint given by the candidates doesn't adequately show the particulars of the
three dimensional imprint, he may call upon the candidate to give within two
months upto five different views/perspectives on the imprint and a depiction by
words of the imprint;

(iii) Where the Registrar thinks about the various perspectives as well as portrayal of
the imprint alluded to in the clause (ii), yet at the same time doesn't adequately
show the specifics of the three dimensional imprint, he may call upon the
candidate to give a sample of a trade mark.

5.3.4. Sound Marks

When it comes to sound marks to function as trade mark, they are open for
registration and warrant full protection particularly with the express acknowledgment
given to them under the new Trademarks Rules 2017. Applications for sound imprints
should now be submitted in a MP3 format, not surpassing 30 seconds in length and
recorded on a medium permitting simple and clearly perceptible/audible replay. This
should be accompanied with a graphical portrayal of the documentations/notations
constituting the sound imprint.150

In spite of the fact that "notations/documentations" has not been characterized

under the new Rules – and there is no clarification offered with respect to what might

150
Rule 26 of Indian Trade Marks Rules (2017) reads as follows: “(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 not exceeding thirty seconds’ length recorded on a medium which
allows for easy and clearly audible replaying accompanied with a graphical representation of its
notations.”

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Unconventional Trade Marks: an Indian Perspective

be adequate to satisfy the prerequisite of "a graphical portrayal of its notations" – by

and large, modern staff documentations are worthy for melodic compositions.
Nevertheless, the fact that the extent of these terms has not been characterized or
limited to a specific way of delivering the documentations graphically, the legislative
intent has all the earmarks of being comprehensive and reformist. In this way, if the
graphical documentations are unambiguous and plainly characterize the sound imprint,
they would be adequate, which is especially valuable on account of a sound that isn't
melodic and rather arbitrary but still has the capability for being enrolled because of its
uniqueness. Then again, an original tune may involve brand name protection across
classes because of its inventiveness. Doubtlessly, the uniform procedure under the new
Rules combined with digitization of records would streamline sound imprint searches
in order to find out conflicts and for due diligence activities.

Sound marks in India, for example, the Yahoo yodel and the corporate jingle of
ICICI Bank have just been enrolled. The previous is the 1st sound imprint to be allowed
enlistment in India and the latter is the 1st sound imprint to be enrolled in the name of
an Indian enterprise. Other sound imprints enlisted in India incorporate the sound of
'Hisamitsu' sung over certain melodic documentations on a 'proposed to be utilized'
premise and the well known melodic arrangement of "Raymond: The Complete Man".

The Draft Manual involves the arrangements as follows identifying with the
necessities to be satisfied while recording a sound imprint:

1. Applications for sound imprints should unmistakably express that they are sound
imprints. In any case the application will be analyzed as though it were a word and/or
device mark (for example in the case of melodic/musical documentation/notation); and

2. Graphic representation requirements are met by representation of the sign by a musical stave
divided into measures and showing, in particular, a clef, musical notes and rests indicating
relative value and sharps, flats and naturals (accidentals).

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Unconventional Trade Marks: an Indian Perspective

Registration No. 1365393

Registration No. 1365394

Journal page of Nokia’s Sound mark (#1365394)

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Unconventional Trade Marks: an Indian Perspective

5.3.5. Smell Marks

Under the Indian Trademarks Act, a trade mark is characterized as an imprint

which are capable of being represented in graphical form and which is capable of
distinguishing the merchandise or administrations of one individual from those of
others. Thus, as indicated by Rule 25 (12)(b) of the Trademark Rules, 2002,151 an
application for enlistment of brand name requires its graphical portrayal while Rule
28152 and 30 necessitates that it be imprint for which are to be safeguarded should be
depicted on paper, in a durable form.153 Consequently, this prerequisite goes about as
a boundary to the acknowledgment of olfactory imprints as a genuine brand name in
India.

The cause and basis behind quite a low enrollment in different countries and all
the while no enlistment of smell marks in India is on the grounds that they are
characterized subjectively and are consistently open for interpretation. The challenges
that emerge from human assessment of scents lead to the contention that subjective
viewpoints conclusions are insufficient when choosing whether the smell mark
functions as a brand name. Later odour marks are one of the most troublesome sorts of
trade marks because of the fact that their graphical representation is very hard.154

151
Rule25(12) -An application for the registration of a trade mark for goods or services shall—
(b) be able to depict the graphical representation of the trade mark;
152
Rule 28.- Representation of mark.—
(1) Every application for the registration of a trade mark, and where additional copies of the
application are required every such copy, shall contain a representation of the mark in the space
(8cm x 8cm) provided on the application form for that purpose: Provided that in any case the size
representation shall not exceed 33 centimetres by 20 centimetres with a margin of 4 centimetres on
the left hand side. The trademarks rules, 2002.
153
Rule 30- Representations to be durable and satisfactory.—
(1) All representations of trade marks shall be of a durable nature, and each additional representation
required to be filed with an application for registration shall be mounted on a sheet of strong paper
of the size of approximately 33 centimetres by 20 centimetres, leaving a margin of not less than 4
centimetres on the left hand part of the sheet.
(2) If the Registrar is not satisfied with any representation of a mark he may at any time require
another representation satisfactory to him to be substituted before proceedings with the application.
(3) Where representation of a trade mark cannot be given in the manner set forth hereinabove, a
specimen or copy of the trade mark may be sent either in full size or on a reduced scale and in such
form as the Registrar may think most convenient.
154
Angela Dsouza, Smell marks: The New Rage in Trademarks, Intepat, 2016, https://www.
intepat.com/blog/trademark/smell-trademarks
india/?utm_source=Mondaq&utm_medium=syndication&utm

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Unconventional Trade Marks: an Indian Perspective

5.4. NON-CONVENTIONAL MARKS FILED/ REGISTERED IN INDIA

1. Sound TM application no: 2039043, 2039044, and 2039045 Filed by
Development Credit Bank in Oct-2010; Current status Pending.

2. Sound TM application no: 2511724, Filed by

VOLKAKTIENGESELLSCHAFT in 2013; Current status Pending.

3. Sound TM application no: 2207389, 2207390, and 2207391 Filed by LIONS

GATE ENTERTAINMENT, INC filed in Sep-11; Current status Pending.

4. Sound TM application no: 1587571 Filed by HAYAGRIVA SOFTWARE

PRIVATE LIMITED filed in Aug-07; Current status Pending.

5. Sound TM Registration no: 1784755, Filed by HISAMITSU

PHARMACEUTICAL CO. INC. filed in Feb-09 and registered in Feb-11.
Interestingly, sound mark is registered under the condition of association with
Regd. No. 800050 (Label mark), 1713283 (device mark).

6. Sound TM registration no: 1270407, for class 35, 38 and 42 Filed by Yahoo
INC filed in Mar-04 registered on Mar-08.

7. Sound TM Application / registration filed by Allianz

AKTIENGESELLSCHAFT bearing nos. 1421881, 1421882, 1421883 in class
36 Filed in Feb-06 and registered on Oct-08.

5.5. CONCLUSION

. In perusing meetings of Indian professionals on the enlistment of non-

traditional shape marks in India, one is promptly struck by the feeling of
exhilaration at the conceivable outcomes. There is an obvious sense that Indian
trade mark law has at long last found modern day advertising methods. What
one doesn't see talked about is the host of riddles and anti-competition issues
that the subject matter in question raises. By raising these issues, this chapter
tries to establish some equilibrium with the conversation. Registries and court
the world over are embracing a vigilant approach to deal with such topic. The
Draft Manual gets on a few of these issues and gives a vigorous structure inside

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Unconventional Trade Marks: an Indian Perspective

which to permit the progressive development of standards around there. It

ought to end up being an important and adaptable asset. Non-traditional
imprints are surprisingly unsteady identifications of inception and rarely
utilized without extra word or figurative imprints to back them up. No maker
of mineral water is probably going to get rid of the organization name or brand
and depend entirely on the shape of the bottle when selling the item. Also, the
idea of a solitary producer asserting absolute rights to a color over a wide scope
of merchandise and ventures is an unwanted one. Such marks should be given
a careful acceptance.

Unconventional trademarks can play an important role in corporate branding

and adoption of color branding strategies, sound and shape marks could be a smart
move in increasingly competitive markets to ensure that the purpose and quality of
products/ services are not the only factors that sustain their appeal.

While we await further development of jurisprudence in this sphere of law, the

current trend shows that Indian courts/tribunals are ready to adopt a broad approach
while protecting unconventional marks.



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BIBLIOGRAPHY
 SOURCES OF STUDY

I. PRIMARY SOURCES

 Federal Trademark Dilution Act (FTDA), 1995 (America).

 The Lanham Act, 1946 (USA).

 The Trade Marks Act, 1994 (England).

 The Trade Marks Act, 1999 (India)

 The Appropriations Act,(USA) 2014.

 The Paris Convention of Stockholm (1967)

 The Washington Conference (1911)

 The Paris Convention of 1883.

 International Covenant on Civil and Political Rights, (1966).

 Organization of American States, American Convention on Human Rights

(1969).

 European Convention on Human Rights, (1950).

 Singapore Treaty on the Law of Trade Marks, (2006).

II. SECONDARY SOURCES

1. BOOKS

 Michael E. Epstein, Intellectual Property, (New Delhi: Wolters Kluwer, Law

and Bussiness, 5th edition 2008).

 V.K. Ahuja, Law Relating To Intellectual Property Rights, (Nagpur: Lexis

Nexis Butterworths, 2nd edition, 2013).

Page | 277
Bibliography

 L., Bently, & B., Sherman, Intellectual Property Law, (New York: Oxford

University Press, 3rd edition, 2009).

 D. Kitchin, D. Llewelyn, et. al. (eds.) Kerly’s Law of Trademarks and

Tradenames, (London: Sweet and Maxwell, 44th edition 2005).

 W. Cornish, D. Llewelyn, et.al., Intellectual Property: Patents, Copyright,

Trademarks and Allied Rights. (London: Sweet & Maxwell Limited, 7th

edition, 2010).

 Nuno Pires de Carvalho, The TRIPS Regime of Trademarks and Designs

(Netherlands: Kluwer Law International 5th edition 2006).

 D. Aaker, Brand Portfolio Strategy, (London, Simon & Schuster, 1st edition,

2004).

 K. Drawnbaugh, Brands in the Balance: Meeting the Challenges to

Commercial Identity, (London, Reuters, 1st edition, 2001).

 Lionel Bentley, Jennifer Davis, et.al. (eds.), Trademarks and Brands: An

Interdisciplinary Critique, (UK, Cambridge University Press, 2nd edition

2008).

 W. Cornish, D. Llewelyn, Intellectual Property: Patents, Copyright, Trade

Marks and Allied Rights, (London, Sweet & Maxwell, 6th edition, 2007).

 Martin Lindstorm, “BRAND Sense: Build Powerful brands through touch,

taste, smell, sight and sound”, (New York, Free Press, 1st edition, 2005).

 Kerly, Law of Trademarks and Trade Names, (Sweet and Maxwell, South

Asian edition, 2007).

 Graham Dutfield and Uma Suthersanes, Global Intellectual Property Law,

(London, Edward Elgar Publishing Ltd., 1st edition, 2008).

Page | 278
Bibliography

 C. Classen, D. Howes and A. Synnott, Aroma: The Cultural History of Smell

(London, Routledge, 1st edition 1994).

 P. Torremans, Holyoaks & Torremans, Intellectual Property Law, (Oxford,

Oxford University Press, 5th edition, 2008).

 J. Davis, Intellectual Property Law, (Oxford, Oxford University Press, 3rd

edition, 2008).

 S. Maniatis, Trade Marks in Europe: A Practical Jurisprudence, (London,

Sweet & Maxwell, 1st edition, 2006).

 Carlos M. Correa and Abdulqawi A. Yusuf (eds.), Intellectual Property and

International Trade: The TRIPS Agreement, (The Hague, Kluwer Law

International, 1st edition, 2008).

 S. Ricketson, The Paris Convention for the Protection of Industrial Property:

A Commentary, (Oxford, Oxford University Press, 1st edition, 2015).

 W. Cornish, D. Llewelyn, and T, Aplin, Intellectual Property, Patents,

Copyrights, Trademarks and Allied Rights (London, Sweet& Maxwell, 7th

edition, 2010).

 J. McCarthy, McCarthy on Trademarks and Unfair Competition, 3rd ed.,(Legal

Solutions, Thomas Reuters, 3rd Edition, 1998).

 H. MacQueen, C. Waelde and G. Laurie, Contemporary Intellectual Property,

Law and Policy, (Oxford, Oxford University Press, 2008).

2. ARTICLES
 David Vaver, “Recent Trends in European Trademark Law: Of Shapes, Senses

and Sensation”, (2005) 95 The Trademark Reporter.

Page | 279
Bibliography

 Frank I. Schecter, “The Rational Basis of Trademark Protection”, (1927) 40

Harvard Law Review.

 T. D. Drescher, “The Transformation and Evolution of Trademarks: from

Signals to Symbols to Myth”, (1992) 301 The Trademark Reporter.

 S. Carter, “The Trouble with Trademark”, (1990) 99 Yale Law Journal.

 F. Schechter, “The Rational Basis of Trademark Protection”, (1927) 40

Harvard Law Review.

 B Cutter, “The Rational Basics of Trademark Protection; Control of Quality

and Dilution - Estranged Bedfellows?”, (1990) 24 Journal Marshall Law

Review.

 C W Grimes and G J Battersby, “The Protection of Merchandising

Properties”, (1979) 69 Trademark Reporter.

 G. Brown, “Advertising and the Public Interest: the Legal Protection of Trade

Symbols”, (1948) 57 Yale Law Journal.

 V.K. Ahuja, “Non-traditional Trade Marks: New Dimension of Trade Marks

Law”, (2010) 32 European Intellectual Property Review.

 Michelle Gonzale, “So Let the Paint be Spread, We’re Painting the Soles

Red”, (2014) 52 Wake Forest Journal of Business And Intellectual Property

Law.

 Jerome Gilson and Anne Gilson LaLonde, “Cinnamon Buns, Marching Ducks

And Cherry-Scented Racecar Exhaust: Protecting Nontraditional

Trademarks”, 2005 95 (4) Trademark Review.

 Jean Praniskas, “Trade Name Creation: Processes and Patterns” (1968) 101

Journal of Economics.

Page | 280
Bibliography

 Lisa P. Lukose, “Consumer Protection vis-a-vis Trademark Law”, (2013) 1(1)

Journal on Consumer Law and Practice.

 Friedrich-Karl Beier and Arnold Reimer, “Preparatory study for the

Establishment of a Uniform International Trademark definition”, (1955) 5

Trademark Reporter.

 Gustavo Bravo, ‘From Paris Convention to TRIPS: A Brief History’, (2001–

2002) 12 Journal of Contemporary Legal Issue.

 L. A. Ellwood, ‘The Industrial Property Convention and the “Telle Quelle”

Clause’, (1956) 46 Trademark Reporter

 Daniel R. Bereskin, ‘A Comparison of the Trademark Provisions of NAFTA

and TRIPS’, (1993) 1 Trademark Reporter.

 Lisa P. Ramsey, ‘Free Speech and International Obligations to Protect

Trademarks’, (2010) 35 Yale Journal of International Law.

 Joanna Schimidt-Szalewski, ‘The International Protection of Trademarks after

the TRIPS Agreement’, (1998) 9 Duke Journal of Comparative &

International Law.

 Thomas D. Drescher, ‘Nature and Scope of Trademark Provision under TRIPS

and Pan-American Conventions’, (1997) 87 Trademark Reporter.

 Eleanor Meltzer, ‘TRIPS and Trademarks, or GATT Got Your Tongue?’,

(1993) 83 Trademark Reporter.

 Michael Blakeney, ‘The Impact of the TRIPS Agreement in the Asia Pacific

Region’, (1996) 10 European Intellectual Property Review.

 Marshall A. Leaffer. ‘The New World of International Trademark Law’,

(1998) 2 Marquette Intellectual Property Law Review.

Page | 281
Bibliography

 James C. Chao, ‘Recent Trends in Asian Trademark Law-Changes and

Challenges’, (2005) 95 Trademark Reporter.

 Sanjeev Dave, ‘TRIPs: International Trademark Law That Promotes Global

Trade’, (2001–2002) 12 Journal of Contemporary Legal Issues.

 William E. Schuyler, ‘Paris Convention for the Protection of Industrial

Property – A View of the Proposed Revision’, (1982–1983) 8 North Carolina

Journal of International Law and Commercial Regulation.

 Paul J. Heald, ‘Trademarks and Geographical Indications: Exploring the

Contours of the TRIPS Agreement’, (1996) 29 Vanderbilt Journal of

Transnational Law.

 Walter Wintert, ‘Home Country Registration-Article 6 Paris Convention’,

(1950) 40 Trademark Reporter.

 Eric Stenshoel, ‘From Berne to Madrid and Beyond: The road to international

Sports Law Journal.

 Fridtiof Knudsen, ‘The Norwegian 1961 Trademark Act’, (1975) 65

Trademark Reporter.

 Elizabeth Siew Kuan Ng, ‘The TRIPS Agreement and its Implementation in

Relation to Singapore Intellectual Property Law’, (1997) 9 Singapore

Academy of Law Journal.

 Ruth E. Annand. ‘Lookalikes under the New United Kingdom Trademarks Act

1994’, (1996) 86 Trademark Reporter.

 H. A. Gill, ‘Object of the AIPPI and its Influence on the Drafting and

Amendment of the International Convention’, (1954) 44 Trademark Reporter.

Page | 282
Bibliography

 Graeme B. Dinwoodie, ‘Trademarks and Territory: Detaching the Trademark

Law from the Nation-state’, (2004–2005) 41 Houston Law Review.

 Jeremiah D. McAuliffe, ‘Prospects for Improved Protection of Trademarks in

International Trade’, (1971) 61 Trademark Reporter.

 Gerard Dassas, ‘Survey of Experience under the French Trademark Law’,

(1976) 11 Trademark Reporter.

 Edward J. Kania, ‘International Trademark and Copyright Protection’, (1985–

1986) 8 Loyola of Los Angeles International and Comparative Law Journal.

 J. H. Reichman, ‘Universal Minimum Standards of Intellectual Property

Protection under the TRIPS Component of the WTO Agreement’, (1995) 29

International Lawyer.

 Ernst Seligsohn, ‘Recent Developments in the Law of Trademarks and Unfair

Competition in Israel’, (1973) 63 Trademark Reporter.

 Daniel R. Bereskin and Aaron Sawchuk, ‘Crocker Revisited: The Protection of

Trademarks of Foreign Nationals in the United States’, (2003) 93 Trademark

Reporter.

 Jooat Pauwelyn, ‘The Dog That Barked But Didn’t Bite: 15 Years of

Intellectual Property Disputes at the WTO’, (2010) 1 Journal of International

Dispute Settlement.

 Stephen P. Ladas, ‘Trademark and Foreign Trade’, (1948) 38 Trademark

Reporter.

 Allan Zelnick, ‘Shake the Lemon Tree: Use and Paris Union Treaty’, (1977)

67 Trademark Reporter.

Page | 283
Bibliography

 Althaf Marsoof, ‘TRIPS Compatibility of Sri Lankan Trademark Law’, (2012)

15 Journal of World Intellectual Property.

 Ramdn Soldrzano, ‘Registrations of Foreign Trade-Marks in Mexico’ (1952)

42 Trademark Review.

 Graeme B. Dinwoodie and Rochelle C. Dreyfuss, “Designing a Global

Intelletual Property System Responsive to Change: The WTO, WIPO and

Beyond”, (2009–2010) 46 Houston Law Review.

 David I. Bainbridge, “Smell, Sound, Colour and Shape Trade Marks: An

Unhappy Flirtation”, 2004 12 Journal of Business Laws.

 Vincent O’Reilly, “The Community Trademark System: A Brief Introduction

and Overview”, (2004) 8 Marquette. Intellectual Property Law Journal.

 Thomas A. Gallagher, “Non-traditional Trademarks: Taste/Flavour” (2015)

105 Trademark Reporter.

 Jeremy A. Greene and Aaron S. Kesselheim, “Why do the same drugs look

different? Pills, Trade Dress and Public Health”, (2011) 365(1) The New

England Journal of Medicine.

 William M. Landes & Richard A. Posner, “The Economics of Trademark

Law”, (1986) 78 Trademark Reporter.

 Jerre B. Swann, “The Design of Restaurant Interiors – A New Approach to

Aesthetic Functionality,” (1986) 76 Trademark Reporter.

 Graeme B. Dinwoodie, “The Death of Ontology: A Teleological Approach to

Trademark Law”, (1999) 84 Iowa Law Review.

 Mark A. Lemley & Eugene Volokh, “Freedom of Speech and Injunctions in

Intellectual Property Cases”, (1998) 48 Duke Law Journal.

Page | 284
Bibliography

 Elias B, “Do Scents Signify Source? An Argument against Trademark

Protection for Fragrances” (1992) 82 Trademark Report.

 G. Humpreys, “Proof of Use, Continuity of Functions in inter partes

Proceedings and Three-dimensional Marks: Europe in Review” (2007) 2

Journal of Intellectual Property Law and Practice.

3. REPORTS
 Report of the Standing Committee, on the law of Trademarks, Industrial

Designs and Geographical Indications, WIPO SCT/16/9 2007.

 WIPO SCT/17/3 Standing Committee on the Law of Trademarks Industrial

Designs and Geographical Indications, ‘Relation of Established Principles to

Non-traditional trademarks’, Geneva, 2009.

 Annual Report of the Office of the Controller General of Patents, Designs and

Trade Marks (India) (2007-2008).

 AIPPI, UK Group Report Q181 by Jane Mutimear, Kathrin Vowinckel,

Richard Abnett, Conditions for registration and scope of protection of Non-

Conventional Trademarks (2014).

4. WEBSITES

 http://dare.uva.nl/documentl/169804.

 http://thinkexist.com/quotes/daniel_j._boorstin

 www.altacit.com.

 http://definitions.uslegal.com/i/internet-domain-names/

 http://www.icann.org/en/general/glossary.htm

 http://definitions.uslegal.com/i/internet-domain-names/

 http://indiankanoon.org/doc/1460548/

Page | 285
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 http://arbiter.wipo.int/domains/decisions/html/d2000-0552

 http://www.icann.org.udrp-rules-24.

 http://www.w3schools.com/html/html_frames.asp.

 http://www.webopedia.com/TERM/M/mousetrapping.html.

 http://www.wipo.int/amc/en/domains/statistics/countries_a-z.jsp.

 http://www.wipo.int/amc/en/domains/statistics/outcome.jsp

 http://www.gilead.com/medicines#HIVAIDS

 https://www.urologicalcare.com/upload/ed/viagra.jpg

 https://www.drugs.com/aubagio-images.html

 https://www.drugs.com/xarelto-images.html

 http://www.sensipar.com/about-sensipar/,

 http://fhcrc.org/visitor/nobel/buck/article.html.

 http://www.inta.org/articles/inyourear.html,

 http://www.ucl.ac.uk/laws/ibil/index.shtml?events_past

 http://www.colormatters.com/color-and-design/why-color-matters.

 http://www.wipo.int/madrid/en/guide

 https://www.forbes.com/pictures/gkkh45llh/pfizer/#142c46144b4

 https://spicyip.com/2015/12/astrazeneca-v-dr-reddys-colour-as-a-

pharmaceutical-trade-dress.html

 http://www.jstor.org/stable/2010875

 http://www.wipo.int/ about ip/en/iprm/

 https://www.intepat.com/blog/trademark/smell-trademarks

 http://www.ipindia.nic.in/tmr_new / TMR_Manual/ TMR_DraftManua

Page | 286
Bibliography

 http:// www.ipr2.org/storage/ Huang-EN932.doc

 http://open.wmitchell.edu/facsh/235



Page | 287
ISSN: 2348-5485

AD VALOREM
Journal of Law
An International Peer Reviewed Research Refereed Quarterly Journal
(JIFE Impact Factor: 3.934, Approved by UGC Journal No. 41336)

Patron:
Hon’ble Justice K.D. Shahi
Retired Judge, Allahabad High Court, Allahabad

Professor B.C. Nirmal

Ex. Vice Chancellor of National University of Study & Research in Law, Ranchi
Former Head & Dean, Faculty of Law, Banaras Hindu University, Varanasi

Editor in Chief:
Chandra Nath Singh
Assistant Professor, Faculty of Law, Banaras Hindu University, Varanasi
LL.B. (BHU), LL.M. (RMLNLU), Ph.D. (BHU), UGC-NET/JRF/SRF

Mode of Citation:
(Ad Valorem), Volume 5, Issue IV, 2018, <Page No.>

VOLUME: 5 ISSUE: IV PART-II OCTOBER –DECEMBER 2018

Published by:
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AD VALOREM
Journal of Law
An International Peer Reviewed Research Refereed Quarterly Journal

ISSN: 2348-5485

@ Approved By UGC

Correspondence Address:
Editor in Chief:
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Ad Valorem (Journal of Law)
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EDITORIAL BOARD:

Prof. R.P. Rai, Head & Dean, Law School, Banaras Hindu University, Varanasi
Prof. D.K. Sharma, Ex. Head & Dean, Law School, Banaras Hindu University, Varanasi
Prof. C.P. Upadhyay, Law School, Banaras Hindu University, Varanasi
Prof. G.S. Tiwari, Ex. Dean, School of Law, H.S. Gour University, Sagar, M.P
Prof. S.K. Gupta, Law School, Banaras Hindu University, Varanasi
Prof. D.K. Mishra, Law School, Banaras Hindu University, Varanasi
Prof. Sibaram Tripathi, Law School, Banaras Hindu University, Varanasi
Prof. Priti Saxena, Head, Legal Study of Human Rights, BBAU, Lucknow
Prof. S. K. Bhatnagar, Ex. Dean, Legal Study, BBAU, Lucknow
Prof. Tabrez Ahmad, Director, Legal Studies, U.P. E.S, Dehradun, Uttarakhand, India
Prof. Akhilesh Ranaut, Professor, UILS, Chandigarh University, Chandigarh
Prof. L.M. Singh, Faculty of Law, Allahabad University
Prof. B.Kumar, Director, Faculty of Law, ICFAI University, Dehradun
Prof. Jay Prakash Yadav, Dean, Jagran School of Law, Dehradun
Prof. Chai-Jui Cheng, Secretary-General of Academy of International Law.
Prof. David Tushaus, Missouri Wistern Criminal Justice, U. S.
Prof. Chia- Yin Hung, Dean, School of Law, Soochow University, Taipei
Prof. V.L. Mony, Ex. Dean, School of Law, VIBS, New Delhi
Prof. T.N. Prasad, Director, Law School, BBD University, Lucknow
Prof. Moin Athar, Institute of Legal Studies, SRMU, Lucknow
Dr. Binu N., Government Law College, Thiruvananthapuram, Kerala
Dr. A.P. Singh, RML National Law University, (RML NLU), Lucknow
Dr. G.P. Sahoo, Law School, Banaras Hindu University, Varanasi
Dr. R.K. Patel, Law School, Banaras Hindu University, Varanasi
Dr. N.K. Mishra, Law School, Banaras Hindu University, Varanasi
Dr. V.K. Pathak, Law School, Banaras Hindu University, Varanasi
Dr. Raju Majhi, Law School, Banaras Hindu University, Varanasi
Dr. V.K. Saroj, Law School, Banaras Hindu University, Varanasi
Dr. Adesh Kumar, Law School, Banaras Hindu University, Varanasi
Dr. M.K. Malviya, Law School, Banaras Hindu University, Varanasi
Dr. V.P. Singh, Assistant Professor of Law, IIM Lucknow, Lucknow
Dr. K.S. Brijwal, Law School, Banaras Hindu University, Varanasi
Dr. Anil Kumar Maurya, Law School, Banaras Hindu University, Varanasi
Dr. Pradip Kumar, Law School, Banaras Hindu University, Varanasi
Dr. Prabhat Saha, Law School, Banaras Hindu University, Varanasi
Dr. B. K. Das, Senior faculty, L. R. Law College, Sambalpur Odisha, India
Dr. Rajneesh Yadav, RML National Law University, (RML NLU), Lucknow
Dr. S. Kandasamy, Head, Law and Governance, Central University of Rajasthan
Dr. Abhishek Tiwari, Assistant Professor, Faculty of Law, University of Rajasthan, Jaipur
Dr. Yogendra Singh, School of Law IFTM University, Moradabad, Uttar Pradesh
PANEL OF REFEREES:

Dr. B. K. Das, L.R.Law College, Sambalpur Odisha

Dr. Aparna Singh, RML National Law University, (RML NLU), Lucknow.
Dr. Rajeev Kumar Singh, Law School, Uttaranchal University, Dehradun
Dr. Anjali Agrawal, Law School, Banaras Hindu University, Varanasi
Dr. Sudhir Kumar, Assistant Professor, Faculty of Law, HNB Garhwal University, Utterakhand
Dr. S. D. Sharma, HOD, School of Law, NIMS University, Jaipur, Rajasthan
Dr. Surendra Singh, Officer, Charted Accountant of India, New Delhi
Dr. Amit Mehrotra, National Judicial Academy, Bhopal, M.P.
Dr. Shaiwal Satyarthi, Chankya National Law University, Patna
Dr. Sudhir Kumar, Institute of Legal Studies, SRMU, Lucknow
Dr. Digvijay Singh, Assistant Professor, Central University Gaya, Bihar
Dr. Deo Narayan Singh, Assistant Professor, Central University Gaya, Bihar
Dr. Akilesh Kumar Pandey, Assistant Professor, West Bengal
Dr. Amandeep Singh, Assistant Professor, RML National Law University, (RML NLU), Lucknow
Dr. Pramod Kumar, Sant Kripal Singh Institutte of Law, Banda, UP
Dr. Prashant Srivastava, SRM University, Lucknow
DR. Vivek Kumar, Assistant Professor, Law College Dehradun
M/s. Bandna Shekhar, Assistant Professor, Manav Bharti University, Solan
M/s. Yasha Sharma, Assistant Professor, School of Law, UPES, Dehradun
Mr. Krishna Murari Yadav, Assistant Professor, Faculty of Law, University of Delhi, Delhi
M/s. Shashya Mishra, Assistant Professor, Amity University, Lucknow
M/s. Sweta Chaturvedi, Assistant Professor, Law School, BHU, Varanasi
Mr. Alok Kumar Yadav Faculty of Law, HNB Garhwal University
Mr. Anurag Agrawal, Assistant Professor, Law School, BHU, Varanasi
Mr. Abhishek Rai, Assistant Professor, Law School, BHU, Varanasi
Mr. Vishnu Dutt Sharma, District and Session Judge, Rajasthan
Mr. Indra Kumar Singh, Assistant Professor, Institute of Legal Studies, SRMU, Lucknow
Mr. R. Bharat Kumar, National Law University (DSNLU), Visakhapatnam
Ms. Soma Bhattacharyya, Assistant Professor, National Law University (DSNLU), Visakhapatnam.
Mr. Abhiranjan Dixit, Assistant Professor, Law College Dehradun
Mr. Avishek Raj, Assistant Professor, Faculty of Law, ICFAI University, Dehradun
Mr. Vinay Kumar Pathak , Assistant Professor, Shri Rama Krishna College of Law, Satna, M.P.
EDITORIAL BOARD OF LEGAL RESEARCH SCHOLARS:

Mr. Amitabh Srivastava, NLSIU, Bangalore, Karnataka

Mr. Anil Kumar, Faculty of Law, Banaras Hindu University
Mr. Ajay Kumar, Faculty of Law, Banaras Hindu University
Mr. Akash Ram, Faculty of Law, Banaras Hindu University
Mr. Ashutosh Yadav, Faculty of Law, Banaras Hindu University
Mr. Amrendra Pratap Yadav, Faculty of Law, Banaras Hindu University
Mr. Arvind Nath Tripathi, National Law University, Vishakhapattanam
Mr. Amit Kumar Maurya, Faculty of Law, Banaras Hindu University
Mr. Abhishek Kumar Singh, Faculty of Law, Banaras Hindu University
M/s. Babita Singh, Faculty of Law, Banaras Hindu University, Varanasi
Mr. Eshfagholrahman Sabouri, Deprt. Of Mass Commu., BHU, Varanasi
Mr. Indresh Kumar, Faculty of Law, Banaras Hindu University
Mr. Kuldeep Kumar, Faculty of Law, Banaras Hindu University
Mr. Lav Lesh Kumar, School for Legal Studies, BBAU Lucknow
Mr. Mojtaba Sadeghi Moghadam, Faculty of Law, Banaras Hindu University
Mr. Mani Pratap Yadav, Faculty of Law, Banaras Hindu University
Mr. Mukesh Kumar, Faculty of Law, Banaras Hindu University
Mr. Munish Swaroop, School for Legal Studies, BBAU Lucknow
Mr. Pradeep Kumar Giri, Faculty of Law, Banaras Hindu University
Mr. Pratima Giri, Faculty of Law, Banaras Hindu University
Mr. Praveen Singh, Faculty of Law, Banaras Hindu University
M/s. Roksana Hassanshahi Varashti, Faculty of Law, BHU, Varanasi
Mr. R.V. Dhumal, Center for Law and Governance, JNU, New Delhi
Mr. Rohit Kumar, NLSIU, Bangalore, Karnataka
Mr. Randhir Saroj, Faculty of Law, Banaras Hindu University
Mr. Ranjeet Kumar, Faculty of Law, Banaras Hindu University
Mr. Ramesh Kumar, Faculty of Law, Banaras Hindu University
Mr. Raghvendra Kumar Chaudhary, Faculty of Law, Banaras Hindu University
Mr. Shiv Kumar Sintu, Faculty of Law, Banaras Hindu University
Mr. Sandeep Kumar, Institute of Management Studies, B.H.U., Varanasi
M/s. Shiva Pandey, Research Scholar, Faculty of law, B.H.U, Varanasi
Mr. Sunil Kumar, Faculty of Law, Banaras Hindu University
Ms. Smita Goswami, Amity Law School, Noida
Ms. Swati, Faculty of Law, Banaras Hindu University
Ms. Suchi Singh, Faculty of Law, Banaras Hindu University
Mr. Upendra Sah, Faculty of Law, Banaras Hindu University
Mr. Vipin Bihari Yadav, Faculty of Law, Banaras Hindu University
Mr. Vinod Kumar Chaursia, Faculty of Law, Banaras Hindu University
Mr. Vinayak Kumar Chaursiya, Faculty of Law, Banaras Hindu University
Mr. Vijay Bhan, Faculty of Law, Banaras Hindu University
From the Chief Editor
It is our pleasure to present the Volume 5, Issue IV, Part-II, October-December, 2018 of Ad Valorem
(Journal of Law) ISSN: 2348-5485. The experience has been splendid and full of challenges. Our team faced
all challenges with never-ending energy and attitude. It depicts boundless enthusiasm, emotions, imagination
and of course talent of the young minds. We applaud this creative endeavor with fine contribution from
academicians and Research Scholars for the success of the journal.
Ad Valorem (Journal of Law) is a blind two fold peer reviewed quarterly Journal. Accordingly, it
brings to the readers only select articles of high standard and relevance. In a country governed by the rule of
law, it is important that awareness about the research is created among those who are supposed to be
concerned with these researches. Academicians can play a very important role in the development of the higher
research, and there is need to encourage young minds to participate in development of research based on the
needs of the changing society and technical advances. This Journal provides an excellent platform to all the
academicians and Research Scholars to contribute to the development of sound Research for the country.
We would like to express our gratitude to the Editorial Advisory Board and the Panel of Referees for
their constant guidance and support. Appreciation is due to our valued contributors for their scholarly
contributions to the Journal. We would also like to thank our Editorial members, whose valuable suggestions
and continuous support to make this edition a success. We are also thankful to those who facilitated quality
printing of this Journal. We wish to encourage more contributions from academicians as well as Research
Scholars to ensure a continued success of the journal.
We hope that this issue of Ad Valorem (Journal of Law) will prove to be of interest to all the readers.
We have tried to put together all the articles coherently. Suggestions from our valued readers for adding further
value to our Journal are however, solicited.
Thank you.

Editor in Chief
Ad Valorem (Journal of Law)
ISSN: 2348-5485
AD VALOREM (Journal of Law)
An International Peer Reviewed Research Refereed Quarterly Journal
Volume 5, Issue IV, Part-II, October-December, 2018

CONTENTS
REAL ESTATE REGULATION IN INDIA: KEY FEATURES AND .. 1-7
Dr. Ramesh Kumar Verma
PLEA BARGAINING: EXECUTION PROBLEMS IN INDIA 8-14
Anoop Kumar Singh
SURROGACY MAKING INROADS INTO MEDICAL SOCIAL AND 15-19
ECONOMIC AREAS
Dr. Preeti satpathi
RELEVANCE OF RULE OF LAW IN INDIA IN 21ST CENTURY-A 20-24
STUDY
Dr. Ashish Kumar Shukla
UNCONVENTIONAL TRADEMARKS: CRITICAL AND 25-30
COMPARATIVE REFLECTIONS
Ruchir Singh
INTRICACIES AND INEXTRICABILITIES OF REAL ESTATE … 31-42
Dr. Md. Sultan Haidar Alam
CHILD TRAFFICKING AND LAWS 43-49
Dr. Kabindra Singh Brijwal
FREEHOLD OF LAND IN PRACTICING JHUM IN NORTH EAST 50-53
INDIA: A CASE STUDY
Dr. Md. Bahar Ud Din Shah
EPIC FLORA OF BIHAR AND JHARKHAND 54-60
S.S. Mandal & A. K. Ray
FORENSIC SCIENCE AND CYBER LAWS: A STUDY IN INDIAN 61-64
PERSPECTIVE
Aneeza Bishnoi
LAND ACQUISITION LAWS AND THE CONCEPT OF FOOD 65-67
SECURITY: AN ANALYSIS
Ompal Shokeen
JUVENILE DELINQUENTS AND BEHAVIOUR CHANGING 68-71
THEORIES
Prashant krishan
RIGHTS AND PROTECTION OF SMUGGLED AND TRAFFICKED .. 72-78
Tasneem Kausar & Seema Siddiqui
CRIMINAL JUSTICE SYSTEM IN INDIA AND CYBER CRIME WITH 79-83
SPECIAL REFERENCE TO SEXUAL OFFENCES AGAINST WOMEN
Ajay P. Tushir
EVOLUTION OF RIGHTS OF WOMEN UNDER HINDU LAW 84-88
Priya Chaudhary
Invitation and Guidelines for Contributors
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AD VALOREM- Journal of Law: Volume 5: Issue IV: Part-II: October-December 2018: ISSN : 2348-5485 25

UNCONVENTIONAL TRADEMARKS: CRITICAL AND COMPARATIVE REFLECTIONS

Ruchir Singh

Introduction
Trademark law is usually thought to be unrelated to technological change. In fact, conventional wisdom
would have it that trademark law has long been an odd fit in the great triumvirate of intellectual property. However,
law of Trade Marks has witnessed unconventional trends and dynamics in the recent past. Number of non-traditional
and unconventional marks are being used or proposed to be used in the market. Speaking the traditional cannons of
Trade Mark law these new and innovative marks do not fit into the formal definition of Trade Mark law. However,
their speciality lies in being unconventional and innovative. These new marks tend to alter the traditional principles
of Trade Mark law in their letter and spirit. The work aspires to outline these new, innovative and non-traditional
Trade Marks while emphasising on their special traits and how traditional Trade Mark law takes call on while
considering their protection.
In a nutshell, the article seeks to examine the following quests:
1. Whether there is any functional difference between the nature, definition and characteristics of trademarks
and unconventional trademarks?
2. Whether an original work which is a subject matter of copyright law but also display features of a
trademark can get concurrent protection in both regimes?
3. Whether the requirement of graphical representation is a sine qua non for registration of an unconventional
trademark?
4. Whether there exists symbiotic relationship between courts of different competing jurisdictions with regard
to registration of unconventional trademarks?
5. Whether the Trade Mark Rules, 2002, and Draft Manual for Trademark Practice and Procedure, 2009
provides sufficient machinery for regulation of unconventional trademarks in the Indian terrain?
Indeed, a trade mark is one of the most valuable assets1 of every well known company. Although the
original purpose of a trade mark is an indication of ownership over a particular good or service, this purpose has
extended to advertising, with trademarks becoming indicators of the source of goods or services. 2 They serve as an
identity sign, both to consumers who purchase a good or service and to other members of the society, signifying the
style, status and preferences of a person who chooses to buy this particular good or service. A Louis Vuitton
handbag, sports shoes with a Nike Swoosh or a Mini Cooper car can say a lot about their owners. This is why
trademarks have a unique power of immediately creating an association in people’s minds between the label, its
origin, and value and quality.3
Due to this power, and because competition in the market does not permit any break and requires constant
activity in traders’ race for consumer preferences, the concept of a trade mark has expanded to include fields that
were not originally covered, such as shapes, sounds, colours, holograms, and even scents and tastes. These types of
trade mark are commonly known as non-traditional or non-conventional trademarks. Technological development has
enabled 4such marks to be valid and protected, making the system of trade mark registration and enforcement much
more liberated. This is, no doubt, an encouraging trend for all traders who are happy to make their production or
services stand out, be original and recognisable.


Research Scholar , Faculty of Law, Banaras Hindu University, [email protected]
1
L. Bently, B. Shreman, Intellectual Property law, 2nd edition, Oxford, Oxford University Press, 2004, p. 694.
2
Ibid
3
W. Cornish, D. Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 6th ed. London, Sweet &
Maxwell, 2007, p. 603.
4
V.K. Ahuja, “Non-traditional Trade Marks: New Dimension of Trade Marks Law”, E.I.P.R.(European Intellectual Property
Review) 2010, 32(11), 575-581, 575.
AD VALOREM- Journal of Law: Volume 5: Issue IV: Part-II: October-December 2018: ISSN : 2348-5485 26

On the other hand, new developments raise many questions, the first of them being: what is the extent of
afforded protection, and how to avoid total and absurd monopolisation of every possible sign. The research paper
attempts to respond to the changing nature of trademarks and balance the interests of the parties involved.
Meaning and Garden Variety of Unconventional Trademarks
Due to the recent development of our digital environment each country is newly introducing, or is actively
discussing the introduction of, a system for various types of trademarks, such as non-traditional trademarks that can
be visually recognized, and non-visual trademarks such as sound marks and scent marks. A brief introduction of
some of the unconventional trademarks is as follows:
Scent (Fragrance) marks
Scent or perfume or fragrance generally attracts and impress one and all. In the commercial world where
attracting consumer based on various reasons and measures is very important, application of perfume or fragrance
representing goods and services could well get them near the consumer. Meanwhile, there is a requirement under the
Trade Mark law which states that the chosen mark should not essentially detail or describe the nature, content or
characteristic features of the goods or services that it represents.1 In the year 1990 in In Re Clarke case2, the US
patent and trademark office considered a particular type of scent of plumeria added to swing thread was registered as
a valid Trade Mark.
Textile trademarks
The marks which represent such fashionable textile fabrics or costumes could be deserving protection
under the Trade Mark law to represent a particular brand image. The one who intends to register the textile
trademark representing a brand image will have to file an application designating claimed textile mark with the
trademark registry. The procedure for registration of textile marks is similar to that of an ordinary or regular Trade
Mark. While deciding on the application for the registration of a textile mark the Registrar can hold two marks to be
similar even if they satisfy the test under the relevant rules.3 The textile mark should prima facie distinct from other
marks.
Color marks
According to the TRIPS agreement "color combinations" shall be eligible for registration as Trade Marks
although members may make registrability depending on distinctiveness acquired through use and members may
require, as a condition of registration, that signs be visually perceptible. The Indian Trade Marks Act also ethos the
same language with reference to color marks and color combinations as trademark. Perhaps, color can be easily
identified whenever a particular color is continuously used a particular set of products. Even an illiterate person who
cannot read and understand the name of the marks, its bottom line or the information that it is providing can very
well follow the colour of the product.
Sound marks
The TRIPS agreements in its definition of Trade Marks states that Trade Mark could be any sign capable of
distinguishing goods and services.4Though explicitly the definition of Trade Marks under the TRIPS agreement does
not talk or imply about sound marks, it is felt that since any sign could be a Trade Mark, even the sign of sound
could also be a potential trademark. The Trade Marks Act of India also sounds the language of the TRIPS agreement
while defining the scope and content of Trade Marks. It could be any sound which could potentially identify a
particular set of goods or services. Therefore, uniqueness of sound marks, their reach and consumer identification is
undisputed.
Flavor Marks
One can choose a particular taste or flavor as the Trade Mark of his or her product provided that taste or
colour has acquired distinctive character in terms of having consumer association to have identified the same as a

1
David Vaver, Recent Trends In European Trademark Law: Of Shape, Senses and Sensation, 95, Trademark Reporter. Pg. No:
85.
2
17 U.S.P.Q 2d1238 (T.TA.B 1990)
3
Sreenivasulu N.S, Intellectual Property Rights, Regal Publications, New Delhi, Second Revised and Enlarged Edition, Pg. No:
148.
4
Therefore protection of sound trademark is left to and up to the member states of the TRIPS in accordance with their local
legislation.
AD VALOREM- Journal of Law: Volume 5: Issue IV: Part-II: October-December 2018: ISSN : 2348-5485 27

distinct Trade Mark. Substantial use of the taste mark is essential before seeking protection and registration. 1. The
claimed flavor needs to be unique and be very specific in its application and marketing. These flavors could be
sensed and the effect could be felt by the users and the consumers. In the western countries such as US and Europe
there is increasing demand for recognising the taste or flavor marks. However, in the eastern world these marks have
not yet received the attention of the businessman and the consumer.
Feel Marks
Sometime, we get the feelers of the goods or products generated out of touch of the texture of the mark.
Touch one among the various senses marks its presence and appeal in the business world though apparently Trade
Marks. These marks are also known as touch marks or texture marks which essentially give the feelers to the
consumer with reference to its existence and the goods or services it is representing. Perhaps, the touch mark should
be distinctive to the consumers; it must not be just a decorative or ornamental element. It must me a beyond
decoration and packaging of the goods or services that it is representing and must possess the feature of regular
Trade Mark.
Motion Marks
Moving images, logos, motion pictures, video clips, film clips, documentary clips are also registered as
Trade Mark in few jurisdictions. In USA, numbers of motion of marks have been protected under the Federal Trade
Marks Act. For instance the Trade Mark of Motion Pictures, 20th Century Fox Movies, Columbia Pictures are well
known motion marks registered in USA. Perhaps, in the field of media the movies the presence of motion marks is
extremely felt and recognised. In case of motion marks, the marks are represented by a moving image or clip which
identifies a particular source or origin with reference to a product of service. For instance in case of 20th Century
Fox Movies the phrase 20th Century Fox movies appears in two lines in golden color words. The visuals shows the
phrase while camera moves from right to left bringing the phrase exactly in the middle of the television or theaters
screens. Likewise there are motion pictures of Columbia pictures and Motion Pictures.2
hape Marks
The definition of the term Trade Mark under the Indian Trade Mark Act includes packaging of the product.3
The TRIPS agreement also mandates the protection of shape marks by obligating the member states to consider
packaging of the products as Trade Marks. Perhaps, the latest Trade Mark law in India the Trade Marks Act of 1999
introduces shape marks including packaging of goods as Trade Marks protected in India.4 For instance the shape of
the bottle of Coca Cola cool drink is a mark protected as shape mark carrying the shape of the cool drink bottle
representing the business of Coca Cola Company and its product of Coca Cola cool drink.
Trade mark Law in the European Union
Two initiatives combine to create European Union trademark law—The Directive defines what may be
registered as a trademark, the grounds for refusing or invalidating a trademark, and the rights conferred by a
trademark and the Regulation instituted a unitary trademark system in which a single registration of a Community
Trade Mark grants exclusive protection and rights to the trademark holder in all European Union countries
simultaneously. 5
Theoretically, in the European Union, any mark, including a sound, scent, or color mark, is registrable, as
long as it is capable of graphic representation and distinguishes the goods or services of one undertaking from the
goods or services of another.6 While the European Union treads cautiously as to whether non-traditional marks
should be registrable, its decisions open the door to the possibility of such registration, and its registration
requirements fashion a body of trademark law that furthers policies the United States seeks to promote.7

1
David I. Brainbride, Smell, Sound, Clour and Shape Trade Marks: An Unhappy Filtration?, J.B.L, 2004, MAR, 219-246.
2
Columbia Motion Trademark (USPTO TM 1975999)
3
Section 2 (1) (zb) of the Indian Trademarks Act, 1999.
4
Sreenivasulu N.S, Intellectual Property Rights, Regal Publications, New Delhi, Second Revised and Enlarged Edition, Pg. No:
148.
5
See, e.g., Vincent O’Reilly, The Community Trademark System: A Brief Introduction and Overview, 8 MARQ. INTELL. PROP.
L. REV. 93, 93 (2004), available at http:// scholarship.law.marquette.edu/iplr/vol8/iss1/3.
6
Shield Mark BV v. Joost Kist H.O.D.N., 2004 E.T.M.R. 33
7
See, In re Int’l Flavors & Fragrances, 183 F.3d 1361, 1367 (Fed. Cir. 1999).
AD VALOREM- Journal of Law: Volume 5: Issue IV: Part-II: October-December 2018: ISSN : 2348-5485 28

Graphic representation is not merely a technical requirement for registration in the European Union; it
embodies the “principle of precision.” Vitally important in non-traditional trademark registration, graphic
representation ensures that the scope and nature of the mark are clearly defined and comprehensible so that searchers
checking the registry can readily ascertain what is registered.1
The E.C.J. requires graphic representation by “means of images, lines or characters, so that the mark can be
precisely identified.”2 The representation must be “clear, precise, self-contained, easily accessible, intelligible,
durable and objective.”3 According to the E.C.J., the graphic representation requirement enables precise definition of
of the mark so that the trademark holder, consumers, and competitors can ascertain the scope of trademark
protection. Graphic representation also assists authorities in properly examining, publishing, and eventually
protecting the mark from unfair use by competitors.
The European Union’s second requirement for trademark protection, the distinctiveness requirement,4
ensures that a trademark designates source and enables consumers to distinguish one producer’s goods from
another’s without confusion. Distinctiveness can be inherent, in which case consumers immediately recognize the
mark as distinguishing goods, or it can be acquired through consumer recognition, i.e., secondary meaning.5
European Union trademark law acknowledges that while consumers often recognize traditional marks such as words
and logos as readily indicating source, this may not be the case with colors, sounds, and scents.6 As such, non-
traditional trademarks are unlikely to be regarded as inherently distinctive and generally will need substantial
acquired distinctiveness, i.e., consumer recognition, for registration.
These requirements arguably restrict the registration of non-traditional marks such as sounds, scents, and
colors in the European Union.7 However, as noted, sounds and scents are not visually perceptible, making clear and
precise definition of sound and scent marks difficult to achieve. Further, consumers may not recognize sounds,
scents, or colors as indicating source.8 As such, these strict requirements actually promote the underlying policies of
trademark law.
Trade mark Law in the United States
In the United States, the Lanham Act codifies United States trademark law. Federal registration does not
establish trademark rights;9 rather, actual or constructive use of the mark in commerce triggers federal protection.
Registration, however, grants national trademark protection, provides many statutory benefits to the trademark
holder, and plays an important role in implementing the Lanham Act’s objectives. In the United States, color, sound,
and scent marks may be registered if they are used in commerce,10 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.11
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.” 12

1
Sieko Hidaka et al., A Sign of the Times? A Review of Key Trade Mark Decisions of the European Court of Justice and Their
Impact Upon National Trade Mark Jurisprudence in the EU, 94 TRADEMARK REP. 1105, 1124 (2004), available at
www.inta.org >TMR >Documents >vol.94.
2
Sieckmann v. Deutsches Patent- und Markenamt, 2003 E.T.M.R. 37, 46.
3
Shield Mark BV v. Joost Kist H.O.D.N., 2004 E.T.M.R.33, 55.
4
The Directive’s distinctiveness requirement appears to be two-fold. The mark, to function as a trademark, must be capable of
distinguishing goods and must have distinctive character. Directive, Arts. 2, 3(1)(b)-(d).
5
Directive, Arts. 3(1)(b), 3(3); Hidaka, supra note 23, at 1117. Distinctiveness is inherent when the mark is entirely unique or
coined or when there is no semantic connection between the mark and the product or service.
6
See, e.g., Case C-104/01, Libertel Groep BV v. Benelux-Merkenbureau, 2003 E.T.M.R. 63, 40-41.
7
Bainbridge, supra note 9, at 243-44.
8
See, e.g., Bainbridge, supra note 9, at 222.
9
See, e.g., In re Int’l Flavors & Fragrances, 183 F.3d 1361, 1366 (Fed. Cir. 1999).
10
Lanham Act § 1, 15 U.S.C. § 1051(a)(1) (2002).
11
See Wal-Mart Stores v. Samara Bros., 529 U.S. 205 (2000).
12
Ibid at 1367.
AD VALOREM- Journal of Law: Volume 5: Issue IV: Part-II: October-December 2018: ISSN : 2348-5485 29

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 color requires a color 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. The description also provides notice to searchers of the registry of features of the
trademark not readily apparent from the drawing alone.
The U.S.P.T.O. publishes the drawings and descriptions in the Official Gazette, making them available to
searchers of the trademark registry.1The specimen shows in a precise manner the mark’s use in commerce and the
public’s perception the mark. The specimen is a duplicate or sample of the mark as viewed in connection with the
goods, such as a label, tag, container, display, or photograph. As an integral part of the examination process,
trademark examiners inspect the specimen to ascertain whether the mark functions as a trademark, whether
competing companies are using the same mark, and whether the mark can be accurately represented in a drawing.
Trade mark Law in the India
Unlike the case in US and EU, very few unconventional marks have received registration in India.
Nonetheless, unlike the Trade and Merchandise Marks Act of 1958, the Trade Marks Act of 1999 (the Act) and the
Trade Marks Rules of 2002 do refer to non-conventional trademarks.2 Another interesting document which needs to
be referred to is the Draft Manual for Trademark Practice & Procedure (Draft Manual).
A reading of Sections 2(1)(zb) and 2(1)(m) of the Act shows that the definition of “trade mark” has been
widened to include shapes, packaging and combination of colours. As specified in the Manual3, this is an inclusive
definition including any mark as long as the mark is capable of being represented graphically and capable of
distinguishing the goods or services of one person from that of the others. Nonetheless, it has been stated that
colours, shapes, sounds and smells will require “special consideration” during registration. With respect to the
graphical representation of sound marks, India has simply imported the Shield Mark doctrine. 4 The Trade Mark
Registry has not sought to probe into whether representation through musical notes is intelligible to everyone, and
whether it is all-encompassing. Nonetheless, with regard to distinctiveness, the Manual specifically lists sounds
which are not distinctive and thus will not be
Registered.
In the context of scent marks, the Registry has again directly applied the Sieckmann test, stating that though
smells are registrable, the fulfilment of the graphical representation criteria becomes difficult post the Sieckmann
holding. It is disappointing to note that the Registry has not suggested any alternative method of graphical
representation in spite of stating that smells are registrable.
Instances of Registration
Three non-conventional trademarks have received registration in India so far.Yahoo!’s yodel is the first
non-conventional mark to be registered. The yodel was represented through musical notes.5 The shape of the Zippo
lighter was also granted registration, which was later confirmed in a trademark infringement suit in the Delhi High
Court, on the ground that it was distinctive.6 The latest nonconventional trademark to be registered is a sound mark,
held by a German company Allianz Aktiengesellschaft.7
Conclusion
The registration of color, sound, and scent non-traditional trademarks necessitates increased specificity and
precision. Increased specificity in color, sound, and scent registrations would benefit United States trademark law by

1
The Official Gazette is the official journal of the U.S.P.T.O.
2
See Taj Kunwar Paul et al., Reincarnation of Trade Mark Law in India, at p.86
3
See Section 3, Draft Manual.
4
See Section. 5.2.2.1, Draft Manual.
5
Peter Ollier, Yahoo Yodels into India’s TM Registry, 183 MANAGING INTELLECTUAL PROPERTY 14 (2008).
6
Zippo v. Anil Manchandani (unreported, CS (OS). 1355/2006).
7
Santosh Singh, Yet Another Sound Mark Granted, SPICYIP, available at http:/spicyipindia.blogspot.com/2009/07/yet-another-
sound-mark-granted.html
AD VALOREM- Journal of Law: Volume 5: Issue IV: Part-II: October-December 2018: ISSN : 2348-5485 30

protecting the interests of the consumer, the trademark owner, and the marketplace. As a result, trademark
registrations would more clearly define non-traditional marks and would better protect registrants’ rights. The
trademark registry would more effectively provide notice to a prospective user of an identical or confusingly similar
mark before that user expends large sums developing and promoting a new brand. Additionally, increased specificity
would minimize consumer confusion as to source, enabling the consumer to correctly identify and purchase its
preferred goods and services.
By requiring the use of an international color code, color mark registrations would provide precision and
enable clear identification of unique colors. Publishing a color drawing and a facsimile of the specimen in the
Official Gazette would provide increased clarity and notice to the marketplace. Sound mark registration should
include pictorial representation by detailed musical notation or a sonogram to enable quick comparison of sounds.
Additionally, requiring that a description must supplement the representation would improve comprehension of the
mark. Availability of the sound to searchers of the registry in a digital audio format would also enable a clear and
precise understanding of the scope of the mark.
Olfactory scent mark registration would benefit from implementing a smell classification system or
adopting other technologies such as an electronic nose or spectrogram, enabling quick identification of, and
differentiation among, scent marks. Providing opportunities to sample the scent in conjunction with immediate
access to a graphic depiction and a precise description would provide further clarity as to the nature and scope of the
mark.
United States trademark law would be stronger and more effective if it incorporated several of the
European Union’s registration requirements. Further, by utilizing current registration procedures to their fullest
potential, United States trademark law would provide the specificity and certainty needed to create and protect rights
in non-traditional trademarks. While these new methods may be costly, they would aid in administration of the
trademark system, create legal certainty, and further the policies of United States trademark law. Further India needs
to revamp its law focussing on domestic laws with a bit of reconstruction on the lines of leading IPR regimes.
ISSN: 2348-5485

AD VALOREM
Journal of Law
An International Peer Reviewed Research Refereed Quarterly Journal
(JIFE Impact Factor: 3.934, Approved by UGC Journal No. 41336)

Patron:
Hon’ble Justice K.D. Shahi
Retired Judge, Allahabad High Court, Allahabad

Professor B.C. Nirmal

Ex. Vice Chancellor of National University of Study & Research in Law, Ranchi
Former Head & Dean, Faculty of Law, Banaras Hindu University, Varanasi

Editor in Chief:
Dr. Chandra Nath Singh
Assistant Professor, Faculty of Law, Banaras Hindu University, Varanasi
LL.B. (BHU), LL.M. (RMLNLU), Ph.D. (BHU), UGC-NET/JRF/SRF

Mode of Citation:
(Ad Valorem), Volume 6, Issue I, 2019, <Page No.>

VOLUME: 6 ISSUE: I PART-II JANUARY –MARCH 2019

Published by:
Future Fact Society, Lanka, BHU, Varanasi (U.P.) India
AD VALOREM
Journal of Law
An International Peer Reviewed Research Refereed Quarterly Journal

ISSN: 2348-5485

@ Approved By UGC

Correspondence Address:
Editor in Chief:
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Ad Valorem (Journal of Law)
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Phone: +919305292048, +919450248260
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Baba Binding, Lanka, BHU, Varanasi-221005, Utter Pradesh, India.
EDITORIAL BOARD:

Dr. B. K. Das, L.R.Law College, Sambalpur Odisha

Mr. Amitabh Srivastava, NLSIU, Bangalore, Karnataka

Mr. Anil Kumar, Faculty of Law, Banaras Hindu University
Mr. Ajay Kumar, Faculty of Law, Banaras Hindu University
Mr. Akash Ram, Faculty of Law, Banaras Hindu University
Mr. Ashutosh Yadav, Faculty of Law, Banaras Hindu University
Mr. Amrendra Pratap Yadav, Faculty of Law, Banaras Hindu University
Mr. Arvind Nath Tripathi, National Law University, Vishakhapattanam
Mr. Amit Kumar Maurya, Faculty of Law, Banaras Hindu University
Mr. Abhishek Kumar Singh, Faculty of Law, Banaras Hindu University
M/s. Babita Singh, Faculty of Law, Banaras Hindu University, Varanasi
Mr. Eshfagholrahman Sabouri, Deprt. Of Mass Commu., BHU, Varanasi
Mr. Indresh Kumar, Faculty of Law, Banaras Hindu University
Mr. Kuldeep Kumar, Faculty of Law, Banaras Hindu University
Mr. Lav Lesh Kumar, School for Legal Studies, BBAU Lucknow
Mr. Mojtaba Sadeghi Moghadam, Faculty of Law, Banaras Hindu University
Mr. Mani Pratap Yadav, Faculty of Law, Banaras Hindu University
Mr. Mukesh Kumar, Faculty of Law, Banaras Hindu University
Mr. Munish Swaroop, School for Legal Studies, BBAU Lucknow
Mr. Pradeep Kumar Giri, Faculty of Law, Banaras Hindu University
Mr. Pratima Giri, Faculty of Law, Banaras Hindu University
Mr. Praveen Singh, Faculty of Law, Banaras Hindu University
M/s. Roksana Hassanshahi Varashti, Faculty of Law, BHU, Varanasi
Mr. R.V. Dhumal, Center for Law and Governance, JNU, New Delhi
Mr. Rohit Kumar, NLSIU, Bangalore, Karnataka
Mr. Randhir Saroj, Faculty of Law, Banaras Hindu University
Mr. Ranjeet Kumar, Faculty of Law, Banaras Hindu University
Mr. Ramesh Kumar, Faculty of Law, Banaras Hindu University
Mr. Raghvendra Kumar Chaudhary, Faculty of Law, Banaras Hindu University
Mr. Shiv Kumar Sintu, Faculty of Law, Banaras Hindu University
Mr. Sandeep Kumar, Institute of Management Studies, B.H.U., Varanasi
M/s. Shiva Pandey, Research Scholar, Faculty of law, B.H.U, Varanasi
Mr. Sunil Kumar, Faculty of Law, Banaras Hindu University
Ms. Smita Goswami, Amity Law School, Noida
Ms. Swati, Faculty of Law, Banaras Hindu University
Ms. Suchi Singh, Faculty of Law, Banaras Hindu University
Mr. Upendra Sah, Faculty of Law, Banaras Hindu University
Mr. Vipin Bihari Yadav, Faculty of Law, Banaras Hindu University
Mr. Vinod Kumar Chaursia, Faculty of Law, Banaras Hindu University
Mr. Vinayak Kumar Chaursiya, Faculty of Law, Banaras Hindu University
Mr. Vijay Bhan, Faculty of Law, Banaras Hindu University
From the Chief Editor
It is our pleasure to present the Volume 6, Issue I, Part-II, January-March, 2019 of Ad Valorem
(Journal of Law) ISSN: 2348-5485. The experience has been splendid and full of challenges. Our team faced
all challenges with never-ending energy and attitude. It depicts boundless enthusiasm, emotions, imagination
and of course talent of the young minds. We applaud this creative endeavor with fine contribution from
academicians and Research Scholars for the success of the journal.
Ad Valorem (Journal of Law) is a blind two fold peer reviewed quarterly Journal. Accordingly, it
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We would like to express our gratitude to the Editorial Advisory Board and the Panel of Referees for
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We wish to encourage more contributions from academicians as well as Research Scholars to ensure a
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We hope that this issue of Ad Valorem (Journal of Law) will prove to be of interest to all the readers.
We have tried to put together all the articles coherently. Suggestions from our valued readers for adding further
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Thank you.

Editor in Chief
Ad Valorem (Journal of Law)
ISSN: 2348-5485
AD VALOREM (Journal of Law)
An International Peer Reviewed Research Refereed Quarterly Journal
Volume 6, Issue I, Part-II, January-March, 2019

CONTENTS

AN ANALYSIS OF CONSTITUTIONAL FRAMEWORK PROMOT.. 1-5

Dr. Rajesh Kumar Garg & Dr. Kuldeep
EQUAL PAY FOR EQUAL WORK IN INDIA 6-9
Dr. Arshad Hussain & Zuha Shaheen
A CRITICAL SURVEY OF ENVIRONMENTAL LAW TO PROTE.. 10-12
Mahattam
ONLINE PORNOGRAPHY: A SHIFT FROM SURFACE WEB TO THE 13-16
DARK WEB
Kritika Singh
GLOBAL TERRORISM & ISSUES AGAINST NATIONAL SECURITY 17-23
POLICY: A PRACTICAL APPROACH IN INDIAN SYSTEM
Manisha Matolia & Prof. (Dr.) S. B. Misra
CHILD SEXUAL OFFENCES AND ITS PROTECTION UNDER LAW 24-27
Dr. Deepa Muduli
JUVENILE JUSTICE IN INDIA: AND CONTEMPORARY … 28-31
Manish Kapoor & Dr. Jai Shankar Ojha
INTERNATIONAL PERSPECTIVE ON MARITAL RAPE 32-35
Priyansvi Singh
PHILOSOPHY OF GLOBAL ADMINISTRATIVE LAW 36-38
Dr. Arun Prakash Singh & Bhriguraj Mourya
LAW OF SEDITION IN INDIA, THE LEGACY OF BRITISH 39-43
IMPERIALISM: A CRITIQUE
Anuj Kumar Tiwari
JUDICIAL REVIEW OF PREVENTIVE DETENTIONS IN INDIA 44-48
Deepak Kumar
DEBATES ON FORMAL AND SUBSTANTIVE EQUALITY 49-52
REGARDING WOMEN: THE ANITA HILL CASE TO CRITICA…
Kuldeep Kumar
COMPANY: MEANING, CHARACTERISTICS AND NATURE 53-55
Dr. Rahul Pandey
SOCIAL PSYCHOLOGY OF CORRUPTION AND AN OVERVIEW OF 56-59
CORRUPTION PREVENTION LAWS OF INDIA
Dr. M.P. Verma
ASSISTED REPRODUCTIVE TECHNOLOGY: A COMPARATIVE 60-65
LEGAL ANALYSIS OF U.K. AND U.S.A.
Dr. Sufiya Ahmed
JURISPRUDENTIAL ASPECTS OF UNCONVENTIONAL TRADE 66- 68
MARKS WITH REFERENCE TO LABOUR THEORY
Ruchir Singh
EXAMINING THE DIGITAL RIGHTS ECOSYSTEM IN INDIA 69-75
Venkatesh
THE INDUS WATER TREATY: ISSUES AND CHALLENGES 76-88
Roopesh Kumar
CONCEPT OF RIGHT TO PROPERTY OF WOMEN IN INDIA: AN 89-98
ANLYASIS
Ajay Kumar
Invitation and Guidelines for Contributors
Ad Valorem (Journal of Law), ISSN: 2348-5485 is a double blind peer reviewed Quarterly Journal. Its
objective is to create a platform, where ideas, concepts and applications related to Legal Interest can be shared. Its
focus is on pure and applied research on emerging issues in Law.
The articles are invited from Academicians, Practicing, Managers and Research Scholars.
Guidelines for Contributors
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inches on both sides.
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permission from the copyright holders if necessary.
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For Manuscript in English/ Hindi:-
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9. The format of references should be as follows:
Book- C.N. Singh, National Green Tribunal Act 2010: An Analysis, 1st Ed. Vanketesh Prakashan Lanka,
Varanasi (2013).
Edited Work- V.N. Shukla, Constitution of India 135 (M.P.Singh ed., 2008)
Article in Journal- C.N. Singh, Right to Recall: Issues and Challenges, International Research and
Review Journal, vol.2, no, 4, Oct. - Dec. (2013)
Online Article- Dr. Saurabh Sikka, “Biomedical Waste in Indian Context”, Available at
<http://www.environmental-expert.com/Files/0/articles/2078/2078.pdf
Newspaper Articles- Kapil Sinha, Contemporary India, Time of India, January 25, 2012.
10. Present each figure and table on a separate sheet of paper. All figures and tables must be consecutively
numbered using Arabic numerals with appropriate titles.
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publisher, date of publication, number of pages and price.
12. The final Article/Research Paper of the submission should be submitted in Electronic form. Electronic
copies of the submission should be mailed to
[email protected], [email protected].
13. All manuscript should be addressed to :

The Editor in Chief

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Subject: Assignment of Copyright

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First author Second author Third author

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AD VALOREM (Journal of Law)

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AD VALOREM- Journal of Law: Volume 6: Issue I: Part-II: January-March 2019: ISSN : 2348-5485
66

JURISPRUDENTIAL ASPECTS OF UNCONVENTIONAL TRADE MARKS

WITH REFERENCE TO LABOUR THEORY

Ruchir Singh

Introduction
LABOUR THEORY OF PROPERTY
The labour theory of property (also called the labour theory of appropriation, labour theory of ownership, labour
theory of entitlement, or principle of first appropriation) is a theory of natural law that holds that property originally
comes about by the exertion of labour upon natural resources. The theory has been used to justify the homestead
principle, which holds that one may gain whole permanent ownership of an unowned natural resource by performing
an act of original appropriation. In his Second Treatise on Government, the philosopher John Locke asked by what
right an individual can claim to own one part of the world, when, according to the Bible, God gave the world to all
humanity in common. He answered that persons own themselves and therefore their own labour.1 When a person
works, that labour enters into the object. Thus, the object becomes the property of that person. However, Locke held
that one may only appropriate property in this fashion if the Lockean proviso held true, that is, "... there is enough,
and as good, left in common for others".2
DEFINITION AND MEANING OF TRADEMARK
A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of
one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and
distinguishes the source of a service rather than goods. Some examples include: brand names, slogans, and logos.
The term "trademark" is often used in a general sense to refer to both trademarks and service marks.
Unlike patents and copyrights, trademarks do not expire after a set term of years. Trademark rights come from
actual “use” (see below). Therefore, a trademark can last forever - so long as you continue to use the mark in
commerce to indicate the source of goods and services. A trademark registration can also last forever - so long as
you file specific documents and pay fees at regular intervals.3
DEFINITION OF TRADEMARK UNDER INDIAN LAW
Sec 2 (1) (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; and—
(i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or
services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or
services, as the case may be, and some person having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for
the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the
case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark
whether with or without any indication of the identity of that person, and includes a certification trade mark or
collective mark;
Sec 2(1) (m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging or combination of colours or any combination thereof;
Sec 2(1)(q) “package” includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle,
wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork;
Sec 2(1)(j) “goods” means anything which is the subject of trade or manufacture;
Sec 2(1)(z) “service” means service of any description which is made available to potential users and
includes the provision of services in connection with business of any industrial or commercial matters such
as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage,
material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment,
amusement, construction, repair, conveying of news or information and advertising; Now we will try to


Research Scholar , Faculty of Law, Banaras Hindu University, [email protected]
1
D.M. Kerly, Law of Trade Names and Trademarks, London, Sweet and Maxwell (2005)
2
https://en.wikipedia.org/wiki/Labor_theory_of_property
3
https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright
AD VALOREM- Journal of Law: Volume 6: Issue I: Part-II: January-March 2019: ISSN : 2348-5485
67

define Unconventional trademarks and will analyze whether it can be fit in to the definition given under the
act.
UNCONVENTIONAL TRADEMARKS
The unconventional trademarks are the ones that are perceived by the senses other than the eyes. Accordingly,
there are following kinds of marks as Sound Mark, Olfactory Marks, Smell Marks, Touch marks, Taste Mark, Single
Color Mark and Motion marks and Holograms. To understand the new feature and functions of the unconventional
marks it becomes necessary to understand the essentials and functions of the conventional marks. Therefore, it also
deals with the same. The requirement of Graphical Representation has an essential administrative procedure in
registering conventional marks and presently it is the main hindrance for the registration of modern marks.
In simple language, conventional trademarks are marks that have traditionally been registered in the past and
are part of the legislature as well. They are words, letters, numerals, name, signature etc. These all marks fit into the
essential criterion set for a trademark. The true functions of the trademark are to identify a product as satisfactory
and thereby to stimulate further purchases by the consuming public. All these marks by fulfilling the registrability
criteria have been traditionally fulfilling this rationale behind trademarks put forward by Frank Schechter. To say
that a trademark “is merely the visible manifestation of the more important business goodwill, which is the
„property‟ to be protected against invasion” or that “the good will is the substance, the trademark merely the
shadow,” does not accurately state the function of a trademark today and obscures the problem of its adequate
protection. It is pertinent to mention here that if all the unconventional marks cannot be protected, protection shall
be given at least to the well-known trademarks. Now we should discuss what the exact meaning of well-known
trademarks is.
WELL KNOWN TRADEMARKS
Well known trademarks means a mark which has become well known to the substantial segment of the public
familiar with a particular type of goods or services for which it is used. The use of such mark in relation to other
goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of
services between those goods or services and person using the mark in relation to the first mentioned goods or
services. It is the registrar of trademarks who has got authority to determine whether a mark is a well-known mark or
not. The definition clearly indicates that it is the ordinary trademark which may acquire the character of well-known
trademarks. When the consuming public on seeing a trademarks on some goods or services, relates it to a trademarks
already used on some other goods or services, such a trademarks is considered to be a well-known trademark. The
properties of registered well-known marks have been extended right to oppose registration of a similar mark on
different/dissimilar goods or services. 1 There has not been full agreement on the definition internationally and
deliberations and consultations to settle the meaning of well-known trademarks have been going on under the
auspices of WIPO. The term well-known mark has been in use since 1925 when Article 6 bis was incorporated in
the Paris Convention for a better protection to such marks. Article 16 of WTO-TRIPS lays down additional special
treatment favouring well-known marks and the definition in Indian Act takes colour and fulfils the obligation in
article 16 of TRIPS. In India, the term well-known trademarks is used for the first time in Trade Marks Act, 1999
and has been defined in Section 2(1) (zg).
PROTECTION TO UNCONVENTIONAL TRADEMARKS
In the late 1990‟s unconventional trade mark forms such as sounds (audible), tastes (gustatory), touches (tactile)
and smells (olfactory) have become more important. The industry seeks to invent new products in order to present
more sensory consumer goods to the overwrought customers. They are of common use in marketing and
practitioners are familiar with the sensorial as an essential part of an innovative trademark and product strategy. In
the WIPO, the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications,
held in Geneva from 27-31 May 2002, in the eighth session discussed suggestions for the further development
international trademark law. In U.S., the Lanham Act‟s definition of „trademark‟ encompasses non-traditional
trademarks by not excluding them. As we have already seen that the unconventional trademarks are the ones that are
perceived by the senses other than the eyes. Accordingly, there are following kinds of marks as Sound Mark,
Olfactory Marks, Smell Marks, Touch marks, Taste Mark, Single Color Mark and Motion marks and Holograms.
LABOUR THEORY OF JOHN LOCKE AND PROTECTION TO UNCONVENTIONAL TRADEMARKS
The theory has been used to justify the homestead principle, which holds that one may gain whole permanent
ownership of an unowned natural resource by performing an act of original appropriation. Having understood the

1
Torremans, Paul and Holyoak, Intellectual Property Law, New York, Oxford University Press, 4thed. (2005).
AD VALOREM- Journal of Law: Volume 6: Issue I: Part-II: January-March 2019: ISSN : 2348-5485
68

nature of the UTM and Labour theory in detail, which has been the object, we now will see how provisions of Indian
Act support or reject the concept of UTMs. Further we will see if any amendment is required in this respect and if
yes then what are those? There is no harm in following the example of the U.S where the policy is of “everything
goes” in the matter of registration of trademarks. At least those unconventional marks that have acquired
distinctiveness or are well known by long use can be recognized without trouble. As a matter of fact, this everything
goes policy will also complement the labour theory. The efficacy of any trademark would depend on its ability to
create an impact on the minds of the potential customers of that product. If characterization or the representation of
the product is unique, it would appeal to people‟s perception and senses in the very significant manner. This has
actually lead to the advent of a number of unusual non-orthodox trademarks by the manufacturers.
Therefore, the definition of mark alone cannot decide the plausibility of registrability of UTM. Not only the Act
but Rules also become very relevant at this juncture. As per section 18 of the TMA, 1999 any application for
registration of a trademark should be in compliance with the rules. Chapter II of the Trade Mark Rules, 2002 need to
be observed carefully and read with the definition of GR. To start, rule 2(1)(k) defines GR as “representation of a
trademark…in paper form.” The requirement of the GR to be on the paper limits the scope or possibility of GR and
thus the registration of the taste, smell mark etc.1
In the light of the above mentioned provisions, let us analyze how the sound mark was registered in India. The
form of the GR is attached with the application given in the Appendix-B. The question here is whether a person
looking at the musical note provided in the required space will get to know what the mark is. I personally feel that a
musical note doesn‟t solve that purpose though it is clear that it fulfills the requirements of the rules 2(1)(k), 28, 25
and 30. Then it becomes as good or as bad as a chemical formula as a GR for the smell mark. Some people may call
the formula rather a description than a graphical representation. In our legislation description is not allowed without
a GR, which is mandatory. Another issue before the registry is that of distinctiveness. Section 2(zb) read with
section 9(1) (a) dictates the condition of distinctive character. So, is a sound mark inherently distinctive? The answer
is “no”. Let it be any UTM, they are never distinctive and are very likely to cause confusion. Therefore, the reason
why the sound mark is registered is that it has acquired distinctiveness. The provision in the TMA, 1999 that permits
the secondary meaning is the „proviso‟ to section 9(1) that states “a trademark shall not be refused registration if
before the date of application for registration it has acquired a distinctive character as the result of the use made of it
or is a well-known trade mark.” Here, I would like to submit that Yahoo yodel has not only become distinctive with
time but also is a well-known mark.
CONCLUSION
Locke argued in support of individual property rights as natural rights. Following the argument, the fruits of
one's labour are one's own because one worked for it. Furthermore, the labourer must also hold a natural property
right in the resource itself because — as Locke believes — exclusive ownership was immediately necessary for
production. Following this At least those unconventional marks that have acquired distinctiveness or are well known
by long use can be recognized without trouble.

1
K.C. Kailasam & Ramu Vedaraman, Law of Trade Marks & Geographical Indications”, Nagpur, Wadhwa & Company, 2nd
edn.(2005)
CHAPTER-VI

RECENT TRENDS AND ISSUES IN

UNCONVENTIONAL TRADE MARKS

6.1. INTRODUCTION

In this chapter, an attempt has been made to understand the effects of non-
traditional trademarks in the area of pharmaceutical products and issues of
competition along with a normative case against the unconventional trade marks,
further proceeding towards a discussion on inherently valuable freedom of expression
and to assess why affording legal protection for non-traditional marks in this area may
hamper access to medicine/ health. In order to answer this question effectively, this
chapter is divided into three parts; the first part explores the prevalence of non-
traditional marks in the area of pharmaceuticals; and the second part analyzes whether
protection for non-traditional marks could pose impediments to access to
medicine/health; and the last part ponders over the issues of competition and freedom
of expression with analytical approach.

In November 2015, the United Nations Secretary General convened a High-

Level Panel on Access to Health Technologies. The Panel’s objective was ‘‘to
propose solutions for addressing the incoherencies between international human
rights, trade, intellectual property rights, and public health objectives.’’ In a Report
issued in September 2016, the Panel discussed how countries worldwide could use the
flexibilities in the Agreement on Trade Related Aspects of Intellectual Property
Rights (TRIPS) to foster research and development of health technologies.
Unsurprisingly, the Panel’s report focused on patent law. Yet, in the Report’s
Annexes, it was highlighted that other IP rights, such as trademarks and copyright,
can also ‘‘exert monopolistic effects in the market,’’ and that the effects of these
rights can ‘‘rival those associated with patents and with a far greater duration’’ due to
their different terms and scope of protection.1 As a result, it was noted, more attention

1
U.N. Secretary-General’s High-Level Panel on Access to Medicines, Promoting Innovation and
Access to Health Technologies, Annex by Professor Ruth Okediji, Member of the High- Level Panel,
at 60 (Sept. 14, 2016).

Page | 195
Recent Trends and Issues in Unconventional Trade Marks

should be paid to these rights ‘‘to tackle their combined effects … on the cost,
distribution, and accessibility of medicines and health technologies.’’2

A recent judicial decision in the UK reflected again the importance of this

topic. In Glaxo Wellcome UK Limited and Anor v. Sandoz Limited & Ors, Lord
Justice Arnold dismissed the claims for passing off brought by GlaxoSmithKline
(GSK), the producers of a purple inhaler, against generic manufacturer Sandoz for
having copied the color purple for its own inhaler that differed in shape and
operation.3 GSK’s EUTM for the same color was revoked in summary judgment and
the trial focused on the passing off claims related to the alleged misappropriation of
the color. Justice Arnold reasoned there was no misrepresentation towards the
products’ origin as the inhalers were prescription-based therapy and doctors
prescribed inhalers based on ingredients, not the color of the inhaler. He also rejected
the claim for misrepresentation of the products’ equivalence for healthcare
professionals and patients based on lack of evidence. However, while GSK did not
succeed on its passing-off claim in the UK, and lost the mark in the EU, the U.S. mark
for the same color inhaler remains alive.4 This highlights an additional layer of
complexity in the debate. As trademark rights remain territorial, the rejection of
protection in one country may not translate into rejections in other jurisdictions.
Moreover, the terms of licensing agreements often apply to ‘‘worldwide license.’’
Thus, companies may be bound by the terms of these agreements in multiple
jurisdictions based on the valid trademark rights in one country, even though the same
mark may have been revoked or not been granted in another country.

In conclusion, non-traditional trademarks offer an additional tool to create

exclusive rights on medicines and health technologies beyond the scope and term of
patent protection. This can lead to unnecessary and complex litigation, which can
deter generic companies and in turn negatively affects access to healthcare. This extra
layer of exclusivity is problematic even if these rights are not vested in the active
ingredients of the medicines or the technology of the devices. Trademarks may not
protect the core subject matter of the treatment, yet they still constitute a barrier to

2
Ibid
3
Glaxo Wellcome UK Ltd & Anor v. Sandoz Ltd & Ors [2019] EWHC 2545 (Ch) (04 October 2019).
4
Registration No. 3,812,561, U.S. (round design, purple color, white color, and wave patterns of
inhaler).

Page | 196
Recent Trends and Issues in Unconventional Trade Marks

access to medicines and health technologies. In a world where generic manufactures

may already struggle to find market access due to additional patent protection through
secondary patents and similar strategies, the law should not incentivize additional
barriers in the form of non-traditional trademarks. Certainly, the shapes, colors, and
other characteristics of medicines and medical devices could be found to be
distinctive – particularly since the manufacturers could use these signs exclusively
during the patent term. Still, these signs often become functional to the effective
delivery of the treatment. This type of functionality may not be the traditional type of
utilitarian functionality, yet it is a therapeutically-based functionality, as patients have
become used to these signs as a fundamental part of their treatment. Moreover, even
when these signs may simply be aesthetic additions to products otherwise prescribed
by doctors based on ingredients and other technical features, they make the products
more appealing and thus are aesthetically functional. For all these reasons, some say
that these signs should not be protected as trademarks.

6.2. UNCONVENTIONAL TRADE MARKS IN PHARMACEUTICAL SECTOR

The previous section provided an overview of different kinds of non-

traditional trademarks in use and concerns with regard to their registration in some
prominent jurisdictions. In this section the researcher will be looking at the question
of the extent of use of non-traditional marks in the pharmaceutical sector. For this, an
analysis of two kinds of surveys was done. The first one consisted of identifying and
analyzing the kinds of marks used on top ten products of the top ten pharmaceutical
companies in the world.5 The second survey consisted of analyzing case-laws from
different jurisdictions. This approach helped to get an overview of the prevalence of
non-traditional marks in the pharmaceutical sector.

The survey of the current practices among the pharmaceutical companies

reveals that many of them have a proclivity towards using non-traditional marks to

5
For identifying the top 10 pharma companies at the global level, the researcher used a list compiled
by Forbes. See Worlds’ 25 Biggest drugs and Biotech Companies in 2018, FORBES (Apr. 12, 2018),
https://www.forbes.com/pictures/gkkh45llh/pfizer/#142c46144b43 For details on the methodology
Forbes used in this regard, see Andrea Murphy, 2018 Forbes Global 2000: How We Crunch The
Numbers, FORBES (Apr. 12, 2017),https://www.forbes.com/sites/andreamurphy/2018/05/25/how-
we-crunch-the-numbers/#1c0ccd2a7467 For identifying the top 10 products of these companies, the
work relied primarily on their recent annual reports. In cases where this information was not
available in annual reports, the researcher used secondary sources such as statistica.com to obtain the
list of top 10 products. This survey was conducted between January 16, 2018 and April 4, 2018.

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add uniqueness to their products. Interesting examples we found in this regard include
Viread6 (Gilead Sciences), Viagra7 (Pfizer), Aubagio8 (Sanofi), Xarelto [20mg]9
(Johnson& Johnson), and Senisipar10 (Amgen), which were of a unique shape and
colour.11

The work is not able to determine whether all of the above mentioned marks
are currently receiving trademark protection for their shape, colour, or a combination
of both in different jurisdictions. But it is evident that at least some of them are
protected under the trademark law for their shape and colour.12 The details of the
trademark registration procured by Pfizer for the diamond shape of Viagra tablets are
available in the EUIPO database13 and the registration details for the purple and gold
colours of Nexium (commonly known as the “purple pill”), owned by AstraZeneca,
can be seen in the USPTO database.14 The survey of case-laws shows that companies
like AstraZeneca and Pfizer have also initiated litigation against competitors who
have attempted to copy the distinct features of those tablets.

For example, in the case of Nexium, AstraZeneca’s heart-burn medicine, the

unique purple and gold color combination was used by Dr Reddy’s Laboratories for
its own generic version of Nexium which was launched in 2015.15 AstraZeneca
promptly filed a suit against Dr Reddy’s Laboratories. For granting an injunction, the

6
http://www.gilead.com/medicines#HIVAIDS
7
https://www.urologicalcare.com/upload/ed/viagra.jpg
8
https://www.drugs.com/aubagio-images.html
9
https://www.drugs.com/xarelto-images.html
10
http://www.sensipar.com/about-sensipar/,
11
Other interesting examples include Truvada (Gilead Sciences, http://www.sbbild_bottle_
Dutch_labeling.jpg), Ranexa (Gilead Sciences, https://www.drugs.com/ranexa.html), Letairis
(Gilead Sciences, https://www.drugs.com/letairis-images.html), Norvasc (Pfizer, https://www.drugs.
com/norvasc- images.html), Isentress (Merck, https://www.drugs.com/isentress-images.html) and
Stribild (Gilead Sciences, https://nl.wikipedia.org/wiki/Elvitegravir/cobicistat/emtricitabine/
tenofovir_disoproxil#/media/File:Stribild_bottle_Dutch_labeling.jpg )
12
See, for example, U.S.P.T.O trademark registration number: 2679181, owned by Gilead Sciences.
13
EUIPO Registration No: 001909472, owned by Pfizer.
14
For example, see U.S.P.T.O trademark registration numbers: 3062072 and 2980749, owned by
AstraZeneca. The description of one of those marks in the Register is as follows: “The mark
consists of the colors purple and gold as applied to the surface of a pharmaceutical capsule. The
capsule is purple with three side-by-side gold rings that encircle the top of the capsule. The drawing
is lined for the colors purple and gold.”
15
Kiran George, AstraZeneca v. Dr Reddy’s - Colour as a Pharmaceutical Trade Dress, SPICY IP
BLOG (Dec. 22, 2015), https://spicyip.com/2015/12/astrazeneca-v-dr-reddys-colour-as-a-
pharmaceutical- trade-dress.html.

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court needs to be satisfied that there exists a likelihood of success in the case by the
plaintiffs for trademark infringement. By looking at the factors affecting a likelihood
of confusion, the court held that the plaintiff had proven that it was likely to succeed
on the merits of the case and would suffer irreparable harm if an injunction was not
granted. Thus the Delaware District Court granted a temporary restraining order in
favour of AstraZeneca and barred Dr Reddy’s from marketing its generic version of
Nexium.16 Following the order, Dr. Reddy’s is reported to have changed the colour of
its generic tablet from purple to blue.17

Similarly, in the case of Viagra, the diamond shaped, blue coloured tablets
manufactured by Pfizer and used to treat male erectile dysfunction, the Delhi High
Court adjudicated on litigations initiated by Pfizer against many generic firms in
India.18 The generic manufacturers were using brand names such as Penegra,
Kamagra and Edagra, and they had adopted a similar blue colour and packaging for
their products.19 Pfizer initiated a passing off action claiming injunction and damages.
One of the main concerns expressed by Pfizer was that consumers would buy generic
products like Penegra thinking it to be Viagra’s equivalent manufactured by Pfizer in
India.20 Since Pfizer did not have a trademark registration in India for Viagra and was
not marketing the product in India at the time, court held that there was no likelihood
of confusion as consumers would know that they were only getting an Indian
equivalent of Viagra.21 The court also held that there was no misrepresentation by a
pharmacist, when s/he used the term “desi version of Viagra” as it was a “fact that
what was sold was not Viagra but its local equivalent”.22 The court thereby denied
Pfizer’s application for temporary injunction after determining that the balance of

16
AstraZeneca v. DRL Civ No.15-988 SLR. p.13-14, https://www.scribd.com/document/290877170/
AstraZeneca-v-Dr-Reddys#scribd .
17
Dan Stanton, AstraZeneca’s purple Reign? Dr Reddy’s relaunches Nexium generic in blue, IN-
PHARMA TECHNOLOGIST BLOG, (Jan. 6, 2016), http://www.in-pharmatechnologist.
com/Processing/AZ-retains-purple-reign-Dr-Reddy-s-relaunches-Nexium-generic-in-blue.
18
Pfizer Products Inc. v. B.L. and Company, https://indiankanoon.org/doc/145093/ (Delhi High Court
2002).
19
See generally, Ibid.
20
Id., para. 10.
21
Id., paras 72-74.
22
Id., para 73.

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convenience was in favour of the defendant.23 But it is important to note that the court
also took the position that the defendants cannot use the blue colour used by Pfizer.24

Survey of case-laws also indicates that non-traditional marks have been at the
centre of much litigation in the pharmaceutical sector, especially in the US, for a long
time. It would be pertinent to highlight here some of the cases where protection was
granted and some where protection was denied.

In Ross Whitney Corp. v. SKF25, the respondents (SKF) were manufacturing

valentine’s heart shaped Benzedrine and Dexedrine tablets in pinkish brown and
orange colours respectively.26 Once the patents on those products expired, other
companies started to manufacture the tablets under different brand names. Ross
Whitney Corp. manufactured the generic version of the Dexedrine tablet with the
same shape, size, and colour as the respondent’s Dexedrine tablet and further labelled
it as “Heart brand Dexedrine”.27 SKF filed a suit for trademark infringement and
unfair competition against the respondents. The court affirmed that Dexadrine was a
valid trademark and further noted that SKF’s distinctive shape and colour of the
dexedrine tablet had acquired secondary meaning.28 According to the court, in such a
situation, consumers may get easily confused between the two products, regardless of
the label used by the appellant.29 Hence the appellants were injuncted from
manufacturing their tablets in any colour or shape, or combination of colour and
shape, resembling those of the respondents.30

Similarly, in SK&F v. Premo31, SK&F was manufacturing a patented oral

diuretic under the brand name Dyazide in a maroon and white hard gelatin capsule.32
The same drug combination was also sold in Europe in an orange colour tablet

23
Id., paras 83-86.
24
Id., paras 87, 91, 94 and 110.
25
Ross Whitney Corp v. SKF, 207 F.2d 190 (9th Cir. 1953).
26
Ibid at 192.
27
Id.
28
Id. at 195-196.
29
Id. at 197.
30
Id. at 198.
31
SK&F v. Premo Pharm. Labs., Inc., 625 F.2d 1055 (3rd Cir. 1980).
32
Ibid at 1057-1058.

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version.33 Premo, a generic drug manufacturer, came out with a generic version of the
same drug in a similar maroon and white hard gelatin capsule.34 In response to this
SK&F filed a complaint on grounds of unfair competition and trademark
infringement, and sought a preliminary injunction.35 In this case, one of the major
concerns was that the availability of look-alike generic drugs would prompt
“unscrupulous pharmacists” to pass off less expensive generic drugs instead of
Dyazide (produced by SK&F) without passing on the benefits of the lower price to
consumers.36 In this case, the court was of the opinion that the maroon and white
colors used by SK&F were non-functional.37 According to the court, the trade dress of
SK&F “was arbitrary, having nothing to do with the purpose or performance of the
drug or with its processing”.38 The court noted that there was no industry practice for
the identification of diuretic through the colors or capsule form and that even the
identical diuretic drug combination was successfully marketed in an orange tablet
form.39 Further in this case, it was established that the bioavailability of the drugs
differed and so the court was of the opinion that though the drugs were similar, they
would not be functionally equivalent to each other.40 The court affirmed the
preliminary injunction granted by the District Court which required the trade dress to
be as different as possible from that of the prescribed brand.41

As mentioned earlier, there are also many cases where protection for non-
traditional features was denied by the courts. For example, in the case of William R.
Warner & Co. v. Eli Lilly & Co.42, Eli Lilly was manufacturing liquid quinine in the
colour and flavour of chocolate and called it Coco Quinine.43 Eli Lilly initiated a suit
against the petitioner when they began manufacturing a less costly version of the
same preparation with the colour and flavour of chocolate, under the name Quin-

33
Id. at 1058.
34
Id.
35
Id.
36
Id. at 1063.
37
Id. at 1062-1064.
38
Id. at 1063.
39
Id. at 1064.
40
Id. at 1067.
41
Id. at 1068.
42
William R Warner & Co. v. Eli lilly & Co., 265 US 526 (1924)
43
Ibid at 528.

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Coco.44 Eli Lilly argued that the petitioner was infringing their exclusive right to use
and sell the chocolate flavoured mixture.45 The court took the position that the
petitioners were free to manufacture and sell the chocolate flavoured quinine mixture
as the use of chocolate was functional in character.46 The fact that the use of chocolate
lent the medicine a degree of palatability, which was difficult to substitute, made it
functional.47

Similarly, in Norwich Pharmacal v. Sterling Drug Inc.48, the plaintiff was

engaged in the production of a pink coloured liquid preparation called Pepto-bismal,
for treatment of stomach disorders.49 By 1955, it was the leading medicine in this
field.50 Around this time the defendant started to manufacture Pepsamar, which was
almost identical to Pepto-bismal as regards colour, flavour, and chemical
constitution.51 The plaintiff filed a suit seeking injunctive relief against the
defendants. In this case, the court held that there was no proof of deception or
violation of property rights of the plaintiff as the overall appearance of the
defendant’s product was dissimilar to that of the plaintiff (shape of the bottle, colour
of the label and cap).52 Most importantly, the court noted that absent confusion,
“imitation of certain successful features in another’s product is not unlawful and to
that extent a ‘free ride’ is permitted.”53 Interestingly enough, the court pointed out that
the colour pink was also functional in its use with regard to stomach remedies as the
colour lent a “pleasing appearance to the customer and the sufferer” and thus
competitors couldn’t be restricted from using the colour.54 In view of all these aspects,

44
Id. at 529.
45
Id.
46
Id.
47
Ibid. However, since there was evidence suggesting passing off by retail druggists, the court held
there was unfair competition and that the petitioners enabled such behaviour. Thus the court decreed
that the original packets sold to pharmacists should not only have labels clearly distinguishing them
from the products of the petitioner, but also explicit warnings that prescriptions for Coco Quinine
should not be substituted with Quin-Coco.
48
Norwich Pharmacal co: v. Sterling Drug, Inc., 271 F.2d 569 (1959).
49
Id. at 570.
50
Id.
51
Id.
52
Id. at 571.
53
Id. at 572.
54
Id.

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Recent Trends and Issues in Unconventional Trade Marks

the court held that the colour pink cannot be monopolized by the plaintiff alone as its
exclusive property.55

In another instance, Ives Laboratories had a patent on the drug cyclandelate

(brand name cyclospasmol), a vasodilator used in long-term therapy for peripheral
and cerebral vascular diseases.56 It was manufactured in two dosages with 200mgs of
the drug in a blue capsule imprinted with “Ives 4124” and 400mgs in blue and red
capsule imprinted with “Ives 4148”.57 Once the patent expired, generic manufacturers
started manufacturing cyclandelate using the same dosage-colour combination as
practiced by Ives.58 The court upheld the District Court’s finding that the colours used
by Ives was functional as it helped patients to rely on colours to differentiate among
medications, especially patients who had a habit of commingling medications in a
container and also the elderly who associated colour with therapeutic effect.59 In
addition, Ives also failed to establish secondary meaning.60 In the light of these
findings, the court held that there was no infringement as “after patent expiration... a
functional characteristic… is no more the property of the originator than the product
itself”.61

The examples of litigation mentioned above indicate that the industry has been
constantly trying to protect various physical attributes of pharmaceutical products,
such as colour, shape, etc.

It is also important to note in this context the attempts of the industry in

seeking registrations for non-visual marks such as taste/flavour marks.62 In N V
Organon, the company had sought trademark registration for orange flavour of its
quick dissolving anti-depressant tablets.63 The Appellate Board rejected this
application on three grounds. Firstly, since this was a pill that dissolved on a patient’s

55
Id. at 573.
56
Inwood Labs Inc. v. Ives Labs Inc., 456 U.S. 844 (1982).
57
Ibid at 846.
58
Id. at 847. There were also reports that some pharmacists were mislabeling and substituting generic
drugs for Cyclospasmol.
59
Id. at 853.
60
Id. at 853.
61
Id. at 863.
62
For an interesting discussion on taste/flavour marks, see generally Thomas A. Gallagher, Non
traditional Trademarks: Taste/Flavour 105 TRADEMARK REP., 806 (2015).
63
2006 WL 1723556, 1 (TTAB 2006).

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Recent Trends and Issues in Unconventional Trade Marks

tongue, there was a “practical need for the medicine to have a good taste” (which was
stressed by applicant in its advertisements) and hence orange flavour was functional.64
Further, orange was a popular flavour and granting monopoly over the flavour would
leave few popular alternatives for other anti-depressant medications.65 Secondly, the
Appellate Board expressed doubts as to whether orange flavour could act as a mark,
since most consumers would perceive orange flavour as a common product feature to
hide any unpleasant taste of medicine.66 Finally, the Appellate Board raised the
question of how trademarks could practically function as a trademark given that
consumers had no way of perceiving it prior to purchase.67 Similarly, in the EU, Eli
Lilly’s application for taste mark for the artificial flavour of strawberries for a drug
was rejected on grounds similar to those seen in N.V.Organon case.68

All the data discussed in this section indicate that the pharmaceutical sector
has not shied away from seeking protection for non-traditional features/ marks.

6.3. PROTECTION FOR UNCONVENTIONAL TRADE MARKS AND ACCESS TO

MEDICINE

The previous section illustrates the prevalence of non-traditional marks in the

pharmaceutical sector. In that context, it would be pertinent to analyze some of the
important consequences of affording protection to non-traditional trademarks, on
access to medicine. I would like to highlight three of them.

Firstly, there would be an increase in transaction costs due to protection

afforded to non-traditional marks. Empirical studies have shown that patients might
be reluctant to take bioequivalent drugs, if the physical attributes of the branded drug
and generic drug are different.69 Studies show that some patients may even

64
Ibid at 6.
65
Id. at 7.
66
Id. at 11.
67
Id. at 12.
68
See generally R120/2001-2, Eli Lilly & Company, Appeal Relating to Community Trade mark
application no: 1452853 (August 4, 2004).
69
See generally Aaron S. Kesselheim et.al, Variations in Pill Appearance of Antiepileptic Drugs and
the Risk of Nonadherence, 173(3) Archives of Internal Medicine 1, (2012) & Aaron S. Kesselheim
et.al, Burden of Changes in Pill Appearance for Patients Receiving Generic Cardiovascular
Medications After Myocardial Infarction, 161(2) ANNALS OF INTERNAL MEDICINE 96,
(2014).

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discontinue their prescribed drug regimen, due to doubts over the efficacy of the
drug.70 In this context, studies have suggested that doctors and pharmacists need to
educate and reassure patients, while providing a different looking generic
bioequivalent.71 As one can imagine, this would require substantial investments in
terms of time. Some studies even point out that pharmacies may need to adapt
existing information technology systems in order to provide updates to the consumers
when such changes occur.72 With rising protection for non-traditional marks in the
pharmaceutical sector, these transaction costs are bound to increase, thereby adversely
affecting the budgets for access to medicine.

In Hoffmann-La Roche & Co. A.G. v. DDSA Pharmaceuticals Ltd.73, one

can see the court making some interesting observations in this regard. This case was a
passing off action relating to the black and green chlordiazepoxizide capsules (brand
name Librium) manufactured by Hoffmann-La Roche. One of the arguments used by
DDSA was that the consumers who were accustomed to the black and green capsules
would have resisted the drug if the same drug had appeared subsequently in different
colours. Although the court ultimately ruled against the defendant, it is interesting to
see the observations of the court with respect to this argument74:

“Now that shows quite clearly that if the defendants were to put their C.D.P.
in a blue and white container and it were prescribed, as it might be by any doctor
prescribing C.D.P., there would immediately be resistance on the part of patients.
Patients would come back and say "This is not what I have been taking before. I want
the one I know. I want the green and black one"; and the chemist would have to spend
laborious hours explaining that there was a new manufacturer on the market and that
he put up his drug in a different colored capsule although it was exactly the same
drug-says the chemist. "Oh ' says the patient; "I want the ones I have always had-the
same again ", and goes back to the doctor and makes a fuss; and there will be general
sales resistance and difficulties of that sort…

70
Ibid
71
Kesselheim et.al (2012), supra note 69 at 5.
72
Ibid
73
Cf Hoffmann-La Roche' & Co. A.G. v. DDSA Pharmaceuticals Ltd., [1972] RPC 1, 20. Here it was
held that there was a likelihood of confusion and interlocutory injunction was granted to the
plaintiffs.
74
Cf Hoffmann-La Roche' & Co. A.G. v. DDSA Pharmaceuticals Ltd., 21.

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This challenge of increased transaction costs was also highlighted in a recent

interview conducted by us with a pharmacist in a leading hospital in India.75
According to the pharmacist, many hours are still being spent in offering explanations
to convince patients to switch from a familiar tablet identifiable in a particular colour/
shape to a generic equivalent in a different colour/ shape.76 In this context, it needs to
be asked whether the increased transaction costs by virtue of monopoly rights over
colour/ shape are justifiable, particularly when viewed in the context of limited social
benefits accrued by way of grant of monopoly rights over colour/ shape.

Secondly, it is important to note that protection of non-traditional marks may

create additional barriers for entry of generic drugs. There are two important aspects
to be considered in this regard. First, non-traditional marks may perpetuate the
monopoly position enjoyed by the branded drugs. Second, non-traditional marks may
further reinforce the myth that generics are of low quality.

Branded drugs often enjoy a monopoly position due to patent protection and
they also undertake extensive advertising campaigns to market and promote the
uniqueness of the drug during the patent term. Sometimes such campaigns can be so
successful in capturing the imagination of the customer that it becomes difficult for
generic companies to break into that market even after the expiry of the patent term,
with a cheaper version of the drug. In such instances, the trademark is slowly
metamorphosing into a “brand”.77 While there is no general definition for the term
‘brand’, it’s usually understood “to have a value which transcends the product.”78

AstraZeneca’s ‘Nexium’ is a classic example which can illustrate how a

branded drug can maintain its hold over the market through the use of trade dress in

75
Interview with a clinical pharmacist, in Cochin, India (Apr.17, 2017). Name and affiliation withheld
for protecting confidentiality requirements.
76
Ibid.
77
“A brand is an aggregation of assets which includes, but is not limited to, a trademark.” See,
Jennifer Davis, Between a Sign and a Brand: Mapping the Boundaries of a Registered Trademark
in European Union Trademark Law in TRADEMARKS AND BRANDS 65, 81 (Lionel Bentley et
al., eds., 2010).
78
Ibid. Others point out that brands have a “psychological impact” in the minds of the consumers to
whom it could represent a certain kind of “lifestyle”, and for them purchasing that particular
branded product would “reinforce their self-image”. See Hannah Brennan, The Cost of Confusion:
The Paradox of trademarked Pharmaceuticals, 22 Mich. Telecomm. & TECH. L. REV.1, 14
(2015).

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Recent Trends and Issues in Unconventional Trade Marks

spite of the presence of cheaper generics in the market. AstraZeneca had a patent over
a new class of acid reflux medications which were known as proton-pump-inhibitors
(PPIs).79 The particular drug omeprazole was sold under the brand name Prilosec in
purple and gold trade dress and was heavily advertised with the popular sobriquet “the
purple pill”.80 This campaign ensured that the patients remembered the colour, even if
they forgot the name of the drug.81 Prilosec was a commercial success and when the
patent on that drug was set to expire, AstraZeneca came out with a slightly modified
version of omeprazole, known as esomeprazole, which was duly patented and
marketed as Nexium.82 Though it had more or less the same effect as Prilosec, it was
marketed as the “new purple pill” by giving it the same physical appearance as
Prilosec.83 The fact that Nexium was able to hold on to its customer base even after
the entry of generic manufacturers into the market at much lower prices illustrates the
power of branding in this sector.84

It is evident that if other branded pharmaceutical companies were to adopt

similar practices, it could portend considerable difficulties to the generic
manufacturers trying to break into the market. As pointed out by a commentator, such
factors which inhibit the generic market come at a great cost to consumers and affect
the efficient functioning of the healthcare market.85 Hence it is important that generic
companies are allowed to copy the physical appearances such as colour, shape and
size of the drug.

An additional point of concern is the fact that monopoly rights over physical
attributes of branded drugs may perpetuate the myth of “low quality” generics”. There
are regulatory mechanisms in most jurisdictions to ensure that generic drugs are

79
Brennan, supra note 78, at 27.
80
Id.
81
David M. Fritch, Should the Purple Pill by any other drug company still be as purple? The
Changing face of trade dress protection for pharmaceutical manufacturers, 47 IDEA 171, 188
(2006-2007).
82
Brennan, supra note 78, at 28.
83
Jeremy A. Greene and Aaron S. Kesselheim, Why do the same drugs look different? Pills, Trade
Dress and Public Health, 365(1) THE NEW ENGLAND JOURNAL OF MEDICINE 83, 85
(2011).
84
It did not experience a considerable drop in sales as would usually be the case when cheaper
generics enter the market to compete with the branded drug. See Brennan, supra note 78, at 29.
85
Brennan, supra note 78, at 29.

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Recent Trends and Issues in Unconventional Trade Marks

manufactured under safe conditions.86 Further, no studies have conclusively

established that generics manufacture products of low quality.87 However, there is a
perception among many patients that generics are not as effective as branded drugs. In
order to understand the underlying reasons behind this, a survey was undertaken by a
team of researchers in the US who used a random sample of commercially insured
beneficiaries.88 The survey found that over 70% broadly agreed that “generic drugs
are a better value than branded drugs” and 56% agreed with the statement that
“Americans should use more generic drugs”. However only 37.6% agreed that they
would take generics over branded drugs.89 More interesting was that over 42%
disagreed with the statement that “Generics are safer than branded drugs”.90 It was
suggested that this may be due to the perceptions associated with the term “generic”
itself, which connoted low quality, or the belief that more expensive products are
more effective.91 A more serious aspect was that such perceptions about generics even
led to non-adherence among those who could not afford branded drugs.92 When one
views non-traditional marks in the pharmaceutical sector in the light of this evidence
regarding the “low quality” generic myth, it becomes important that generics be
allowed to adopt the external attributes of branded drugs.

If these aspects are not given due consideration, the barriers to entry for
generics may only be perpetuated with harmful repercussions for public health.

Thirdly, it is important to note that many of these non-traditional marks may

also be serving different functions. For example, a significant group to which a
combination of colour and shape is compelling is children. Interviews with medical
practitioners confirm that certain shapes/ colours/ flavours make medicines more
palatable for children.93 In such cases, a finding of functionality would be necessary

86
Ibid at 22-23.
87
Id., at 22.
88
William H. Shrank et al., Patients Perceptions of Generic Medicines, 28(2) Health Affairs 546, 547
(2009).
89
Ibid at 549.
90
Id
91
Id. at 554.
92
Id
93
Interview with a doctor in Cochin, India (Apr.18, 2017) and telephonic interview with a doctor
(July 18, 2017). Name and affiliation withheld for protecting confidentiality requirements.

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Recent Trends and Issues in Unconventional Trade Marks

to prevent monopolization of those physical attributes by the manufacturers of

branded drugs.

Further, there are also public health considerations which necessitate a finding
of functionality. As briefly discussed earlier, empirical studies have indicated that
changes in colour, size or shape can have negative results such as drug regimen non-
adherence, patient confusion and prescription errors.94

One of those studies, which focused on adults who were on anti-epileptic

drugs, found that though “colour and shape discordances occurred infrequently, it was
more common preceding cases of anti-epileptic drug non-persistence”.95 This assumes
significance when read in the light of previous research which has shown that non-
adherence to treatment in epilepsy patients leads to “increased risk of seizure-related
emergency and even mortality”.96 Another study which focused on patients, who had
been discharged after myocardial infarction, also came to similar conclusions with
regard to non-persistence.97 As mentioned earlier, apart from drug non-adherence, it
was also observed that changes in the appearances of medication can also cause
patients to doubt the efficacy of their medication or lead to confusion that could
contribute to prescription errors.98 This is a serious issue, particularly among groups
such as the elderly and those with limited health literacy.99

In this regard, it becomes necessary to also look at the link between physical
attributes of a pharmaceutical drug and placebo effects. According to Arthur Shapiro
and Elaine Shapiro, placebo effects are “nonspecific psychological, or psycho
physiological therapeutic effect produced by a placebo, or the effect of spontaneous
improvement attributed to the placebo”.100 Experiments conducted over time have

94
Kesselheim et.al (2012), supra note 69 at 3. See also Kesselheim et. al, (2014) , supra note 69 at
101.
95
Kesselheim et.al (2012), supra note 69 at 3.
96
Ibid at 6.
97
“3.9% instances of non-persistance involved color discordance, 5.3% involved shape discordance
and 2.4% involved colour and shape discordance.” See Kesselheim et. al, (2014) , supra note 69 at
100.
98
Kesselheim et. al, (2014) , supra note 69at 101.
99
Greene & Kesselheim, supra note 83 at 86.
100
Arthur K. Shapiro & Elaine Shapiro, The Placebo: Is It Much Ado about Nothing? in THE
PLACEBO EFFECT 12, (Anne Harrington ed.,1999). They defined placebo itself as, “any therapy
prescribed knowingly or unknowingly by a healer or used by layman, for its therapeutic effect on a
symptom or disease, but which actually is ineffective or not specifically effective for the symptom
or disorder being treated.”

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indicated that there exists a relationship between the physical appearance of a branded
tablet and the placebo effect to be garnered from it by patients.101 In particular, it
showcases how the placebo effect from a tablet varies with the size, shape and colour
of the tablet.102

Patients react best when colour corresponds with the intended results of the
medication.103 For example, in Norwich Pharmacal v. Sterling Drug104 the court can
be seen observing that since pink was a pleasing colour to those suffering from
stomach ailments, substitutes of Pepto-bismal in different colours would not have the
same effect as far as the patients were concerned.105 Such an effect may be even more
pronounced in patients suffering from psychosomatic disorders such as anxiety,
depression, impotence, obesity, and pain.106

Given the correlation between pill appearance and non-persistence in

otherwise bioequivalent drugs, studies have recommended similarity in appearance
between branded drugs and generic drugs.107 One study even proposed that FDA
should require generic drug manufacturers to retain the physical attributes of branded
drugs.108

Courts have also recognized this important aspect in some of the cases. For
example, in the Shire case, Shire, a branded manufacturer of Adderall (a prescription
drug for the treatment of Attention Deficit Hyperactivity Disorder (ADHD)) had
brought an action against Barr Laboratories, a generic producer, for copying the
colours and shapes used by Shire to indicate dosage.109 In this case, the court noted
that, Shire had failed to show that its product configuration was non-functional.
Interestingly enough, one of the arguments raised by the generic companies with the

101
Greene & Kesselheim, supra note 83, at 87.
102
Ibid
103
See generally, Aarti T. More and R. K. Srivastava, Aesthetic Considerations for pharmaceutical
OTC (over the counter) products, 11(3-4) INT’L. J. BIOTECHNOLOGY, 267 (2010).
104
Supra note 48. See also Iver P. Cooper, Trademark Aspects of Pharmaceutical Product Design, 70
TRADEMARK REP.1, 13 (1980).
105
Supra note 8 at 572.
106
Greene & Kesselheim, supra note 83, at 87.
107
Kesselheim et.al (2012), supra note 69 at 6. See also Kesselheim et. al, (2014) , supra note 69 at
101.
108
Kesselheim et. al, (2014) , supra note 69 at 101.
109
Shire v. Barr, 329 F. 3d 348.

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help of an expert witness was that there was “clinical functionality” when a generic
drug is physically similar to the branded drugs.110 The court, while accepting this
argument, also recognized that such similarity “materially benefitted the patient
population” and denied injunction to Shire.111

All the three aspects highlighted above demonstrate how protection afforded
to non-traditional marks can pose non-traditional barriers to access to medicine/
health. Policymakers would need to take into account these public health aspects
while framing recommendations with regard to non-traditional marks. Unfortunately
most of the international and national health policies have not yet given due
consideration to these aspects.112

6.4. ISSUES OF COMPETITION

6.4.1. Rights over Unconventional Trademarks V. Free Competition

There are no doubts that unconventional trade marks can be registered and
enforced in the EU, providing that they satisfy certain legal requirements described
above. Although this has been clearly established for many years, debates over
whether these trade marks should be eligible for protection continue. The main
argument involved by those who think that the possibilities of unconventional
trademarks becoming trade marks should be restricted is the need to safeguard free
competition.

6.4.1.1. Concept of free competition

The Preamble to the trade marks Directive expressly states that the Directive
does not exclude application to trade marks of provisions relating to competition.113

Free competition is a fundamental principle and “driving force” 114

of the
functioning of the internal market. It is afforded such a high level of protection within

110
Ibid at 357-359.
111
Id.
112
For example, the Doha Declaration is silent in this regard. See Declaration on the TRIPS
Agreement and Public Health https://www.wto.org/english/thewto_e/minist_e/min01_
e/mindecl_trips_e.htm.
113
Preamble 7 to the European trade marks Directive.
114
O. Kolstad, “Competition law and intellectual property rights – outline of an economics-based
approach”, in J. Drexl (ed.), Research Handbook on Intellectual Property and Competition Law,
Edward Elgar Publishing Ltd, 2008, p. 5.

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the system of Community law that it can even be called “artificial”. 115 The Treaty on
the Functioning of the European Union 116(TFEU), in particular, Articles 101 to 106 is
designed to preserve it. According to Article 102, any abuse by one or more
undertakings of a dominant position within the internal market or in a substantial part
of it shall be prohibited as incompatible with the internal market in so far as it may
affect trade between Member States.

Such abuse may, in particular, consist in:

(b) Limiting production, markets or technical development to the prejudice of

consumers;

(c) Applying dissimilar conditions to equivalent transactions with other trading

parties, thereby placing them at a competitive disadvantage.

If intellectual property rights threaten or restrict competition, the rules

protecting competition will come into play.117 Moreover, trade mark law is not
applied by the courts in a vacuum. Instead, market and business considerations,
including those of competition, play a significant role in judicial decisions.118

6.4.1.2. Unconventional trade marks in the light of free competition

According to Article 5(1) of the Directive (and Article 9(1) of the CTMR), a
registered trade mark confers exclusive rights on its proprietor to prevent third parties
from using identical or confusingly similar signs in the course of trade, or, as it was
put in Libertel, “to monopolise the sign…for an unlimited period”.119 This provision
is a cornerstone of trade mark protection and is applicable to all types of trade marks,
whether traditional or not.

115
J. Phillips and A. Firth, Introduction to Intellectual Property Law, 4 th ed., London, Butterworths,
2001, p. 408.
116
Consolidated Version of the Treaty on the Functioning of the European Union [2008] OJ C
115/47.
117
S. Anderman, A. Ezrachi (eds), Intellectual Property and Competition Law: New Frontiers, New
York, OUP, 2011, p. 5, citing Case 102/77, Hoffman La Roche v Centrafarm [1978] ECR 1139
para. 16.
118
V. Liakatou; S. Maniatis “Red soles, gas bottles and ethereal market places: competition, context
and trade mark law”, E.I.P.R. 2012, 34(1), 1-3, 1.
119
Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau, [2003] I-03793, para. 49.

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It is often argued that due to the special nature of a colour not restricted by a
certain shape or logotype on it, exclusive rights of the owner of this colour may be
extended too far. For this reason, the threshold for acquiring distinctiveness for colour
marks is higher in comparison with traditional trade marks.120

At first sight, only the fashion industry should be concerned about the
possibility that a single trader can monopolise certain colours, but in reality the issue
of balancing privileges of trade mark owners and rights of other traders in the market
arises in virtually all fields of business, from pharmaceuticals to oil and petrol, from
confectionery to technical devices. The issue is of relevance not only to Europe, but to
all States where colour marks are eligible for protection. In fact, issues of competition
have even been known to preclude colours from being recognised as trade marks at
all. One reason why colour per se can not be a trade mark in Canada is that “because
it could be seen as a monopoly of the colour in a particular industry”.121

Equally important is the duration of the exclusive rights conferred by a trade

mark. A trade mark can be renewed for an unlimited number of times, and the
protection conferred on the proprietor can last for a very long time.122 The question
then arises whether granting exclusive rights over colour, virtually forever, is fair to
newcomers in the market, and to what extent it could restrict free competition.

There could not be a clear answer to those questions, as intellectual property

rights and rights conferred on traders by rules on competition are in a constant state of
encounter, as well as a search for balance. The reason for this is the “overlap between
the aims of the two fields of law”.123

On the one hand, extensive rights granted by trade marks “artificially restrict
competition”,124 because they are capable of limiting rights of other traders to market

120
M.C. Caldarola, “Questions relating to abstract colour trade marks: recent developments in
Germany”, E.I.P.R. 2003, 25(6), 248-255, 253.
121
Wampole &Co v Hervay Chemical Corp. of Canada (1929) Ex. C.R. 78, aff’d (1930) S.C.R. 336.
122
S. Enchelmaier, “Intellectual property, the internal market and competition law”, in J. Drexl (ed.),
Research Handbook on Intellectual Property and Competition Law, Edward Elgar Publishing ltd,
2008, p. 423.
123
S. Anderman, A. Ezrachi (eds), Intellectual Property and Competition Law: New Frontiers, New
York, OUP, 2011, p. 4.
124
K. Shaw, “Likelihood of coexistence: a comparative analysis of the interplay between European
Trademark law and free competition”, (2009) 18 U.Intell. Prop. L.J. 51.

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their product or service in competition with the trade mark owner.125 For this reason,
there is a need for competition rules to limit exercise of intellectual property rights in
turn.126

But on the other hand, both areas of law have a common goal – promotion of
innovation and commercial activity.127 Competition is not possible without protection
of intellectual property, as a reliable and proper system of protection induces traders
to develop new brands and take an active part in business development, therefore
driving competition in the market.

6.4.1.3. Balancing unconventional trademarks and free competition: in

favour of unconventional trademarks

As argued by Katerina Shaw, trade mark law does not preclude competitors
from producing the same goods or providing the same services as another trader; it
just requires not selling them under the same mark.128 However, when this mark is a
colour, the situation may not be so straightforward.

Still, the CFEU has stated that reliance on considerations of protection of free
competition should be limited. According to the Windsurfing Chiemsee case,129 the
test of distinctiveness should not include considerations of availability of a sign to
other undertakings.130 The approach was accepted in relation to a colour CTM in the
OHIM Case Light green/Leaf green.131 The Board of Appeal said that the “need for
free availability or the (supposed) risk of certain colours being monopolised need not
to be taken into consideration” as this is not required by Article 7(1)(b) of the CTMR,
which interpretation is influenced by the interpretation of distinctiveness under Article

125
O. Kolstad, “Competition law and intellectual property rights – outline of an economics-based
approach”, in Josef Drexl (ed.), Research Handbook on Intellectual Property and Competition
Law, 2008, Edward Elgar Publishing ltd, p. 3.
126
Supra note 123.
127
Ibid; p. 61.
128
K. Shaw, “Likelihood of coexistence: a comparative analysis of the interplay between European
Trademark law and free competition”, (2009) 18 U.Intell. Prop. L.J. 51.
129
Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee Produktions und Vertriebs GmbH
(WSC) v. Boots- und Segelzubehör Walter Huber and Franz Attenberger, [1999] ECR I-2779
130
Ibid; para. 48.
131
Decision of the Fourth Board of Appeal of 28 August 2002 in Case R 785/2000-4 (Colour Mark
(Light Green/Leaf Green)).

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3(3) of the Directive.132 According to those decisions, the general interest of keeping
colours free for use should not be relevant when deciding on distinctiveness of a
colour as applicable to a particular good or service. In spite of this, evidence suggests
that the issue of availability of colour is taken into account as a factor contributing to
lack of distinctiveness and sometimes becomes the main obstacle to registration of
colour trade marks.

6.4.1.4. Balancing unconventional trademarks and free competition:

against unconventional trademarks

The emphasis in arguments that colour trade marks violate competition is

placed mainly on the nature and the abilities of colour and can be summarised as
follows.

Firstly, use of colour is inevitable in trade. All traders use colour for their
logotypes, packaging, advertising material, and containers.133 Rights conferred by a
registered colour mark to one brand owner (who is usually the biggest and most well
known in the industry) could interfere with rights of other traders to use this particular
colour in their advertising or on packaging.134

Secondly, colour is not only inevitable; it may be advantageous and helpful.

Sunila Sreepada argues that “colour not only attracts attention, but also plays a role
in whether consumers choose to purchase the item”.135 Colour is capable of affecting
consumers’ minds, creating associations, and making people like a particular good
more than others. People can even unconsciously choose to buy the item because they
liked its colour or the colour of its packaging. It is sometimes argued that there can be
136
a lack of desirable colours within a particular industry, and if all attractive colours
were registered, new traders would find themselves in a disadvantageous position, as
they would have to choose a less attractive colour for their business.137

132
Ibid; para. 10.
133
D.I. Bainbridge, “Smell, sound, colour and shape trademarks: an unhappy flirtation?” J.B.L. 2004,
Mar, 219-246, 232.
134
Ibid.
135
S. Sreepada, “The new black: trademark protection for color marks in the fashion industry”, 19
Fordham Intell. Prop. Media & Ent. L.J. 1131, 1144.
136
G. Labadie-Jackson, “Through the looking hole of the multi-sensory trademark rainbow:
trademark protection of color per se across jurisdictions: the United States, Spain and the European
Union”, 7 Rich.J Global L.&Bus. 91 2008, p.108.
137
Ibid; p.109.

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Thirdly, it should not be forgotten that one of the most important qualities of
colour is the one for which it can obtain protection as a trade mark, namely, the ability
to individualise the goods or services of a particular undertaking.138 According to
marketing research, colour can increase brand recognition up to 80 percent 139 and
make a good or service stand out.

All those features are valuable in trade. And, taking into account traders’
constant fight for every consumer by all possible means, the objections to
monopolisation of colours seem logical. To a certain extent registration of rights over
a particular colour does mean denial of availability of the colour to other traders in
this field and, as a consequence, limitation of tools to attract consumers. However, as
will be argued below, nowadays those objections have a tendency to extend too far.

The issue of trade mark protection versus competition in the market is further
complicated by the argument of limited availability of colours, or as it is called in the
U.S., colour depletion theory.140 The argument is based on the idea that the number of
colours is limited and monopolisation can lead to lack of available colours for traders
in the same field, particularly newcomers. Moreover, it is suggested that although a
significant number of colours, their shades and combinations can potentially be used
by traders, the ability of the average consumer to distinguish between them, remember
and associate with a particular brand, is restricted.141

Already in Libertel, the first CFEU case that confirmed the capability of
colour to be a trade mark, the Court expressed concern over the fact that the number
of colours which…public is capable of distinguishing is limited, because it is rarely in
a position directly to compare products in various shades of colour. 142 Similar
concerns were expressed in the William Wrigley Junior 143 casual acceptance of basic
and compound colours could, because of the limited nature of colour spectrum,

138
UK IPO Trade Mark Manual, [p.69].
139
J. Morton, “Why color matters”, 2010, [Color and Brand Identity, at para 1]. Available at:
http://www.colormatters.com/color-and-design/why-color-matters.
140
See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).
141
C. Schulze, “Registering colour trade marks in the European Union” (2003) E.I.P.R. 2003, 25(2),
55-67, 59.
142
Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau, [2003] I-03793, para. 47.
143
Decision of the Third Board of Appeal of 18 December 2000 in Case R 122/1998-3 (Light Green).

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prevent competitors from using indefinitely certain colours they might wish to use for
a variety of reasons in connection with their products or services…It cannot be the
purpose of a trade mark protection to deprive the market of its rich diversity of
colours case, where the OHIM Board of Appeal said that144, it should be noted that
the treatment of a particular colour mark by the relevant authorities often depends on
the colour itself and how widely it is used. For instance, in relation to the fashion
industry, it is suggested that the “aesthetic appeal of certain colours is greater than
that of others”.145 The same reasoning can be applied to every other industry. Clearly,
most attractive, or as they are also called – basic or primary colours are the ones that
are used most extensively and the ones that most often become a matter of disputes
and court proceedings.

Therefore, competition issues are more likely to be involved and become

decisive in relation to trade marks (or potential trade marks) that consist of colours
that are “basic” for the industry. The scope of “basic” colours is not entirely clear, but
such colours as red, green or blue could be considered “basic” virtually in every
industry. In Wrigley, colour light green was found to be basic in relation to chewing
gums as it is not “exceptionally unique or unusual” and is “fashionably and
commonly used”. Likewise, furniture company IKEA was not allowed to register a
mark consisting of a combination of colours blue and yellow, one of the
considerations for refusal being that the shades in question were not perceptibly
different enough from the primary colours blue and yellow, since the relevant public
will keep in their mind an imperfect memory of the shades.

The underlying rationale of this approach is the importance of preventing

unnecessary monopolisation and avoidance of putting competitors at a
disadvantage,146 which is especially easy in the case of basic colours. If that line of
reasoning is followed, it can be argued that unusual and less attractive shades would
contradict competition to a lesser extent and be easier to register. Similarly, there is
evidence that in the UK single colour marks are under more scrutiny, especially when

144
Ibid; para. 30.
145
S. Sreepada, “The new black: trademark protection for color marks in the fashion industry”, 19
Fordham Intell. Prop. Media & Ent. L.J. 1131, 1153.
146
Ibid.

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used on packaging or the surface of goods, because the limited number of colours
“reduces the likelihood of the public viewing a single colour as distinctive of one
trader’s goods”.147

To sum up, limited registrability of colour trade marks is directly related to

competition issues that arise in most cases concerning registration or enforcement of
colour marks. In Libertel the CJEU expressly stated that there is a public interest in
protection of competition in the market and not restricting the availability of
colours,148 and for this reason the number of colours that can potentially become trade
marks is limited.149 By its ruling the Court summarised and established a general
restrictive approach influenced by the fear of “unjustified competitive advantage for a
single trader”.150The approach is followed, as the majority of colour trade marks are
refused registration, and only few have succeeded in proving their distinctive
character.

However, it can be argued that nowadays courts tend to rely on public interest
considerations too much. Such an approach can result in unnecessary additional
limitations to registration of colour marks. Namely, trade mark owners would be
required to satisfy not only the test of distinctiveness, but also to prove the absence of
“unjustified competitive advantage”.151

Recent case T-97/08 KUKA Roboter152, presents an example of direct

reference to the argument of availability of colours. In this case the applicant was
unable to prove the distinctive character of his mark and the fact that registration
would not create an unjustified competitive advantage in his favour. The appeal from
OHIM concerned registration of colour orange per se for articulated robots and their
advertising. In its reasoning, the General Court pointed to “public interest in not
unduly restricting the availability of colours for the other operators”. It went even

147
AIPPI, UK Group Report Q181 by Jane Mutimear, Kathrin Vowinckel, Richard Abnett,
Conditions for registration and scope of protection of non-conventional trademarks, at [question
3.6]. Available at: http://www.aippi.org.uk/docs/Q181.UK%20Group.Response.pdf.
148
Case C-104/01 Libertel, para. 55.
149
Ibid; para. 47.
150
Ibid; para. 54.
151
Case T-97/08 KUKA Roboter, para. 46.
152
Case T-97/08 KUKA Roboter GmbH v Office for Harmonisation of Internal Market (Trade Marks
and Designs) (OHIM), [2010] 2010/C 301/41.

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further and expressed fear that registration of a particular shade of orange “would tend
to prohibit competing undertakings from using any shade of orange…or other similar
colours”. Moreover, the Court alleged that “the requirement of availability of
colours…tends to constitute, except in exceptional situations, a bar to registration of
a mark consisting of a colour”

This statement, as well as the reasoning of the Court in general, is clearly

controversial and raises many questions. Why was the Windsurfing Chiemsee
guidance disregarded by the Court? Should the ruling be understood as another
limitation to registration of colour marks? Was it really necessary to adopt such a
restrictive approach?

As Patricia Kelly suggests, this decision “again made clear that obtaining a
trade mark registration for a colour per se is almost impossible without providing
evidence of distinctiveness acquired through use”.153

6.5. NEED FOR CLEAR AND BALANCED APPROACH

In regard to the issue of keeping signs available to other traders, the WIPO
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications is of the opinion that non-traditional marks should face the same approach
as traditional marks.154 Still, in the case of colour marks, this may not always be
possible, as there are quite few colours from which brand owners can choose in
comparison to the number of possible word or figurative marks. The current situation
is such that there is no clear approach as to what extent competition considerations
should be relied upon in colour mark cases.

Taking into account the small number of applications (in comparison with
traditional trade marks), restricted possibilities of a colour to satisfy the requirements
of registrability, and the fact that unfair competition may also be used against traders
whose colour has acquired distinctiveness through use, it can be argued that currently

153
P. Kelly, Case Comment in ITMA Review Issue No. 380 November 2010, at[ p.29]. Available at
http://www.drakopoulos-law.com/pdf/ITMA%20Review_November_2010.pdf
154
WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications, New Types of Marks, Sixteenth Session (Nov. 13-17, 2006), at [63]. Available at:
http://www.wipo.int/edocs/mdocs/sct/en/sct_16/sct_16_2.pdf.

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there is no need for such a restrictive approach as was adopted in KUKA Roboter.
Careful analysis of distinctiveness is sufficient to establish whether a trade mark is
eligible to be registered. Colour trade marks do not currently possess a threat to
competition in the internal market. In fact, the issue does not seem to affect trade as a
whole and the internal market in particular. On the contrary, it is likely to be largely
theoretical.

Moreover, extensive reliance on competition arguments is a dangerous

tendency, as it could result in complete impossibility to register and protect colour
trade marks. The purpose of a trade mark is to identify the source of goods or
services, and some colour marks, with the help of expensive and time-consuming
activities such as advertising campaigns, become capable of doing so. It would
generally be unfair to their proprietors to deny protection on the grounds of lack of
availability of colours. This view is supported by a statement of the INTA
(International Trademark Association), which argues that the issue of availability of
colours should not be paid too much attention, “because of the vast number of colours
available” and because of rules on functionality (prohibiting registration of descriptive
and generic marks) that effectively limit possibilities of registration of colour
marks.155

The case law of various Community courts suggests a lack of uniformity

towards the issue of balancing the desire of traders to ensure full protection of their
colour marks and the need to protect competition. Monopoly considerations were
expressly rejected in the OHIM decision Light Green/Leaf Green that followed
guidance of the CFEU in Windsurfing Chiemsee. But completely opposite
considerations were dominating in KUKA Roboter. Therefore, there is a need for more
precise explanation of the situation.

It can also be argued that lack of a clear approach characterises not only the
EU system but is a current trend also for the U.S. system. And despite the fact that the
U.S. was a pioneer in granting protection to colour marks, one of the latest court
decisions on colour marks seems to raise more questions than it answers.

155
INTA, Board Resolutions, Protectability of Color Trademarks, November 20, 1996. Available at:
http://www.inta.org/Advocacy/Pages/ProtectabilityofColorTrademarks.aspx.

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6.6. THE NORMATIVE CASE AGAINST UNCONVENTIONAL TRADE MARKS

Normatively critiques say, with few exceptions, unconventional trademarks do

not satisfy the expectations we have for trademarks. Even doctrinally, there is little
justification for the protection of non-traditional trademarks. Unconventional
trademarks are functional and do not act as indicators of source. Non-traditional
trademarks are byzantine elements of a good or service.

They do not indicate that the good or service comes from a consistent source.
Even though non-traditional trademarks have recognized a huge spike post- Qualitex,
they are very rarely found valid and infringed by Article III style court.

Jacobson, the losing party in Qualitex v. Jacobson, actually provided the most
the perfect objections to all of non-traditional trademarks, not just color.156 These are
addressed following.

6.6.1. Sense Depletion

Jacobson argued that to protect a color would ultimately limit the number of
colors available for a competitor to use.157 When applying this notion to non-
traditional marks, we might call it sense depletion.

When the human brain can only remember sixteen scents for a long period of
time,158 allowing anyone to register a smell seems to work great hardship, a great
depletion, of that sense. Although there are many sounds available in the world,
allowing anyone to exclude others from the use of sound would inappropriately drive
up transaction costs without the related benefit to society of the trademark use.159 That

156
Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995)
157
Id. at 168.
158
Douglas D. Churovich, Intellectual Property: Policy Considerations From A Practitioner's
Perspective: Scents, Sense or Cents?; Something Stinks in the Lanham Act Scientific Obstacles to
Scent Marks, 20 ST. Louis U. PuB. L. REv. 293 (2001). At 302.
159
See William M. Landes & Richard A. Posner, The Economics of Trademark Law, 78
TRADEMARK REP. 267, 270 (1986) (discussing costs and benefits of trademarks generally).

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is, making a product sound attractive is decoration. Decoration is considered to be

aesthetically functional160 and therefore not protected.

It seems that the sense depletion theory is very important in field of non-
traditional trademarks. Allowing them to be protected depletes the field and does not
result in the expected reduction in transaction costs.

6.6.2. Sense Confusion

With sense confusion, we are worried about articulating a standard by which a

use could be judged as infringing or not infringing. All Circuits have come up with
tests to be applied to traditional marks. This is known as the likelihood of confusion
analysis.

With non-traditional marks, what will be the test? Simple variations of the
non-traditional trademark might result in big differences in perception because non-
traditional trademarks rely on senses that are arbitrary and not well understood. These
senses are not consistent between people. They, in fact, are inherently unreliable.

With a traditional mark, it can be projected to a jury. The jury can look at the
alleged infringing mark, such as KOKE and compare it to the word COKE.161 The
jury can think about whether KOKE infringes COKE. It does not have to agree with
what COKE is, how it should be perceived, or how it is to be known. Those are givens
in traditional trademarks.

With non-traditional marks, the jury has to first decide what the mark is before
it can go on to decide if the mark has been infringed. When non-traditional
trademarks are invoked, reasonable jurors would think differently of the non-
traditional trademark. No two jurors would ever agree on the scent of a mark or the
motion of a mark. These things are subjective and variable. When a scent mark is not

160
W.T. Rogers Co. v. Keene, 778 F.2d 334, 339-40 (7th Cir. 1985) (commercial need precludes
trademark protection); see also Jerre B. Swann, The Design of Restaurant Interiors – A New
Approach to Aesthetic Functionality, 76 TRADEMARK REP. 408, 408 (1986) ("Primarily
attractive features serve 'other than a trade-mark purpose."'); 1-2 GILsON ON TRADEMARKS §
2.11 ("...consumers may not perceive certain nontraditional marks as trademarks at all. They may
see them as merely decorative, as an inherent part of the product or as an attempt to amuse, rather
than as indicating the source of the goods").
161
Coca-Cola Co. v. Koke Co. of Am., 254 U.S. 143 (1920).

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perceived the same between two people or even by one person given weather patterns,
etc. these marks seem too indeterminate to warrant trademark protection. There would
be far too much sense confusion to make sense of these trademarks.

6.6.3. Ability To Act As A Trademark

The biggest worry with non-traditional trademarks is whether they are actually
acting as a trademark at all. Consider, for example, the Yamaha personal watercraft
spray. Is this so-called trademark acting to identify Yamaha personal watercrafts or is
it a nifty product feature that people buy because of the product feature, not because
they are relying on it to identify source. Yet again, we bump into the notion of
aesthetic functionality.

With many non-traditional marks, one does not have to enter the murky lands
of aesthetic functionality to oppose a trademark. Most non-traditional trademarks do
not pass the functionality test.162 Most non-traditional marks are initially refused
registration because of this doctrine. Non-traditional trademarks play a role in
dictating the function of a product. Many of these relate to human senses that we do
not clearly understand. One court denied trademark protection for the color of boat
engines.163 That court held that black motors worked to make an object look smaller
and therefore was playing a function of the product.164

If the nebulous notion of a color contributing to our size perception of the

product is worthy of analysis, I suggest that we do not understand the role non-
traditional trademarks is playing in our purchasing decisions. Do we buy the black
engine because we think engine should be black or because it identifies source? Most
likely, we have an inconsistent image in our minds about what color things should be
or how they should smell, etc. When Mrs. Clark makes her skunks smell like
plumeria, we are not only relieved, we like it. We do not buy the skunks because the
smell indicated source. Plumeria is a very fine scent. We buy the skunks because we
like the smell of plumeria, not because it indicates source.

162
See, e.g., Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (dual-spring design is a
functional feature) (2001).
163
Brunswick v. Corp. v. British Seagull Ltd., 35 F.3d 1527 (Fed. Cir. 1994).
164
Id. at 1529.

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As such, non-traditional trademarks do not play the role of indicating source

and they cannot. Non-traditional trademarks merely make a product more attractive.
The product is purchased by buyers not because of the source denoting capacity of the
non-traditional mark but rather because of an extremely inconsistent, subjective
notion of what is "good" or "attractive."

6.6.4. Is It Worth It?

All this raises a very important question: is it worth it? Critical submission
says that it is not. Non-traditional trademarks are much harder to get than traditional
marks. On average, non-traditional marks take more than 30 months to be registered.
Traditional marks take far less time. Nearly half of all non-traditional trademarks
applied for registration no longer exist. The applications have gone abandoned or the
registrations have been cancelled for non-use. Courts do not enforce non-traditional
trademarks.

Therefore, although obtaining a registration for a unconventional trade mark is

possible in the United States, it is not worth it. It is not worth it from the trademark
claimants' viewpoint as it takes so long and most are lost or abandoned. It is not worth
it from society's point of view as allowing this protection does not reduce transaction
costs. Society gets nothing in return for allowing the protection of non-traditional
trademarks. Non-traditional marks do not play the same role of reducing transaction
costs so that our products cost less. Non-traditional trademarks merely adorn and
beautify our products. Although I'm all in favor of pretty goods, pretty is not a
trademark. Based on the continuing idea as such, critique’s and competition gurus
observe that trademark protection for non-traditional marks is not worth the
investment.

6.7. UNCONVENTIONAL TRADEMARKS AND INHERENTLY VALUABLE

EXPRESSION

Avertising specialists note that "sensory branding" consolidating the five

feelings of sight, smell, sound, taste, and contact can be very constructive in building
a solid brand message and pulling in and holding clients. If the public uses these item
traits—additionally called the "trade dress," "get up," or "distinguishing pretence" of
an item—to distinguish an organization's items and recognize them from different

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merchandise or administrations, a contender's later unapproved utilization of this

distinctive subject matter as an imprint may create turmoil in the commercial domain
and tarnish the uniqueness of the imprint.165

However here and there the qualities of an item are not utilized by buyers to
recognize or recognize that item's source. At the point when a supposed imprint isn't
particular, brand name laws elevate rivalry by declining to permit enrolment of that
item highlight asserted as an imprint. In addition, if the shape, shading with reference
to colour, aroma, sound, flavor, or surface guaranteed as an imprint makes the
products or administrations more valuable or engaging, this component might be
practical under some brand name laws and ineligible for enlistment and protection
with the goal that others can utilize it to adequately contend in trade.

Regardless of whether a non-customary imprint is particular and non-

utilitarian under a country's brand name laws, this segment of the section contends
that administrations ought to consider not conceding restrictive brand name rights in
specific shapes, colors, aromas, sounds, flavors, and surfaces since this topic can
impart articulation secured by the privilege to opportunity of articulation. These item
ascribes may pass on data, thoughts, feelings, delights, or different messages random
to source-distinguishing proof, much the same as a model, tune, or other artistic
work.166 Giving brand name rights in such checks may stifle and kill ensured
articulation without an adequate avocation, as brand name laws today are not
restricted to guidelines of deluding business articulation and it is hard to foresee what
expressive employments of item includes guaranteed as imprints are denied or
permitted.

For instance, Globefill Inc. at present claims a U.S. brand name enlistment for
Crystal Head Vodka's skull-formed glass bottle for mixed refreshments

165
Jerome Gilson & Anne Gilson LaLonde, Cinnamon Buns, Marching Ducks and Cherry-Scented
Racecar Exhaust: Protecting Nontraditional Trademarks, 95 TRADEMARK REP. 773 (July–
August 2005). See also Graeme B. Dinwoodie, The Death of Ontology: A Teleological Approach
to Trademark Law, 84 IOWA L. REV. 611 (1999).
166
Ann Bartow, The True Colors of Trademark Law: Greenlighting a Red Tide of Anti Competition
Blues, 97 KENTUCKY L.J. 263 (2009); Glynn S. Lunney Jr., Trademark Monopolies, 48
EMORY L.J. 367, 433–39 (1999); Kenneth L. Port, On Nontraditional Trademarks, 38 N. KY. L.
REV. 1 (2011); cf. Christopher Buccafusco, Making Sense of Intellectual Property Law, 97
CORNELL L. REV. 501 (2012) (arguing original artistic works that communicate ideas, emotions,
or pleasures to any of the five senses should be potentially copyrightable).

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notwithstanding a design patent and copyright for the figure.167 The jug was planned
by craftsman John Alexander dependent on gem skulls found in the Yucatan.168 The
organization's dominant proprietor, entertainer Dan Aykroyd, said in a meeting that
the greatest test with Crystal Head Vodka is "getting individuals to open the
container. Heaps of times I hear that individuals purchase Crystal Head Vodka for the
jug—that is incredible yet please thrash out that skull."169 Not just does this container
shape bring out the "Legend of the Crystal Skulls" highlighted in the film Indiana
Jones and the Kingdom of the Crystal Skull,170 but a human skull configuration is
regularly connected with occasions, for example, Halloween or the Day of the Dead.
This skull shape was innately significant articulation before Globefill utilized it as an
imprint for vodka and acquired brand name rights in the design. This reality,
nonetheless, has not debilitate or hinder Globefill from forcefully upholding its brand
name rights in the skull shape against contenders and different organizations,
including a British couple selling "Grisly Hell Hot Sauce" in a comparative skull-
formed jug.171

Like shapes, an item's colour, fragrance, sound, flavour, or surface can

likewise pass on intrinsically important articulation. For instance, the colour green can
impart an earthy an environment friendly message and gold may pass on extravagance

167
U.S. Copyright Registration No. VA 1-766-939; U.S. Patent No. D589, 360; U.S. Registration No.
4,043,730.
168
Geoff Kleinman, Dan Aykroyd Talks About Crystal Head Vodka, DRINK SPIRITS (Sept. 23,
2010), http://www.drinkspirits.com/vodka/dan-aykroyd-talks-about-crystal-head-vodka/
(discussing how Alexander who had “been going to the Mexican ‘Day of the Dead’ celebration for
some time” and was “putting skulls in his artwork for years”—wanted to “put tequila in a glass
skull” and then Aykroyd had the idea to “bring back the Mitchell-Hedges skull that was found in
the Yucatan” and they “created Crystal Head Vodka”).
169
Id. The bottle shape is part of the product—and not just packaging for a product—and that is why
it is included here as an example of a non-traditional mark.
170
Jane MacLaren Walsh, Legend of the Crystal Skulls, 61(3) ARCHAEOLOGY ARCHIVE
(May/June 2008), http://archive.archaeology.org/0805/etc/indy.html.
171
Telegraph Reporters, Dan Aykroyd Threatens to Sue Isle of Wight Hot Sauce Company After
Business Pitch Goes Horribly Wrong, TELEGRAPH (July 21, 2017), http://www.telegraph.co.uk/
news/2017/07/21/dan ackroyd-threatens-sueisle-white-hot-sauce-company-business. See also
Globefill Inc. v. Maud Borup, Inc., No. 0:14-cv-04776 (D. Minn. filed Nov. 17, 2014) (cocktail
mixes and hot sauce sold in skull-shaped bottles); Globefill Inc. v. Elements Spirits, Inc., No. 2:10-
cv-02034 (C.D. Cal. filed March 22, 2010) (skull-shaped bottle for tequila); Daniel Siegal, Dan
Aykroyd’s Skull Vodka Co. Wins Booze Bottle IP Trial, LAW360 (Mar. 29, 2017),
https://www.law360.com/articles/907095/dan-aykroyd-s-skull-vodka-co-wins-booze-bottle-ip-trial
(discussing jury verdict for Globefill).

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when utilized on items or packing.172 Heinz's "Power of Red" crusade made an

amazing association between the ketchup brand and "the emotions related with the
colour red: energy, delight, control, and credence." The aroma of coconuts floating
through a retail dress store or a piña colada fragrance applied to ukuleles may
summon summer or a get-away to a tropical island.173 An organization may utilize a
chocolate fragrance or flavor for non-chocolate items to give wantonness or
pomposity. A car producer could utilize the smell or surface of calfskin in magazine
commercials or the vehicles themselves to mean extravagance. A business could
utilize part of a nation's public hymn or customary melody in sounds discharged from
its items or in promoting to pass on an energetic message. While an item highlight
may communicate various messages or nothing by any means, this topic can impart
messages of expressive worth that have nothing to do with the organization which is
asserting brand name rights in it.

When intrinsically expressive item includes utilized as brand names ultimately

recognize an item's source, and are enlisted and secured as brand names, this source-
distinguishing message will regularly be added to the first message instead of
substitute for it. For instance, Globefill's skull configuration can recognize this item as
Crystal Head Vodka and keep on passing on the articulation inherently connected
with that jug's shape. Whether or not an item feature imparts source-recognizing data,
another message, or has more than one significance, this section of the work contends

172
Evert-Fresh Corporation owns registrations for the color green and the phrase GREEN BAGS for
plastic storage bags that preserve fruit, vegetables, and flowers, U.S. Registration Nos. 2,280,244;
2,359,179, and has sued competitors “using similar names and the green color to mimic [the
company’s] shelf-life extender” sold under the brand name “Debbie Meyer Green Bags.” Mary
Flood, Inventor Pockets Court Wins in Fight Over Storage Bags, HOUSTON CHRONICLE (Feb.
13, 2009), http://www.chron.com/business/article/Inventor pockets-court-wins-in-fight-over-
storage-1739011.php. After noting that “[g]old connotes opulence” and “is a natural color to use
on a fancy cookbook,” the Seventh Circuit held the color “is a prime example of aesthetic
functionality” and is not sufficiently distinctive for protection. Publ’ns Int’l, Ltd. v. Landoll, Inc.,
164 F.3d 337, 342 (7th Cir. 1998).
173
Evert-Fresh Corporation owns registrations for the color green and the phrase GREEN BAGS for
plastic storage bags that preserve fruit, vegetables, and flowers, U.S. Registration Nos. 2,280,244;
2,359,179, and has sued competitors “using similar names and the green color to mimic [the
company’s] shelf-life extender” sold under the brand name “Debbie Meyer Green Bags.” Mary
Flood, Inventor Pockets Court Wins in Fight Over Storage Bags, HOUSTON CHRONICLE (Feb.
13, 2009), http://www.chron.com/business/article/Inventor pockets-court-wins-in-fight-over-
storage-1739011.php. After noting that “[g]old connotes opulence” and “is a natural color to use
on a fancy cookbook,” the Seventh Circuit held the color “is a prime example of aesthetic
functionality” and is not sufficiently distinctive for protection. Publ’ns Int’l, Ltd. v. Landoll, Inc.,
164 F.3d 337, 342 (7th Cir. 1998).

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that utilization of non-customary trade mark subject matter in the commercial terrain
can establish "articulation" ensured by the privilege to opportunity of articulation in
treaties, constitutions, and different laws. Along these lines brand name laws
controlling this articulation must have an adequate support and should
straightforwardly encourage the reason for the law and not hider expressive qualities
more than would normally be appropriate to accomplish that reason.

This part of the chapter likewise battles that the free expression right can be
hurt when governments enroll and secure brand name rights in articulation that was
characteristically important in the commercial center before it was embraced or
utilized as a brand name, which is the situation for some non-customary imprints.174
Allowing brand name rights in inalienably significant articulation whether it is colors,
authentic shapes, or other item includes that pass on messages random to the item's
source, conventional or engaging words, or mainstream mottos—is bound to hurt free
articulation contrasted with enlistment and insurance of imprints whose worth is
principally made by the brand name proprietor after the organization started utilizing
the imprint, for example, the APPLE brand name and logo for gadgets.

Countries can decrease the contention between non-customary brand name

laws and expressive qualities by declining to enlist and implement brand name rights
in non-conventional imprints that contain intrinsically important articulation, or by
giving just a thin extent of security for such stamps. Lawmaking bodies and courts
ought to likewise guarantee that trade mark laws directing the specifications for
enlistment of non-customary imprints, the extent of brand name rights, defenses, and
cures are in consonance with the privilege to freedom of articulation.

6.8. THE RIGHT TO FREEDOM OF EXPRESSION

Numerous nations safeguard the right to liberty of expression/articulation;

however there is difference about the reason, substance, and extent of this right.175 A

174
The phrase “inherently valuable” is used in this chapter to refer to expression that had intrinsic
communicative value due to its contribution to the marketplace of ideas and information before it
was used as a mark, and not that this non-source-identifying message is beneficial or high-value
expression (such as political messages).
175
Larry Alexander, Is There a right of Freedom of Expression? (2005); Eric Barendt, Freedom of
Speech (2d ed. 2005); Ronald J. Krotoszynski, Jr., The First Amendment in Cross-Cultural
Perspective: A Comparative Legal Analysis of the Freedom of Speech (2006).

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few people assert that a marketplace of thoughts will prompt the revelation of truth,
while others are of the opinion that we ought to guard the free articulation right to
promote democratic self-governance, advance individual autonomy, or cultivate
resistance.

The "right to freedom of expression" is acknowledged by global arrangements

safeguarding human rights, including Article 19(2) of the International Covenant on
Civil and Political Rights,176 Article 13 of the American Convention on Human
Rights,177 and Article 10(1) of the European Convention on Human Rights.178 The
free articulation right isn't outright, in any case, and countries have noteworthy
discretion to figure out what qualifies as "articulation or expression" and control the
degree and limits of this right. While these global arrangements don't unequivocally
make reference to "trade marks" or explain whether brand name laws are acceptable
guidelines of articulation, the provisions of the above mentioned treaties do permit
limitations of articulation for different reasons, including security of the privileges of
others.

For instance, Article 10(1) of the European Convention on Human Rights

expresses that "the privilege to opportunity of articulation/expression" is ensured and
incorporates "liberty to hold feelings and to receive and confer details and thoughts
without intervention by public authority and a transboundary application without any
barriers."179 This privilege is restricted by Article 10(2), which says: The exercise of
these opportunities, since it conveys with it duties along with responsibilities, might
be dependent upon such formalities, state of affairs, limitations or sanctions as are
endorsed by law and are fundamental in a democracy, in light of a legitimate concern
for national security, regional trustworthiness or public wellbeing, for the prevention
of offence or wrongdoing, for safeguarding the health and morals , for the insurance
of the goodwill and reputation or privileges of others, for prevention of revelation of

176
International Covenant on Civil and Political Rights art. 19(2), Dec. 16, 1966, S. Exec. Doc. E, 95-
2 (1978), 999 U.N.T.S. 171.
177
Organization of American States, American Convention on Human Rights art. 13, Nov. 22, 1969,
O.A.S.T.S. No. 36, 1144 U.N.T.S. 123.
178
Convention for the Protection of Human Rights and Fundamental Freedoms art. 10(1), Nov. 4,
1950, 213 U.N.T.S. 222 [hereinafter European Convention on Human Rights].
179
European Convention on Human Rights.

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information which is received in trust or credence, or for maintaining the power and
fairness of the judicial system.180

A trade mark law meddling with "articulation" is just steady with the privilege
to opportunity of articulation ensured in Article 10(1) if the public authority can
demonstrate (1) the constraint on articulation is obviously gone ahead in a resolution,
code, or line of legal choices, and is adequately available and unsurprising; (2) the law
endeavors to accomplish one of the authentic objectives contained in Article 10(2),
for example, protection of the "privileges of others" (here brand name proprietors and
the general population); and (3) the law is "fundamental in a popularity based
society," which means the limitation on articulation is legitimized by a squeezing
social need, the explanations behind it are important and adequate, and the guideline's
tendency and seriousness is relative to the legal purpose and doesn't outlandishly kill
articulation.181 European states have more freedom to direct business articulation, and
European courts are bound to concede to national governments when the trade mark
law regulates infringing utilization of another's imprint in deluding business
articulation.182

The privilege to opportunity of articulation is likewise unequivocally

perceived in national constitutions, including the constitutions of Canada, Japan,
South Africa, and the United States.183 In certain countries where there is no
established right to opportunity of articulation, for example, New Zealand and the
United Kingdom, the public authority has secured this privilege in enactment.184
Similarly with the treaties, the constitutional and statutory free articulation right isn't
absolute and can be limited in specific conditions to secure other public and private

180
Id. art. 10(2). The Court of Justice of the European Union’s analysis of free expression challenges
to trademark laws would be conducted within the framework provided by the Charter of
Fundamental Rights of the European Union, which protects the free expression right using
identical language and contains similar limitations on this right. Charter of Fundamental Rights of
the European Union arts. 11(1), 52(1), 2012 O.J. C326/391.
181
Jonathan Griffiths, Is There a Right to an Immoral Trade Mark, in INTELLECTUAL PROPERTY
AND HUMAN RIGHTS 309, 322–33 (Paul L.C. Torremans ed., 2008).
182
Ibid at 112–13, 231–351.
183
Canadian Charter of Rights and Freedoms, Part I of the Constitution Act, 1982, being Schedule B
to the Canada Act, 1982, c. 11 § 2(b) (UK); Nihonkoku Kenpō [Kenpō] [Constitution] art. 21, ¶ 1
(Japan); S. Afr. Const., 1996 § 16; U.S. Const. amend. I.
184
New Zealand Bill of Rights Act 1990, § 14; Human Rights Act 1998, c. 42, § 12 (UK); id. sch. 1,
pt. 1, art. 10.

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interests. For instance, Canadian free articulation law comprehensively characterizes

"expression/articulation" to cover whatever passes on or endeavours to pass on
significance, yet Canadian courts regularly discover government restrictions on
articulation to be sensible that can be justified by demonstration in a free democracy.

The United States utilizes an alternate methodology. While the Free Speech
Clause of the First Amendment to the U.S. Constitution gives "Congress will make no
law . . . compressing the ability to speak freely,"185 the U.S. High Court has perceived
that there are noteworthy and customary classifications of articulation which the
government can by and large forbid, rebuff, and otherwise without disregarding the
First Amendment. These straight out special cases for discourse assurance incorporate
profanity, maligning, extortion, affectation to criminal behaviour, discourse necessary
to criminal direct, and deceiving business articulation.186 In the event that a law
directs one of these classes of "unprotected" articulation and doesn't segregate
dependent on the perspective of the speaker, a court may hold the discourse limitation
is substantial under the First Amendment without participating in additional protected
examination of whether the advantages of the law exceed the damage to articulation.
For instance, some U.S. courts have said brand name encroachment laws are
established under the First Amendment when they control misdirecting business
discourse.187

At the point when an absolute exemption for First Amendment protection

doesn't have any significant bearing, constitutional investigation of U.S. laws
synchronizing articulation frequently (however not generally) includes application by
courts of a egalitarian test whose degree of constitutional inspection relies upon
whether the law manages articulation dependent on its substance or perspective, or
whether the articulation is mercantile or non-mercantile. Generally guidelines of non-
mercantile or non-commercial discourse, perspective oppressive laws, and different
laws that target discourse dependent on its informative substance ("content-based"
laws) are hypothetically unlawful and subject to strict investigation, which implies the

185
U.S. Const. amend. I.
186
United States v. Stevens, 559 U.S. 460, 468–69 (2010); Cent. Hudson Gas & Elec. Corp. v. Pub.
Serv. Comm’n of N.Y., 447 U.S. 557, 563–66 (1980).
187
See, e.g., Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1018 (3d Cir. 2008

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limitations are "legitimized just if the government demonstrates that they are barely
custom-made to serve convincing state interests."188 Content-neutral guidelines of
expressive behaviour, laws which manage articulation dependent on time, place, or
manner and other content-neutral laws are regularly assessed under a more loosened
up intermediary scrutiny.189 U.S. courts have additionally utilized a intermediary
inspection test set out in Central Hudson to decide the legitimacy of limitations of
non-deceiving business discourse, which requires the law to be "narrowly drawn" to
straightforwardly propel "a significant interest" and not direct articulation more
widely than would normally be appropriate to serve that interest.190 After the ongoing
U.S. High Court choice in Matal v. Tam, nonetheless, guidelines of business
discourse that stifle specific perspectives or thoughts will probably be liable to
increased or strict constitutional validation.191

In Tam, the U.S. High Court explained that trade mark laws are content-based
discourse guidelines subject to First Amendment investigation when it held that the
federal trade mark law denying enrolment to potential disparaging marks was
unconstitutional was not constitutional. The Tam Court declined to choose whether
the Central Hudson test or an alternate First Amendment test should be utilized while
assessing the lawfulness of brand name laws.192 All things considered, it is clear after
Tam that U.S. courts ought to assess the lawfulness of trade mark laws to decide

188
Reed v. Town of Gilbert, 135 S. Ct. 2218, 2226–33 (2015).
189
Turner Broad. Sys. v. F.C.C., 512 U.S. 622, 641–52 (1994); Ward v. Rock Against Racism, 491
U.S. 781, 791–803 (1989); United States v. O’Brien, 391 U.S. 367, 376–77 (1968).
190
Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n of N.Y., 447 U.S. 557, 562–66 (1980). See
also Jennifer E. Rothman, Commercial Speech, Commercial Use, and the Intellectual Property
Quagmire, 101 VA. L. REV. 1929 (2015) (discussing how courts distinguish between commercial
and non-commercial expression).
191
Matal v. Tam, 137 S. Ct. 1744, 1751–60 (2017) (holding the ban on registration of potentially
disparaging marks in 15 U.S.C. § 1052(a) was an unconstitutional regulation of expression based
on its viewpoint). While four Justices said the Court need not decide whether strict or intermediate
scrutiny analysis applies “because the disparagement clause cannot withstand even Central
Hudson review,” id. at 1764 (Alito, J., plurality opinion) (joined by Chief Justice John Roberts and
Justices Clarence Thomas and Stephen Breyer), five Justices believed that heightened or strict
scrutiny analysis should be used to evaluate the constitutionality of the viewpoint-discriminatory
law regardless of whether it regulated commercial expression. Id. at 1765–69 (Kennedy, J.,
concurring) (joined by Justices Ruth Bader Ginsburg, Sonia Sotomayor, and Elena Kagan)
(quoting Sorrell v. IMS Health Inc., 564 U.S. 552, 566 (2011)); id. at 1769 (Thomas, J.,
concurring).
192
Tam, 137 S. Ct. at 1763 n. 16, 1764 n. 17 (Alito, J., plurality opinion); id. at 1768 (Kennedy, J.,
concurring).

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whether they disregard the free speech right.193 In Tam, the Court likewise noticed the
test for deciding if an imprint might be stigmatizing was unclear and brought about "a
heedless record of authorization," yet it didn't consider whether the Court's void for
vagueness principle applied to this law. A law might be illegally dubious if a sensible
individual can't figure out what articulation is denied. Ambiguity principle perceives
that it is out of line to rebuff individuals dependent on the substance of their
appearance without giving them away from of what language is managed by the law.
Obscure laws kill articulation on the grounds that the danger of sanctions can deflect
legal correspondences.194

In the event that there is a free articulation challenge to a trade mark law in
any country, legislatures or courts should initially choose whether that nation is
having a duty for the protection of the right to freedom of expression by a treaty,
constitution, or resolution. Assuming this is the case, the policy maker should next
consider whether this regulated use of a brand name establishes "articulation or
expression" secured by the free expression right. If a statutory rule, code, legal choice
or decision, or administrative decision disallows, rebuffs, or kills articulation or
damages articulation in other possible ways, the law in question will probably be
liable for review under the balancing tests made by courts deciphering exemptions for
the free articulation directly in treaties, constitutions, or other laws. If laws giving
absolute trade mark rights in item/product traits and other unconventional trade mark
themes are dependent upon this examination, almost certainly, probably some of them
will be discovered conflicting with the privilege to opportunity of articulation.

6.9. UNCONVENTIONAL TRADE MARK LAWS

As shown through a couple of models beneath, the pre-requisite for enlistment

and protection of non-customary imprints can vary, however countries by and large
require the imprint to recognize the brand name proprietor's products or

193
See, e.g., In re Brunetti, 877 F.3d 1330, 1349–50 (Fed. Cir. 2017) (holding that strict scrutiny
applied to this trademark law banning registration of immoral or scandalous marks, but then
concluding that this law is unconstitutional even under Central Hudson’s intermediate scrutiny
test).
194
NAACP v. Button, 371 U.S. 415, 432–33 (1963) (“Because First Amendment freedoms need
breathing space to survive, government may regulate in the area only with narrow specificity.”)

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administrations and capacity as a indicator of their source.195 Conventional images

and different signs that need uniqueness or fail to work as an imprint will generally be
rejected enlistment and protection. Furthermore, trade marks must be fit for graphical
portrayal or meet other measure that gives adequate notice of what precisely is
asserted as an imprint.196 A few—yet not all—legislatures additionally decline to
ensure brand name rights in issue that is practical whether or not the imprint has
become distinctive in the commercial terrain. When a non-conventional imprint is
considered to be a legitimate brand name, it will normally be secured simply like
"customary" marks for transgression and other brand name infringement unless there
is a an application of defense. These trade mark rules can encourage competitiveness
and safeguard the public dominion, however they may not be adequate to secure
expressive qualities for the reasons talked about later.

The federal trade mark resolution in the United States is an illustration of a

law which permits numerous sorts of non-verbal and non-visual imprints or "trade
dress" to be qualified for enlistment and protection. Instead of listing the particular
sorts of non-conventional specifications that can qualify as an imprint in the statute,
the U.S. Congress characterized "trademark" as "any word, name, symbol, or gadget,
or any mix thereof, utilized by an individual . . . to recognize or differentiate their
merchandise, including a special item, from those made or sold by others and to
indicate the origins of the products, regardless of whether that source is obscure."197
The U.S. Apex Court deciphered the words "symbol" and "device" in the resolution
extensively in Qualitex: "Since people may use as a 'symbol' or 'device' nearly
anything at all that is equipped for conveying meaning, this language, perused in a
literal sense, and isn't prohibitive."198 The Court additionally clarified that "it is the
source-recognizing capacity of an imprint—not its ontological status as colours,
shapes, aromas, words, or signs—that grants it to serve" the fundamental motivations
behind trade mark law.199 Hence "nearly anything" fit for conveying "source-

195
See WIPO Committee on Development and Intellectual Property, Study on Misappropriation of
Signs, CDIP/9/INF/5 (M.R.F. Senftleben ed., Mar. 14, 2012) http://www.wipo.int/edocs/
mdocs/mdocs/en/cdip_9/cdip_9_inf_5.pdf [hereinafter WIPO Report];
196
Ibid
197
15 U.S.C. § 1127.
198
Qualitex Co. v. Jacobson Products, Co., 514 U.S. 159, 162 (1995).
199
Id. at 164.

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recognizing" which means can qualify as a brand name in the United States, including
a solitary colour (e.g., Qualitex's green-gold for cleaning press cushions) and other
non-customary stamps, for example, 3-D shapes, aromas, sounds, flavors, surfaces,
and the outside or inside stylistic theme of a structure.200

Such imprints must be enlisted in the United States, nonetheless, they are
unique or distinguishable for the products or administrations, the issue guaranteed as
an imprint isn't useful or functional, and the candidate records a "sample" indicating
how the imprint is utilized in trade.201 Generous evidence of obtained uniqueness
might be needed for enlistment of certain non-customary imprints, and the imprint
must not comprise of issue that is just fancy, enhancing, or educational, or matter
which in any case neglects to work as an imprint.202 Also, courts have declined to
secure brand name rights in certain unregistered non-customary imprints where the
supposed brand name proprietor neglected to demonstrate the imprint obtained
adequate peculiarity through use.203

U.S. courts additionally decline to uphold brand name rights in functional

product features regardless of the fact that whether they are distinguishable or
distinctive. As per the U.S. Apex Court, "the highlights of the product is functional,
and can't serve as trade mark, it is fundamental to the utilization or reason for the
article or on the off chance that it influences the expense or nature of the article."204
An illustration of an item setup with utilitarian usefulness is the state of a double
spring design mechanism that keeps street signs upstanding.205 A component like this
presently or once secured by a utility patent is bound to be discovered useful.206 An
item property wanted by customers for aesthetic as opposed to utilitarian reasons may
likewise be functional under the "competitive necessity" test if giving select rights to

200
Id. at 162–64.
201
Wal-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205, 210–16 (2000).
202
U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure §§ 1202, 1202.02–
05, 1202.13–15, 1212 (Oct. 2017).
203
See, e.g., Savant Homes, Inc. v. Collins, 809 F.3d 1133, 1146–50 (10th Cir. 2016) (floorplan of a
home); Bern Unlimited, Inc. v. Burton Corp., 95 F.Supp.3d 184, 205–11 (D. Mass. 2015) (shape of
sports helmet); Buzz Bee Toys, Inc. v. Swimways Corp., 20 F.Supp.3d 483, 497–505 (D.N.J.
2014) (shape of water gun).
204
TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 32–35 (2001).
205
Id. at 28–32.
206
Id.

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that include "would put contenders at a critical non-reputation-related drawback."207

Use of the colour black for botanical bundling regarding deprivation is an
illustration.208 Such item includes have aesthetic functionality and are probably not
going to be safeguarded as an imprint if few or no similarly viable choices are
accessible to contenders.209

Like the United States, Member States in the European Union permit
enlistment and protection of non-conventional imprints that are distinctive and not
utilitarian. The EU Trade Mark Regulation and EU Trade Mark Directive both give
that shapes, colours, sounds, and different signs are qualified for enlistment if they are
equipped for "recognizing the products or administrations of one endeavor from those
of different endeavors" and the imprint can be spoken to on the brand name register
"in a way which empowers the capable specialists and the general population to
decide the reasonable and precise subject matter of the protection given to its
owner."210 Trademarks won't be enrolled in the event that they are "without any
unique character," yet certain imprints might be enlisted after they have become
distinguishable enough through utilization of the imprint with the pertinent
merchandise or administrations.211

Functional nature of a sign is likewise a flat out ground for refusal of an

enlistment, and this standard applies to "signs which comprise solely of: (I) the shape,
or another characteristic, which results from the idea of the merchandise themselves;
(ii) the shape, or another trademark, of products which is important to get a
specialized outcome; or (iii) the shape, or another trademark, which gives
considerable incentive to the products."212

207
Id. at 32–35 (quoting Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165 (1995)).
208
In re Florists’ Transworld Delivery, Inc., 105 U.S.P.Q.2d (BNA) 1377 (T.T.A.B. 2013).
209
For a discussion of functionality doctrine, see Robert G. Bone, Trademark Functionality
Reexamined, 7 J. LEGAL ANALYSIS 183 (2015); Justin Hughes, Cognitive and Aesthetic
Functionality in Trademark Law, 36 CARDOZO L. REV. 1227 (2015); Mark McKenna,
(Dys)functionality, 48 HOUS. L. REV. 823 (2012).
210
Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the
European Union trade mark art. 4, 2017 O.J. L154/1 [hereinafter EU Regulation]; Directive (EU)
2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate
the laws of the Member States relating to trade marks art. 3, 2015 O.J. L336/1 [hereinafter EU
Directive].
211
EU Regulation, supra note 210, arts. 7(1)(b), 7(3); EU Directive, supra note 210, arts. 4(1)(b),
4(4).
212
EU Regulation, supra note 210, art. 7(1)(e); EU Directive, supra note 210, art. 4(1)(e).

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A few nations require unconventional subject matter to be particular for brand

name enlistment, yet don't unequivocally bar enrollment of item features which are
utilitarian. For instance, in New Zealand, the Trade Marks Act gives that a "trade
mark" incorporates "a brand, shading, gadget, heading, name, letter, name, numeral,
shape, signature, smell, sound, taste, ticket, or word," or a blend of these signs, that is
equipped for "being spoken to graphically" and "recognizing the merchandise or
administrations of one individual from those of someone else."213 The New Zealand
Trade Marks Act doesn't contain an arrangement forbidding enlistment of functional
item features, however the New Zealand Intellectual Property Office may refuse
enrollment of the concerned marks on other reasons for example, absence of
uniqueness.214 Australia additionally doesn't have a non-usefulness necessity for
enrollment of unmistakable imprints in its Trade Marks Act, and uses a comparable
methodology.215

In any event, when brand name laws boycott enlistment of useful item
includes and require solid confirmation of procured uniqueness through use for
enrollment of non-conventional imprints, reporters note that brand name enrollment,
clearances, and implementation of brand name rights in three-dimensional shapes,
colors, aromas, sounds, flavours, and surfaces can be muddled and testing because of
their non-verbal and non-visual nature.216 Besides, in contrast to patented inventions,
mechanical/industrial designs, and copyrighted works, which are just secured for a
restricted span, the term of brand name protection, can keep going forever if the
imprint keeps on going about as a source-identifier in the commercial terrain.
Patented features that give a utilitarian favour will generally be denied brand name
enlistment and safeguard under the principle of being functional in nature. However
governments actually award trade mark rights in the subject matter at present or in the
past secured by copyright and design laws, for example, Globefill's skull-molded
container. This training may make it harder for contenders and others to utilize that

213
Trade Marks Act 2002, pt. 1, § 5 (N.Z.); id., pt. 2, subs 2, § 18 (N.Z.).
214
Rob Batty, Is New Zealand’s Trade Marks Law Out of Shape?, 33(5) EUR. INTELL. PROP. REV.
281–89 (2011).
215
ROBERT G. BURRELL & MICHAEL HANDLER, AUSTRALIAN TRADE MARK LAW 65–
161 (2d ed. 2016).
216
Kevin K. McCormick, “Ding” You are Now Free to Register That Sound, 96 TRADEMARK
REP. 1101 (2006).

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item include guaranteed as an imprint in specific manners after the copyright,

mechanical plan, or configuration patent term has terminated despite the fact that the
topic has evidently entered the public space.217 Not exclusively is a vigorous public
space significant for competitive rivalry; however it likewise advances expressive
qualities, as debated in the succeeding section.

6.9.1. Certain Non-Traditional Trademark Laws May Violate The Free

Expression Right

Brand name or trade mark proprietors may contend that enrollment and
security of non-customary imprints doesn't incriminate or abuse the free articulation
for various reasons. To begin with, they may contend that the public authority i.e. the
government isn't managing "articulation" guarded by the privilege to opportunity of
articulation when it concedes and authorizes brand name rights in non-conventional
imprints on the grounds that the shape, colour, fragrance, sound, flavour, surface, or
other sign is being utilized in a business setting to distinguish an item's source. In the
event that "articulation" isn't being controlled by the public authority, at that point
there can be no infringement of the free articulation right. Second, trade mark
advocates may battle that non-conventional brand name laws for the most part fulfill
the significant adjusting tests made by courts deciphering the free articulation
arrangement in treaties, constitutions, and resolutions on the grounds that these brand
name laws contain inner shields that adequately safeguard articulation. These
contentions are talked about and dismissed beneath.

6.9.1.1. “Expression” capable of protection by the free expression right

While deciding if laws control "articulation" so that it involves the privilege to

opportunity of articulation, courts have perceived that individuals convey utilizing
symbols other than words. For instance, in the United States, the First Amendment
ensures expressive lead or "emblematic discourse" that imparts messages, as well as

217
Some scholars are fine with overlapping copyright and trademark rights for artistic works, but note
problems may arise where the trademark claimant is not originally or is no longer the copyright
owner of the artistic work. See, e.g., Jane C. Ginsburg, Licensing Commercial Value: From
Copyright to Trademarks and Back, in THE LAW AND PRACTICE OF TRADEMARK
TRANSACTIONS: PERSPECTIVES AND CHALLENGES IN A GLOBAL MARKETPLACE
53–81 (Irene Calboli & Jacques de Werra eds., 2016).

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burning a flag and wearing an armband for a protest.218 Different nations likewise
perceive that the free articulation right isn't restricted to language, and safeguard
expressive utilization of characters or emblems and expressive behaviour from
pointless government limitations. Hence, utilization of an item trait or other
unconventional subject matter as an imprint ought to qualify as "articulation" if it
passes on data about an item's source or imparts different messages.

Pundits of utilizing a free articulation system for assessing the legitimacy of

brand name laws may contend that non-customary brand name laws don't embroil the
privilege to opportunity of articulation when non-conventional imprints are utilized
exclusively to recognize and differentiate the wellspring of business items available to
be purchased. This contention ought to fall flat in light of the fact that, by definition,
an image, for example, the skull-molded jug for Crystal Head Vodka just qualifies as
a "trade marks" in the event that it passes on a source-recognizing message (regardless
of whether the specific name of the brand name proprietor, Globefill, is obscure). In
those nations that protect business articulation inside the free expression right, this
data about an item's source is "articulation" despite the fact that it is conveyed in a
business sector.219

In addition, it’s necessary to perceive that brand name laws—including non-

conventional brand name laws—control both the "articulation" of brand name
proprietors and of others utilizing (or keen on utilizing) the imprints without approval.
A brand name proprietor's "appearance" is being directed when the public authority
denies or supports an application to enroll an imprint dependent on the substance of
the message.220 However the public authority is likewise directing and conceivably
cooling the "articulation" of numerous different organizations and individuals when
the trade mark office grants somebody restrictive rights to utilize a non-conventional
imprint with specific products or administrations.

218
Texas v. Johnson, 491 U.S. 397, 399–404 (1989); Tinker v. Des Moines Indep. Cmty. Sch. Dist.,
393 U.S. 503, 505–06 (1969).
219
Mark A. Lemley & Eugene Volokh, Freedom of Speech and Injunctions in Intellectual Property
Cases, 48 DUKE L.J. 147, 219 (1998).
220
See Tam, 137 S. Ct. at 1758–60 (Alito, J., plurality opinion); id. at 1765–68 (Kennedy, J.,
concurring).

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Also, courts reject and penalize "articulation" of a brand name litigant when
they issue a directive prohibiting further utilization of the non-conventional imprint,
or grant financial harms, subsequent to finding the respondent utilized the imprint to
impart a message that is probably going to confound shoppers or mischief the
uniqueness or notoriety of a well known imprint. Utilization of a contender's imprint
to sell indistinguishable merchandise or administrations might be misdirecting
business articulation, and accordingly not secured by the privilege to opportunity of
articulation for that reason. Notwithstanding, utilization of an indistinguishable shape,
colour, or other item trait guaranteed as an imprint may not be deluding if the
subsequent organization is utilizing the imprint to sell various merchandise or benefits
and isn't creating turmoil about the wellspring of its own items. Similarly as two
organizations can possess brand name rights in similar word in various ventures
without creating turmoil (think DELTA aircrafts and DELTA fixtures), utilization of
an indistinguishable item highlight as an imprint may not be deluding if the items
contrast and the litigant never really propose an association between the
organizations.

Some expressive employments of brand names by blamed infringers are

unequivocally permitted under brand name laws, for example, descriptive utilization
of another's ensured imprint to depict an item's characteristics or qualities in a
reasonable and fair manner.221 For instance, expect an organization possesses an
enlistment for the colours pink, brown, and white for frozen yogurt shops, and this
imprint is unmistakable and not useful for this item. In the event that the brand name
proprietor records an encroachment claim against a business that sells and promotes
streak frozen yogurt with the colours pink, brown, and white, and these colours
precisely portray the kinds of this pastry as strawberry, chocolate, and vanilla,
respectively,222 the charged infringer could contend that the expressive reasonable use
and thus the safeguard applies. These colours convey data and this business
articulation implicates the free articulation right.

221
See e.g., 15 U.S.C. § 1115(b)(4); 15 U.S.C. § 1125(c)(3)(A); EU Directive, supra note 210, art.
14(1)(b); EU Regulation, supra note 210, art. 14(1)(b).
222
Cf. Dippin’ Dots, Inc. v. Frosty Bits Distrib., LLC, 369 F.3d 1197, 1203–06 (11th Cir. 2004)
(holding colors were functional for flash-frozen ice cream and could not be protected as marks
because they indicate the flavors of the product).

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Legitimate referential utilization or nominative reasonable utilization of

another's imprint is additionally allowed in certain jurisdiction, and includes
utilization of the ensured imprint to honestly recognize the brand name proprietor or
its items.223 For instance, another business may utilize the imprint in promoting to
convey that it is selling real utilized merchandise, accessories, spare parts, or fix
administrations for the brand name proprietor's items. Furthermore, some brand name
rules explicitly permit utilization of another's imprint in satire, parody, analysis,
critique, commentary,224 or reporting of news225 or comparative advertising.226 These
safeguards ought to apply to articulation that joins another's non-conventional imprint.
The law ought to permit a craftsman to show an art installation at a gallery that
incorporates different fragrances enrolled as imprints, or sell banners with scratch and
sniff stickers of these aromas in the museum gift shop, to spoof or parody, gripe
about, or praise the brand name proprietors' enlistments or the public authority's
choice to permit enlistment of fragrance marks. Journalists or bloggers should be
permitted to show a photograph of the LEGO Minifigure item arrangement close to an
article about LEGO Group's items. It should be lawful for contenders to utilize a
photograph of the LEGO Minifigure in a genuine comparative about the cost of
contending toys, or a commercial for frill viable with the Minifigure or utilized toys
recently sold by LEGO Group.227

Labelling utilization of a non-conventional imprint as "articulation" doesn't

imply that all guidelines of it disregard the privilege to opportunity of articulation. It
basically implies courts ought to assess the free articulation cases of the brand name
proprietor, denounced infringers, and general society, and the government must
legitimize the law under the pertinent free articulation adjusting test in that domain.

Consider the possibility that a charged infringer didn't intends to pass on a

message when it utilized another's non-customary imprint? At the point when an
organization utilizes a colour or other item highlight in the commercial center as a

223
See e.g., EU Directive, supra note 210, art. 14(1)(c); EU Regulation, supra note 210, art. 14(1)(c)
224
See, e.g., 15 U.S.C. § 1125(c)(3)(A)(ii).
225
See, e.g., 15 U.S.C. § 1125(c)(3)(B).
226
See, e.g., 15 U.S.C. § 1125(c)(3)(A)(i); Trade Marks Act 1995 (Cth), § 122(1)(d) (Austl.).
227
Note the researcher made up the examples in this paragraph; they are not based on real trademark
disputes.

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result of the item's natural traits or for arbitrary reasons, the brand name proprietor
may contend this isn't "articulation" equipped for security by the free articulation right
in light of the fact that there is no expectation to impart. An organization may sell a
clinical gadget with a pink tone since that is the common shade of the materials used
to make the item.228 A bank may haphazardly choose to utilize red in its logo, stylistic
layout, and promotions and later find that a contender enrolled that colour as an
imprint and is guaranteeing the selective option to utilize it.229 In the event that there
was no informative aim when this shading was utilized by the charged infringer,
courts may address whether the respondent could later contend in a trade mark debate
that it has a free articulation option to utilize this color.230

Regardless of whether a specific organization doesn't have a goal to impart a

message when it utilizes a shading or other item include, non-customary imprints pass
on articulation and courts should locate the free articulation right is commonly
implicated when the public authority enlists and safeguards distinguishable non-
conventional imprints. The public authority is directing this present brand name's
message dependent on its substance and uses trade mark laws to limit utilization of
that particular message by others after granting trade mark rights in it."Articulation" is
implicated when governments regulates without bothering whether or not the
denounced infringer (e.g., the couple who makes Bloody Hell Hot Sauce) is utilizing
the non-conventional imprint (e.g., a skull-formed jug) to recognize the source of its
items (e.g., Globefill, the producer of Crystal Head Vodka, or the hot sauce
organization), depict or brighten its items, or pass on different messages (e.g., this hot
sauce is deadly).

228
The pink color would be functional for a ceramic hip implant that contains chromium, C5 Med.
Werks, LLC v. CeramTec GmbH, 249 F.Supp.3d. 1210, 1218 (D. Colo. 2017), appeal docketed
No. 17-1173 (10th Cir. May 19, 2017), but the plaintiff may have trademark rights in the color for
different goods or services where pink is not functional.
229
Competitors of a bank challenged the distinctiveness of a registered mark for the color red in
Joined Cases C-217/13 & C-218/13, Oberbank AG & Others v. Deutscher Sparkassen- und
Giroverband eV, 2014 E.C.R. 2012 (June 19, 2014).
230
In the United States, for example, expressive conduct is capable of protection by the First
Amendment if “an intent to convey a particularized message was present, and in the surrounding
circumstances the likelihood was great that the message would be understood by those who viewed
it.” Spence v. Washington, 418 U.S. 405, 410–11 (1974). See also Texas v. Johnson, 491 U.S. 397,
403–04 (1989). Scholars criticize this test as not sufficiently protective of the public interest in free
expression. See e.g., Robert Post, Recuperating First Amendment Doctrine, 47 STAN. L. REV.
1249, 1250–60 (1995).

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6.9.1.2. Balancing non-traditional trademark rights and free expression

To appropriately assess whether non-customary brand name laws are steady

with the right to opportunity of articulation, courts will initially have to recognize the
reason for the particular law and decide whether those brand name objectives fulfil
the pertinent measures for government interests in that locale (e.g., the law secures the
privileges of others and is important in a majority rule society in the EU, or serves in
any event a considerable government interest in the U.S.). For instance, in the United
States, the public authority fundamentally enlists trade marks and guards brand name
rights to encourage the correspondence of honest source-distinguishing item data;
prevent deceitful, beguiling, or misdirecting employments of imprints; and advance
competitive rivalry.231 These brand name objectives advantage buyers and brand
name proprietors. Courts assessing a free articulation challenge to a non-conventional
brand name law will probably locate these essential objectives of U.S. brand name
law to be generous (if not convincing) government interests.

While the free articulation tenets utilized by courts to adjust trade mark
objectives and expressive qualities may vary, the examination will probably
incorporate a fixation of the significance of the government interests utilized
legitimize this particular limitation on articulation, regardless of whether there is a
sensible and corresponding fit between the brand name law and its motivation, and a
conversation of how the law hurts articulation. Pundits of non-customary brand name
laws contend these laws by and large neglect to assist purchasers to recognize and
distinguish among contending items, don't prevent misrepresentation or duplicity in a
critical manner, and harm competitive rivalry since product features asserted as
imprints are seldom unmistakable and frequently contain valuable, creative, or in any
case attractive subject matter that ought to stay in the public space for use by all
manufacturers.

231
15 U.S.C. § 1127 (setting forth the intent of the federal trademark law); Matal v. Tam, 137 S. Ct.
1744, 1751–52 (2017) (discussing the reasons for trademark protection); id. at 1768 (Kennedy, J.,
concurring) (stating that the “central purpose of trademark registration is to facilitate source
identification”); id. at 1768 (“It is well settled, for instance, that to the extent a trademark is
confusing or misleading the law can protect consumers and trademark owners.”).

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Non-conventional brand name laws are more likely to advance the essential
objectives of brand name law and guard the public space if governments require non-
customary imprints to be non-functional and have solid and considerable proof of
obtained uniqueness through use before they are enrolled and secured. Tragically not
all countries have these stipulations. Also, regardless of whether a brand name office
or court decides a non-conventional imprint has gained uniqueness, this determination
may not need a majority of customers to accept the item trait is a source-recognizing
mark as opposed to ornamentation, enhancement, or other articulation. Contrasted
with words, logos, and other "customary" marks, item traits might be less likely to be
seen by shoppers as imprints.232 Along these lines, for countless purchasers
unconscious of the source-recognizing message, enlisting and ensuring brand name
rights in non-conventional imprints won't straightforwardly propel the capacity of
those individuals to distinguish the wellspring of items or diminish disarray in the
commercial establishments.

Also, expecting organizations to demonstrate gained uniqueness through

utilization of non-conventional imprints will support bigger organizations over new
businesses and individual dealers, and make it simpler for celebrated brands to keep
up their solid stand in the commercial center. Large firms frequently have more cash
to spend on publicizing including the non-conventional imprints, and their
showcasing and sales can cover more geographic zones and will probably be of higher
volume. Such proof demonstrates acquired peculiarity, and subsequently it is likely
that, settled organizations will be the ones to get select trade mark rights to
unconventional subject matter. Disposing of trade mark rights in non-conventional
brand names may therefore advance rivalry in competition and other brand name law
objectives better than securing rights in such imprints, as it would permit everybody
to utilize the ideal item property to contend in the commercial center and recognize
their merchandise utilizing words, logos, and other "customary" marks.

Legislatures can likewise secure expressive qualities and advance brand name
law's essential objectives by requiring evidence of misrepresentation or deceiving

232
Wal-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205, 213 (2000) (noting a product’s shape can
make it more useful or appealing).

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utilization of another's non-customary imprint for brand name accountability.

Notwithstanding the fact current brand name laws control non-deceiving articulation,
and imperil secured articulation since they don't give away from of what articulation
is disallowed or permitted. The laws are ambiguous and overbroad instead of
narrowly drawn in light of the fact that proprietors of non-customary imprints can sue
under brand name laws when the articulation isn't deceiving and the parties are not
contenders. Neither weakening nor encroachment law requires confirmation of
misrepresentation or genuine disarray (just a probability of disarray is adequate for
encroachment), and both laws can apply to respondents selling different items. The
mischief to articulation is exacerbated when organizations claim brand name rights in
illustrative shapes, colors, and other item ascribes that communicated intrinsically
important messages before they were received or utilized as imprints. Laws allowing
brand name rights in non-conventional topic that inherently passes on a message are
much the same as laws conceding restrictive brand name rights in descriptive terms,
which are ostensibly unlawful guidelines of business articulation in the United States.

At the point when governments are concluding whether to permit enrollment

and protection of certain non-conventional stamps, and are adjusting the free
articulation claims of the brand name proprietor, different organizations, and the
general population, they ought to think about the nature and seriousness of the
impediment on articulation, including whether the law boycotts and punishes
articulation or just debilitate articulation, and the measure of individuals whose
articulation is influenced by the guideline. Brand name proprietors may contend that
denying enrollment to a non-customary imprint will petrify the organization's
utilization of that articulation since this regulation decreases the motivating force to
utilize that topic as an imprint, yet brand name enlistment laws don't preclude or
punish the organization for utilizing that item trait. The organization can still utilize
this product feature regardless of whether it can just enroll words, logos, and other
"customary" marks. Accordingly, refusal to registration of non-customary brand name
subject matter doesn't significantly hurt articulation.

Then again, giving enrollment to a non-conventional imprint that contains

innately important articulation causes substantial harm to the opportunity of

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Recent Trends and Issues in Unconventional Trade Marks

articulation. Enrollment debilitates utilization of this message by numerous different

organizations and individuals who might need to convey utilizing a similar shape,
colour, or other expressive product feature. More critically, encroachment and
dilution laws securing non-conventional imprints permit courts to boycott and punish
utilization of the imprint in articulation.233 This is a more extreme limitation of
articulation than a law prohibiting enlistment of such marks. Additionally, permitting
enlistment of shapes, colors, and other item ascribes builds the opportunity that a
contender's items or advertising will be taken out from the sites of organizations, for
example, Amazon or Google once a brand name proprietor complains that its enrolled
trade dress is being encroached by this contender. This private restriction of business
articulation may hurt competitive rivalry and expressive qualities if this utilization of
the enrolled mark isn't deceiving.

Non-customary brand name laws are additionally more dubious and capricious
than laws allowing brand name rights in words and other conventional imprints, and
therefore unjustifiably will unwind more articulation, in light of the fact that the non-
visual or non-verbal nature of certain non-customary imprints makes it harder to
figure out what is enlisted and secured as an imprint. Many brand name enlistment
laws don't expect imprints to be outwardly discernible for enrollment, and the specific
forms of an imprint comprising of a fragrance, sound, flavor, or surface might be
unclear. Also, shapes, colors, and different highlights of an item are not generally
utilized as source-identifiers, so denounced infringers may not know another person
claims responsibility for brand name in a product features until they get a demand
letter or complaint. Extra vulnerability exists under the law on the grounds that the
parties’ non-conventional imprints and products or administrations need not be
identical for brand name infringement. Contenders, craftsmen, journalists, and
different organizations and individuals taking part in articulation may self-edit
whenever they are blamed for transgression or dilution since they can't figure out
what is guarded as an imprint or whether an undermined brand name claim will be
effective.

233
See, e.g., T-Mobile US, Inc. v. Aio Wireless LLC, 991 F.Supp.2d 888 (S.D. Tex. 2014) (granting
preliminary injunction after finding T-Mobile was likely to succeed on claim that competitor’s use
of plum color infringed T-Mobile’s magenta color mark).

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Brand name laws do incorporate defenses and some contain other interior
shields, for example, a brand name use or business use necessity for liability—that
advance rivalry in competition and protect expressive employments of imprints.234
These laws ought to apply in questions including non-conventional imprints, however
use of these guidelines might be more muddled in cases including shapes, colors, or
other item credits asserted as imprints. For instance, since item includes are frequently
not utilized as imprints, sensible individuals may differ on whether a respondent is
utilizing the secured shape or shading "as an imprint," for enrichment, or for different
purposes. The guidelines for deciding if a word mark is utilized in any case than "as
an imprint/mark" by the charged infringer—for instance, in a sentence instead of in a
brand name or motto—don't have any significant bearing when the imprint is an item
design, colour, aroma, sound, flavour, or surface/texture. Another issue is that brand
name protections like descriptive fair use just apply in restricted conditions and can be
fact intensive, making it hard for courts to discard frivolous brand name claims early
in the litigation. Besides, some public brand name laws don't contain adequate legal
standards permitting expressive employments of another's imprint. For instance, the
U.S. brand name rule doesn't unequivocally need brand name use or business
utilization of an imprint for encroachment obligation, and there is no legal protection
for spoof/parody, criticism, commentary, comparative advertising, news report, or
non-commercial utilization of the imprint in the infringement statute.

Likewise, U.S. encroachment and dilution laws don't contain a legal guard
permitting unapproved utilization of another's imprint in parody or satire and other
articulation inconsequential to the brand name proprietor.235 Hence it is muddled
whether utilization of another's non-conventional imprint in editorial about recent
developments would abuse brand name law. For instance, after a traveler was
powerfully taken out from an overbooked United Airlines flight, somebody posted an

234
See e.g., Trade Marks Act 1995 (Cth), § 120 (Austl.) (requiring use “as a trade mark”); EU
Directive, supra note 210, art. 10(2) (requiring use “in the course of trade”); EU Regulation, supra
note 210, art.9(2) (same); 15 U.S.C. § 1125(c)(3)(C) (exempting “noncommercial use of a mark”
from dilution liability).
235
Jane C. Ginsburg, “See Me, Feel Me, Touch Me, Hea[r] Me” (and Maybe Smell and Taste Me
too): I am a Trademark—a US Perspective, in TRADE MARKS AND BRANDS: AN
INTERDISCIPLINARY CRITIQUE 92, 104 (2008). Dilution law’s exemptions for parody,
criticism, and commentary only apply when the mark is used to identify the trademark owner or its
goods or services. 15 U.S.C. § 1125(c)(3)(A)(ii).

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Recent Trends and Issues in Unconventional Trade Marks

obviously phony LEGO "Traveler Removal Playset" online that contained a

photograph of LEGO Minifigures.236 If LEGO Group sued for brand name
infringement, a court would probably discover this articulation doesn't disregard the
organization's brand name rights in its logo or item setup in light of the fact that the
message was not liable to create turmoil or is non-business articulation. All things
considered, the designer of this articulation or a website facilitating it would most
likely eliminate the photograph if LEGO Group complained because of the cost of
protecting a claim and vulnerability about whether this articulation is permitted. A
law that chills non-misdirecting or non-business articulation like this can hurt
expressive qualities.

Aesthetic functionality principle in the United States may hamper enlistment

of non-customary imprints which pass on messages if there is a serious need to utilize
the non-reputation-related aspects of that item trait, however the functionality
rejection from enrollment doesn't secure articulation properly. This law possibly
applies if the symbol or gadget asserted as an imprint by the plaintiff is comprised of
functional matter; functional utilization of the item trait by the defendant isn't
pertinent to the analysis of functionality.237 A shape, a colour shade, or other features
of an item could be enlisted in an industry where the element isn't functional, and
afterward the brand name proprietor could sue an organization selling dissimilar
merchandise or services who is utilizing this imprint in a functional manner and
contend this unapproved use creates bewildering about affiliation or consent. In the
event that there is no defense of functionality in that purview, it could be hard for the
blamed infringer to get a fast resolution of the brand name dispute in its favour.

Another issue with relying on doctrine of functionality to safeguard expressive

qualities in non-customary brand name laws is that the accessibility of various
alternatives can count against a finding of aesthetic functionality (however not
utilitarian usefulness) in certain jurisdictions. For instance, in Qualitex, the U.S.
Supreme Court said that colour is valuable for covering stains on cleaning press
cushions, however held the colour green-gold isn't functional for that item in light of

236
LEGO United Airlines Kit, BEHEADING BOREDOM, http://www.beheadingboredom.com/lego-
united-airlines-kit/ (last visited Jan. 15, 2020).
237
15 U.S.C. § 1052(e)(5) .

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the fact that different colours can serve this purpose similarly well.238 Then again, the
presence of alternative language isn't adequate to legitimize a content based limitation
of guarded articulation in the United States and different nations; the privilege to
opportunity of articulation incorporates the option to pick the vehicle of your
demeanor.239

At last the free articulation interests of general society—the devouring

"crowd"— should be viewed as when governments decide if they should enlist and
safeguard brand name rights in non-conventional imprints, as the privilege to
opportunity of articulation incorporates the option to "get" the data, thoughts, and
other articulation. Purchasers might need to purchase an item with a specific
illustrative shape, colour, fragrance, flavour, or surface/texture since that component
communicates messages inconsequential to the brand name proprietor. Conceding
selective brand name rights in this innately important articulation will probably
diminish the accessibility of contending items with that expressive characteristic and
damage the privilege of the consuming public to get that articulation from different
organizations.

For these reasons, countries ought to consider not enrolling non-customary

brand name subject matter that was characteristically significant before it was
embraced or utilized as an imprint, or just grant a thin extent of security. Any free
articulation right or brand name right of a business to enlist this naturally important
articulation is ostensibly exceeded by the privileges of contenders and different
organizations to impart this articulation and the privilege of purchasers to get it.

6.10. CONCLUSION

The critical appraisal which I don’t adhere to in this context is that countries
ought to consider rejecting to enlist and safeguard trade mark rights in non-
conventional imprints that contained intrinsically important articulation before they
were embraced or utilized as imprints. This change of non-conventional brand name
laws will better secure the privilege to opportunity of articulation and guarantee a

238
Qualitex Co. v. Jacobson Prods., Co., 514 U.S. 159, 166–69 (1995).
239
See, e.g., Cohen v. California, 403 U.S. 15, 26 (1971)

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powerful open area of product features and advertising strategies stays accessible for
use by well established organizations and new participants to the market. Brands may
at first and justifiably oppose endeavors to change non-conventional brand name laws.
However in our worldwide and evolving economy, brand name laws must assist firms
with holding the capacity to utilize better approaches to communicate and contend
decently when they promote and sell merchandise or administrations wanted by
buyers. Organizations may adjust the state of their products or packaging, or change
the colours in their store or advertising. They may decide to pass on a message or
appeal to our non-visual faculties by assimilating an aroma, sound, flavor, or
surface/texture into their items or marketing. Brand name laws should empower them
to participate in this articulation. Given the way that organizations can recognize their
items utilizing words, logos, and other "customary" marks, it is improbable those
brands will diminish the nature of their items, or that shoppers will be not able to
discover the items they need, if certain non-conventional brand name can't be enrolled
or guarded as a brand name.

As is evident from the discussions in this chapter, any policy/ judicial decision
on extending protection to non-traditional marks should not limit itself to the contours
of trademark law, but must also explore the larger public health policy concerns.
Trademark protection should not be allowed as a means to extend the monopoly of a
branded drug in perpetuity. As the previous section illuminates, granting protection
for non-traditional marks in the pharmaceutical sector may pose significant non-
traditional barriers to access to medicine. This could include increase in transaction
costs and barriers to generic entry. As discussed in this chapter, it is relevant to note
that many of the physical attributes of pharmaceutical products warrant rejection of
trademark protection, on grounds of functionality. The need of the hour is rigorous
use of traditional legal doctrines like functionality to prevent the rise of non-
traditional barriers to access to medicine. Because this chapter has an analytical
approach and I can’t overlook the criticism involve as to why these marks should not
receive a welcome reception yet the researcher doesn’t adhere to a sweeping rejection
of unconventional trademarks.



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CHAPTER-VII

CONCLUSION AND SUGGESTIONS

This last chapter will examine unconventional trade marks and where they
belong in the market. Indeed, the main proposal of this thesis is to examine, upon
other matters, whether unconventional trade marks could ever work as true trade
marks. If this is so, then undoubtedly they do deserve protection under this legal
system. On the contrary, if unconventional trade marks do not act as signs, the
question is: can they still be protected?

This chapter therefore will begin by studying the problem caused by the
subjective nature of these marks. It will continue by analyzing how non-conventional
trade marks are perceived in the market and it will study the kinds of smell and taste
that may work as trade marks. Overall, it will be argued that chemical senses do clash
with the obstacles they meet i.e. being seen as trade marks by consumers.

Yet, owing to the significance of modern trade marks as desirable symbols it is

important to examine the influence of chemical senses on markets and consumers.
Thus, to finalize, regardless of what the future holds for chemical senses as trade
marks, there is always the possibility of protecting them through alternative rights,
namely, passing off, unfair competition and even copyright. That said, if chemical
senses are to be protected, they need justification, and so, the final section will
examine the market development and social changes for future prospects in the area
of chemical senses.

Throughout previous chapters it has been discussed that the majority, if not all
unconventional marks, do have the same problem -- working as trade marks.
Generally, discussions surrounding any conventional trade mark would be relevant to
chemical senses since the same or similar issues do arise, namely graphically
representation, distinctiveness and functionality. Throughout these pages, it has been
illustrated that colour marks, three dimensional shape marks and even sound marks
have difficulty in being registered but not as much as chemical sense marks.

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Conclusion and Suggestions

The most frequent reason for the refusal of chemical senses has been that of
graphical representation. Because of this, the debate about lack of distinctiveness and
functionality has been put aside. I do believe however, that these issues are as difficult
to overcome as the issue of graphical representation.

A general overview, especially from manufacturers, favours registrability of

unconventional marks. Yet, it seems that chemical senses may not function as trade
marks at all due to their subjective nature.

7.1. CHEMICAL SENSES--SUBJECTIVE NATURE

Whilst assessing smell and taste, the presence of chemical interactions is at

issue. Therefore, to discuss chemical senses is challenging due to this topic being
poorly understood. Indeed, smell and taste are among the least accessible sensory
stimuli to the methods of science.1 No one is certain as to how many or what kind of
basic chemical senses there are.2 For example, the most commonly accepted smell
sensations are: fruity, flowery, spicy, resinous, burning, and putrid. For taste it would
be: salt, sour, bitter, and sweet.3

Added to this is the fact that our olfactory and taste stimuli are based on our
reactions to particular chemicals. Moreover, taste sensations vary depending upon
temperature. An illustration can be observed in the following example: sensitivity to
bitter tastes increases as temperature decreases; conversely, sensitivity to sweet tastes
increases as temperature increases. Adaptation also plays a crucial role. The intensity
of an odour seems to decline the longer we are exposed to it. In the same line,
adaptation to the taste of one substance may either enhance or reduce our sensations
of another taste.

Bearing in mind that many odours can be recognized, they are therefore
charged with emotional and social content. To complicate matters, every day we are
confronted with a variety of olfactory and taste stimuli at the same time and thus, the

1
C Classen, D Howes and A Synnott, Aroma â€“ The Cultural History of Smell (Routledge, London
1994) p. 88.
2
J Ludel, Introduction to Sensory Processes (W.H. Freeman, San Francisco 1978) p. 339.
3
J Gibson, The Senses Considered as Perceptual Systems (Greenwood Press, 1983) p. 149.

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Conclusion and Suggestions

combination of these can produce unique results that cannot be described as the sum
of separate sensations.

In John Lewis of Hungerford’s Application,4 the appointed person considered

the words—the smell, aroma or essence of cinnamon to lack precision due to its
subjectivity. It is indeed a description that while intelligible by anyone, does not give
the precise smell. The situation is very simple; not everyone is familiar with a
determined smell. Moreover, as mentioned in the previous paragraphs, chemical
senses stimuli vary depending on temperature, adaptation, emotions and so on.

It is indeed impossible to try to create a sign that is objective which in nature

is subjective. However, observe the following: art work is very much subjective but
this subjectivity does not make the work any more or less artistic. The question is:
would the same apply to chemical senses? The subjectivity of a smell and/or taste will
make the sign more or less distinctive. This, as explained in Chapter V, will result in a
sign being barred from registration ab initio. Moreover, as also mentioned in Chapter
VI, subjective marks are bound to be problematic when assessing infringement.
Therefore, because of the subjective nature of chemical senses, I am concerned about
their potential for protection under the trade mark system.

7.1.1. Chemical Senses: Aptitude to Function As Marks

Without doubt, the senses that dominate our lives are sight and hearing.
However, manufacturers have realized the commercial potential of odour and taste
and have started to promote these. For example, scratch and sniff have been used in
advertising/marketing for years. Indeed, the market has developed in response to these
conditions and now the commercialization of smell as well as taste is in place i.e.
PLAY-DOH’s smell; JOHNSON’s baby shampoo smell; ABERCROMBIE & FITCH
clothes’ fragrance; and flavored medicines, among others.

Hence, this section will examine the use of chemical senses in products which
might be perceived in some cases as part of the product, or a complement to it, or an
embellishment. The question is: do chemical senses act as trade marks?

4
John Lewis of Hungerfordâ€™s Application [2001] ETMR 1193.

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Conclusion and Suggestions

7.1.2. Examination Of Socio-Economic Problems: The Market Conditions

In a previous chapter it was explained that there exist certain occasions where
consumers do not buy a product because of its primary function - origin, but because
of the commodity, fashion and style associated with it. Unquestionably, in the area of
smell, advertisement of perfumes and deodorants induce new identities by evoking
fantasies.

Smell and taste not only have targeted the usual toiletries market but have
become more present in pharmaceuticals, foods, stationary and are also used in
services as part of their trade dress. Therefore, from being just an essence of material
culture they have risen as an indication of social status. There is a vast range of
products where chemical senses have become crucial to consumers. That said, smell
and taste are starting to be used in products to make them more desirable and worth
buying. These reasons make chemical senses less likely candidates for signs as trade
marks. Moreover, if registered, it will be difficult for the owners to prevent the use of
these signs by third parties because they are used just as marketing tools and not as a
trade mark as mentioned in the previous chapter.

From this point of view, undoubtedly the function of these signs is to sell a
product rather than to distinguish it. For instance, the practice of adding aroma to
products and to some extent taste to edible products might increase their appeal.
According to marketers, the smell has a direct connection to the brain whereas the
other senses only communicate messages to the brain through intermediary synapses.
The situation is that consumers generally prefer smelled products due, not only to
being perceived as more pleasant, but also to being perceived as more efficient and of
better quality. This latter statement give rise to a chemical sense mark being caught by
Art 7(1)(c) CTMR and also in Indian trade mark laws (descriptive signs).

It is worth noting however, that the rationale for affording protection to these
new types of signs is evident. Chemical senses are indeed good commodities and thus
are worthy of protecting due to the investment of traders in building up the image.
Nevertheless, it cannot be forgotten that the basic function of a trade mark is to
distinguish the goods/services of one business from those of another. Hence, what has

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Conclusion and Suggestions

to be assessed is whether the sign serves to convey information as to the origin of the
product or, is just a commodity and thus not considered to be a trade mark.

In Chapter 2, we observed that the function of trade marks go beyond origin

and quality. In today’s market they do indeed perform an economic function. Yet,
whilst protection of trade marks as an economic asset becomes rational, there is an
urgent need to not undermine the historical function of trade marks. The point is that
trade marks not only seek to protect the reputation of the sign alone, the new figure of
dilution, but they seek mainly, to protect the source. Therefore, encouraging
undertakings to only rely on the economic function of their trade marks is not right.
Trade marks must, at least, be able to serve as a guarantee of origin.5

Retaking the subject of market conditions, note that these new signs, although
thought to be used for attracting consumer’s attention, have problems of their own
(not referring to Trade Mark law). That said, it is important to bear in mind that not all
manufacturers can easily take advantage of all five senses. For example, taste marks
cannot be placed in many products, only in those that are edible and/or meant to be
tasted and/or in contact with the mouth i.e. tablets, liquids, threads, some stationary,
stamps. As demonstrated, the market is quite limited.

Consequently, for those manufacturers who can use smell and taste as trade
marks it is important to evaluate whether they would draw attention to the fact that the
sign (smell and/or taste) is an added feature of the product. If so, when consumers
perceive this as an added characteristic it could destroy the illusion that the feature is
an integral part; it would be perceived as superficial and trivial. Afterwards,
consumers would not perceive the odour/taste as an essential quality and thus
potentially the product would lose its appeal.

Due to this factor, marketers may lose customers. However, by manufacturers

indicating that the chemical sense sign is not a component of the product but a trade
mark, they may obtain an indicator of source and therefore, the distinctiveness
requirement.

5
P Torremans, Holyoaks & Torremans Intellectual Property Law (5th edn Oxford University Press,
Oxford 2008), p. 380.

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Conclusion and Suggestions

Additionally, in some product lines, chemical sense signs may be seen as

interchangeable characteristics. For example, smell in the toiletries industry and taste
in the pharmaceuticals industry. After that assertion we could question whether it may
be possible for these marks to be capable of distinguishing.

Note that the problem of asserting distinctiveness in unconventional marks is

common in 3D shapes and packaging. The ECJ has repeated on several occasions that
a shape or packaging can only be distinctive where the consumer perceives it
immediately as an indicator of origin.6 It is expected that chemical senses will follow
with similar controversies and that they will pursue the same outcome. One can
predict that when a feature occurs which is not common or just trivial, it can then
potentially be considered to have distinctiveness ab initio. Yet, it is important to
remember that what is looked for is not the uniqueness of the mark, because the mark
does not need to be unique. A mark can be distinctive without being unique.
Moreover, consumers can be taught to recognize certain features as trade marks, as
has happened in the case of 3D shapes. Could the same happen to chemical senses? I
believe so.

Now, while the earlier focus has been on the problem of chemical senses being
capable of being distinctive -- a social dilemma, one needs also to assess the problem
of chemical senses as potential anti-competitive feature, an economic setback. In this
sense, smell and taste marks can be seen as an element of the product. If so, it is
essentially valuable to traders. While the concept of functionality in terms of
registrability appears only applicable to shapes, there is a body of case law that tries to
accommodate this problem looking at the requirement of availability. There is indeed,
an obvious justification to keep certain signs free. As known, public interest and
trading interest may not always go hand in hand.

Giving indefinite protection to functional features restricts competition and

therefore goes against public interest.7

6
G Humpreys, Proof of Use, Continuity of Functions in inter partes Proceedings and Three-
dimensional Marks: Europe in Review (2007) 2 Journal of Intellectual Property Law and Practice
240, 247.
7
J Davis, Intellectual Property Law (3rd edn Oxford University Press, Oxford 2008) pp.190-191.

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Conclusion and Suggestions

Understandably, where there are a limited number of possible ways of

presenting a product, the idea of granting a monopoly over that feature which will
keep other traders out of the market, is indeed dramatic.8 Policy considerations are
indeed a significant factor in the interpretation of Trade Mark law and therefore, the
perceived monopolization of a sign needs to be carefully balanced.9 This concern was
assessed by the courts when the protection of colors per se was at issue. In these
cases, it was considered that because of the limited number of colors, to grant such a
monopoly could distort competition and it could even stop new traders entering a
particular market -- depletion doctrine.10

Usually, the general interest is observed in cases of color marks and shape
marks and therefore, it can be predicted that the same doctrine will be applicable to
chemical sense marks. The public interest is examined for instance in Art 7(1)(c) in
Europe which regards descriptive signs as barred from registration and adds that they
need to be free for all to use. The same provision is seen in Art 7(1)(e) which sets up
that shapes which perform a technical function may be freely used by all.

To recap, in view of the above, chemical sense marks may function in practice
as a feature which has a natural importance to traders and for this reason they should
be properly balanced in the light of public interest --preserving the availability of a
sign.

7.1.3. At The Point Of Sale

One of the major problems presented by chemical senses is that usually a

consumer will not have access to the product’s smell and flavor prior to purchase. It
cannot therefore be expected that a consumer will distinguish one product from
another if the presence of the mark is lacking. That said, it seems as if it is not
possible for them to be indicator of source either. Yet, it can be observed that smells
(no taste) have more potential in pre-sale. A case in point would be if packaging
blocks the smell, then strips can be placed on the outside; another example would be

8
L Bently and B Sherman, Intellectual Property Law (3rd edn, Oxford University Press, Oxford 2009)
p. 832.
9
S Maniatis, Trade Marks in Europe: a Practical Jurisprudence (Sweet & Maxwell, London 2006)
p.71.
10
Qualitex 514 U.S. 159 (1995).

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Conclusion and Suggestions

if packaging is not restrictive at all, access to the sign, namely the smell, can be
achieved. If the above is not possible, the opportunity for smell to work as a trade
mark at the point of sale is lost.11 These examples however, exist when referring to
scented goods. For services, there is immediate access to the sign.

To sell, businesses need different market strategies. They call upon all five
senses to create brand experiences for customers. One of the advantages of smell as a
sign is that consumers, at any moment, could forget the product’s name but
characteristics of the product may be remembered e.g. it smells like fresh cut grass.

Note that recognition is not to be confused with recall, however. It is believed

that human beings are not good at naming odours, even if they are recognizable. Yet,
an odour or taste can be familiar but it does not guarantee that there is an immediate
recognition of where it comes from (not in the trade mark sense - the origin function).
That said, there is no guarantee that there is a straightforward link between odour/taste
and subject/source. Even in cases where a consumer may be able to differentiate
between the smell of a DOVE soap bar and an IRISH SPRING soap bar but he will
not use this stimulus at the moment of purchase. Chemical senses do not have a
settled market condition. Marketers need to examine the balance between rewards and
drawbacks if using them as trade marks. Consider however, that because of the
amount of money spent on this features, small manufacturers may be overshadowed.

7.1.4. Revisiting The Function Of Trade Marks

Notwithstanding the argument of legislation for the registration and protection

of chemical senses, there has been little in-depth discussion about their functionality
as trade marks. Evidently, after examining the influence of chemical senses on the
market and consumers, one may wonder if chemical senses would work as trade
marks.

The legal point of view is that the only function of trade marks is to give
evidence of the origin from which goods/services come; the so-called origin function.
In the same vein, the traditional rationale for trade mark protection is to protect

11
Elias B, Do Scents Signify Source? An Argument Against Trademark Protection for Fragrances
(1992) 82 Trademark Report 475, 480.

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Conclusion and Suggestions

consumers. The reason being that trade marks denote the origin and source of the
goods/services. Trade marks tell the consumer where a particular product comes from
and assure the consumer that a particular product comes from or is at least associated
with, the same undertaking, as other goods/services sold under the same trade mark.
Hence, consumers indeed expect that it has the same quality. It is therefore perfectly
correct to say that a trade mark is a badge of origin or source. It functions to
distinguish one company source from goods/services having a different company
source.

However, note that in the present state of the market it appears that trade mark
protection is just to create property and thus only benefits the trade mark owner. It is
true then that in today’s market setting, trade marks are signifiers. They often carry
out functions that go beyond connecting goods/services to a source. Because of this,
we need clear thinking about what the trade mark function is.

In Chapter 2 the actual purpose of a trade mark was studied and as a

consequence, the multi functionality that has been assigned to it was disclosed. By
revisiting this, one can say that trade marks do have a powerful image attached to
them. It involves not only the quality of the product but also it represents an image of
fun, adventure, exclusivity and any other good life style that is desired by consumers.
Eventually, the recognition of a trade mark can be so high that the mark will sell the
product. Hence trade marks are not necessarily associated with experiences of the
product as such. While this is clearly a deviation of the effect of trade marks, one
cannot turn a blind eye to the situation.

The protection granted to trade marks goes beyond the prevention of

consumer’s confusion to protecting trade mark reputation.12 This has being
recognized in the current legislations.

Having said that, currently there is a tendency to misunderstand brands and

trade marks. Therefore, there is the need to ratify that brands are not the same as trade
marks.

12
H MacQueen, C Waelde and G Laurie, Contemporary Intellectual Property, Law and Policy (
Oxford University Press, Oxford 2008), p. 544.

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Conclusion and Suggestions

Whilst brands may use trade marks for identification, they cannot be treated as
the same. Branding is the myth, the power that attracts consumers due to strong
marketing. It refers to the totality of the image that a product represents. It has been
described as a collection of intangible values as perceived by consumers which are
attributed to a name, symbol or design used to identify a product or group of products
or services.13

Chemical sense marks can be seen as an attempt, from the manufacturers, to

build an image or lifestyle around a product. Businesses spend a lot of money in
promoting their goods/services. Nonetheless this is not the historical function of trade
marks. Moreover, the fact that businesses spend money advertising their image is not
indeed in the public interest.14

While I disagree that the only function of a trade mark is the origin-function, it
does not mean that I support the idea that a trade mark’s image and/or advertising
function alone must be counted as rendering a sign worth of registration. Certainly,
the key function of a trade mark is to act as a badge of origin and although I also
believe that certain marks do have an image function, but this is, I consider, as a result
of the origin function.

The idea is that in order to register a mark, it must be recognized as indicating

that the product is the same as others bearing the mark. That said, if we are to register
a trade mark which has an image function, such a mark must be distinctive. It has to
engender goodwill. In that way, the trade mark regime may protect the image of a
trade mark alone. However, note that in order to register the said mark (which has an
image function), the legislation requires that mark to be distinctive. The Registration
Office will not proceed to register a mark which is not distinctive even if it has an
image function. Furthermore, if a trade mark does not perform the historical function
of the mark, it cannot and must not be registered. In the end, trade mark law is not
designed to protect the commercial magnetism of the mark in itself.

13
L’Oreal and others v Bellure and others [2006] EWHC 2355 (Ch) para. 79.
14
Lord Hoffmann’s Conference, The Function of a Trade Mark - Hugh Laddie and the European
Court of Justice <http://www.ucl.ac.uk/laws/ibil/index.shtml?events_past> accessed on July 2019.

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Conclusion and Suggestions

Yet, the ECJ has made it clear that the trade mark system also protects this
advertising and investments function.15 However, as explained before, it is one thing
to protect a function of a trade mark and quite another to register a mark because of
the investment put into it.

Now, referring to the issue of investment, there are effective ways available to
owners of a sign to protect that asset such as passing off and unfair competition.16 For
instance, in the Jif Lemon17 case, the court considered that trader’s interests are
deemed to be sufficiently protected by other regimes. The facts of the case protected
the claimants selling of lemon juice in a yellow plastic lemon shaped container
granting a quia timet injunction for considering that no man is entitled to steal
another’s trade by deceit18Nevertheless, note that this type of tort will not protect the
sign as such but the goodwill.19

To sum up, while there is an incentive to proclaim chemical senses as trade

marks, I do not believe that chemical senses alone act as such. In today’s society, the
role of smell and taste does not allow chemical senses to work as indicators of source,
at least not in the current marketplace; although they may work in branding as part of
the image of the product.

7.1.5. Protection Of Chemical Senses: Is It An Overprotection Of Intellectual

Property Rights?

The emergence of added smell and taste to products has prompted the law
respond. In the US for example, courts have protected chemical senses, especially in
the pharmaceutical business under Unfair Competition laws. However, as studied in
Chapter VI, there has not been any case of trade mark infringement regarding
chemical senses.

Here in Europe, chemical senses also have started shaking up the law.
Perfumes have been protected under Trade Mark law but regarding their marks, not
their smell.
15
W Cornish and D Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied
Rights (6th edn Thompson Sweet & Maxwell, London 2007), p. 625.
16
Lord Hoffmann’s Conference, op. cit.
17
Reckitt & Colman Products Ltd v Borden Inc and others [1990] RPC 341.
18
Lord Oliver delivering his speech. Reckitt & Colman, op. cit.
19
Cornish, supra note 15, p. 631.

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Conclusion and Suggestions

The L’Oreal20 case is a good illustration. L’Oreal owned several UK and CTM
word and device trade marks. It claimed that BELLURE had distributed and sold
copies of some of its perfumes thus infringing its trade mark and passing off its
products as L’Oreal’s. The products sold by BELLURE had been commissioned to
smell like L’Oreal’s produce and their packaging had been designed to give a wink of
an eye to existing branded products. The court held that smell should not be taken into
account when assessing similarity as it was neither the mark not the sign. It
considered that the smell was an important feature of the product but the product as
such was not what was at issue in the case of trade mark infringement. In this case
what was of concern was the packaging, namely, the box and bottle where some of
the products claimed did take unfair advantage of the character or reputation of
L’OREAL marks. BELLURE was free-riding and thus taking unfair advantage,
amounting to infringement under s 10 (3) of the UK Trade Mark Act. However,
referring to the smell, the court explained that the smell of a perfume was not
protected by the tort of passing off, clarifying that the smell was part of the
characteristic of the product. Hence, it can be speculated that the law of passing off
21
may protect a smell if it is not the product. For instance, if the trader has goodwill
and the other requirements are also fulfilled, an action of passing off may protect
chemical sense marks.

There is also another area of law that has protected smells, specifically
perfumes. In the Netherlands and France for example, perfumes as fragrances have
been protected under copyright. Starting with France, L’OREAL and BELLURE were
also in dispute.22 As before, L’OREAL argued infringement by BELLURE. In this
case however, not only trade mark infringement was sought but also copyright and
design right. As in the UK, the court found BELLURE liable for infringement of the
claimant’s shapes and colors of their packaging and flask for some of their perfumes,
some of BELLURE’s packaging being either identical or similar to L’OREAL’s
figurative marks (the word marks were different).

20
L’Oreal SA v Bellure NV, supra note 13.
21
Chemical senses cannot form part of the product. In the case of a smell trade mark, the product’s
scent needs to be affixed to the product which must have a different primary function other than
scenting.
22
SociÃ©tÃ© Bellure v SA Lâ€™Oreal et al, Cour dâ€™appeal de Paris, 25 January 2006.

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Conclusion and Suggestions

Note that this case confirmed what has been protected early on by lower
courts. In 1999 the Tribunal de Commerce de Paris held that perfumes could be
protected by copyright as long as they were original; the case concerned the perfume
Angel by T. Mugler. The same was decided in 2002 by the Tribunal de PremiÃ¨re
instance de Paris in a case concerning the perfume Le MÃ¢leâby J.P. Gaultier.

Added to this, the court found that BELLURE was liable for unfair
competition. The court also held infringement of L’Oreal’s design right despite
BELLURE’s claim that the design was not new. This latter argument was not
considered since the defendants did not produce any proof of previous designs so as to
build the case. Now, regarding copyright it was claimed that protection of a perfume
should be granted under this legal system. In the case, BELLURE argued that French
Copyright law only protects works accessible to sight or hearing and thus smell and/or
taste could not be protected by this intellectual property right. The Court of appeal de
Paris observed that Article L 112-2 of the Intellectual Property Code does not have an
exhaustive list and so, it does not exclude smells. The court ratified that the Article
provides that all works of the mind are protected whatever their genre, form of
expression, merit or purpose. As a result, it was held that a fragrance could be
protected by copyright as long as it fulfills the requirement of originality.

The case is seen as an attempt by the court to clarify what is to be regarded as

original in the perfume industry. It was concluded therefore that fragrances are
protected if they are the fruit of an original combination of oils in such proportions
that their smells reveal the creative contribution of the author.23

In the Netherlands, the case of look-alike perfumes was no surprise since a

similar issue had been dealt with by its own courts. In LancÃ´me24 the perfume
TRÃSOR was declared to have an original character of its own, bearing the personal
stamp of the maker and therefore, considered to be a work that might be protected
under Copyright law.25 Subsequently, examining whether KECOFA infringed the
perfume, the court admitted a report which contained inter alia, a physical chemical

23
SociÃ©tÃ© Bellure v SA Lâ€™Oreal et al, Cour dâ€™appeal de Paris, op. cit.
24
LancÃ´me Parfums et Beaute et Cie SNC v Kekofa BV, Case C0200726/MA, Court of Appeal, Den
Bosh, The Netherlands, Hof (NL), 8 June 2004. Reported in English at [2005] ECDR 5.
25
Ibid

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Conclusion and Suggestions

analysis. The judge, when describing the report, went on to explain that both perfumes
did have olfactory compounds in common either in an identical manner or in the form
of a substitute.26 It then relied on mathematic probabilities comparing the case to
winning the lotto.27 By this analysis the court concluded that KECOFA had indeed
reproduced the perfume TRÃSOR thus infringing LANCÃ”ME’s copyright.28

Note that only these two countries have granted copyright to perfumes. The
UK for instance, might not follow this approach since the law of copyright requires
the work to be fixed in order to be protected, the so-called fixation.29 The importance
of these cases to trade marks lies in the fact that the court relied on sensory and
physic-chemical analysis of the alleged infringing perfumes. It also relied on surveys
of members of the public to ascertain the similarity of the perfumes. It can therefore
be speculated that the admittance of chromatographic evidence may be a potential
objective prove. Considering this, in the near future one can expect the acceptance of
this method as graphical representation as well as when examining the question of
infringement. If so, the subjectivity of the mark will become scientifically objective.
Hence, the premise that the subjective nature of chemical senses makes this type of
mark lack distinctiveness will no longer exist.

In closing, one has to bear in mind that these other forms of protection have
their own peculiarities. For instance, with other intellectual property rights such as
design, patent and/or copyright, the trader protects his rights for limited periods of
time. By contrast, trade marks if renewed, can last forever. In the same line, other
forms of protection such as passing off and unfair competition claims will require
proving deceptiveness and this is confidently, narrower than the protection granted to
registered trade marks. Indeed, keeping this in mind there is a clear understanding
why undertakings are looking forward to protecting chemical sense marks under the
trade mark system. In the end, they are looking to secure the exclusivity of the mark.

26
LancÃ´me Parfums et Beaute et Cie SNC, para. 29.
27
Ibid
28
ibid., para. 31.
29
E Derclaye, One of the Nose of Bellure: French Appellate Court Confirms that Perfumes are
Copyright Protected (2006) 6 Journal of Intellectual Property Law & Practice 377.

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Conclusion and Suggestions

On one hand intellectual property rights are never said to be overprotected by

manufacturers who are gaining the benefits. The decisions followed by the court in
France and The Netherlands regarding the protection of perfumes by copyright are to
be welcomed. These decisions certainly have protected the creation of a perfume as an
author’s right. Nonetheless, whether this has been a step too far or even the right path,
must be questioned. On the other hand, others can see how the market is being
strangulated due to monopolist operators. It is therefore important to remember that to
grant a particular company an exclusive right to the use of a particular sign must not
indeed obstruct the ability of rival companies to compete. The key aim of the
Directive is to promote competition.

7.1.6. Adaptation To Social Change, Is It Wise?

Advertising campaigns to promote smell and taste do target life style. It is

believed that an aroma works as an indicator of a product’s ability to deliver benefits.
Certainly, it can be observed that marketers regard smell and taste not as a novelty
issue but as a good method of promoting sales. However, in spite of the commercial
value, smell and taste are not well protected under the law. Here then, we find the link
with the first chapters of the present work, namely, the evolution of signs, the function
of trade marks and the reason for their protection and the need for registration. By
studying these, it is noted that there is indeed a rationale for protection.

The cost of maintaining trade marks is not justified if trade mark owners are
not protected. Otherwise, competitors could reproduce the smell and taste of a
particularly successful product. Thus, if a particular smell is created for and becomes
identified with a product, it is important for the producer to secure it so as to stop
others from using it. This practice of imitation is observed in recent cases regarding
knock-off fragrances. Therefore, a potential threat to smell marks can be seen. Yet,
these cases of infringement have been dealt with under Copyright law and Unfair
Competition laws, so it is speculated that chemical senses, if indicative of origin, will
only be protected under passing off and/or Unfair Competition law (if not previously
registered).

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Conclusion and Suggestions

One may question whether after all, chemical senses do work as trade marks.
Then, approaching this question it may be said that apart from the fact that chemical
senses are subjective they do present two other major issues: first, consumers do not
rely heavily on olfactory and taste information in their daily lives because they are
considered as product ornamentation and/or functional rather than an indicator of
product source; and second, no one knows how to begin indentifying and classifying
all the possible olfactory and taste stimuli.

Additionally, the difficulties that smell and taste have when intending to work
as trade marks are overshadowed by the complexity of enforcing. That said, if
chemical senses manage to work as trade marks because they indicate source, their
protection becomes problematic to enforce. The reason is that, as mentioned early in
this chapter, chemical senses nature is subjective and therefore legal analysis can
vary. The subjectivity assessment in determining the similarity of chemical senses
will be indeed difficult. I therefore believe that while Trade Mark law allows the
registration of chemical sense marks, it is not yet suited to give the protection that
they need.

7.2. DEMERITS OF UNCONVENTIONAL TRADE MARKS

Tweaking of the laws shall be necessary in case untraditional TMs are to be

granted effective protection. Reasons for this are more in developing countries,
including India.

Firstly, each variety of unconventional trademarks may be accurately

represented through different mediums. Verbal description may not be adequate.
Granting registration to sound marks in the bold manner adopted in the United States,
creates significant fear of trespass upon the rights of the proprietor and simultaneously
ambiguity with respect to the scope of commons leading to disputes both at the level
of registration and use. Description as used in the NBC jingle in the United States
would make it extremely difficult for other sound marks with similar notes to be
registered, and also would not bar the registration of the same melody in another scale
by a third party, especially in the absence of any rule barring such transposing and use
thereof.

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Conclusion and Suggestions

Secondly, since smell marks are also not adequately represented through
verbal description. An application for registration of a particular odour, such as
vanilla, would be best accompanied with a representation in the form of samples, but
these too would be hard to make available in trademark registries all over the world
and on account of limited longitivity would be in need of frequent replacement. Also
an electronic nose for determining smells and the PMS may help in registration of
colours, but it is a long way before such technology is are readily available with
trademark attorneys who could make the applicants aware. Doubtless, it would take
even longer for such technology to be available with small and medium sized
enterprises before they embark upon brand development, especially in developing
countries such as India. Since registration of unconventional marks is only upon
fulfilling the prerequisite of secondary meaning, acquired over long and sustained use,
new businesses need to be more aware of the boundary of commons.

Thirdly, in developing countries, cost prohibitive nature of granting

registration to untraditional trademarks is higher. Access to the registered trademark
database would be more expensive and often third parties may not have the means of
interpreting graphical representations of sound marks, or have the required equipment
for experiencing/listening to the registered mark. In these circumstances granting
registerability status upon unconventional marks, graphical representation of which is
inadequately provided, and if provided, opportunities for access are restricted, would
amount to opening of a Pandora box.

Fourthly, the question of enforcement continues to haunt, both the registered

proprietor and the applicant/third party user since there is no clarity as to who shall
determine if marks are deceptively similar, and the peril of trespass would be higher if
indefinite means of representation are legalized for the purposes of registration. The
juxtaposition of a blanket ban to registration of untraditional trademarks in the
absence of a cushion against tone deaf judges is no solution but this definitely needs
more thought before registration in favor of unconventional marks is granted.

Moreover the chances are, that, carving out an exception on the lines of US
Trademark Act would leave loose ends and harm more than it would protect. If
availed with caution, an approach based on EU Laws, as we have today, with

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Conclusion and Suggestions

assistance of latest technologies would definitely benefit the cause of private parties
and the public. Even with regard to sound marks, cumulative representation in
notational and digital form should be made mandatory. Greater scrutiny needs to be
made of the prevailing systems in other countries, and the possible roadblocks in our
own, before registration of unconventional marks is allowed. With emerging
economies such as India, the need to protect intellectual property is higher and no
effort to do ensure equilibrium and clear demarcation between rights held in common
and by private parties should be left undone.

7.3. CONCLUSION

Carrying out the task of researching in chemical sense marks, for the most
part, an unexplored area of judicial debate has provided a number of interesting ideas
and suggestions which I hope will contribute to simplifying the chemical sense marks
arguments. The most important conclusions for this thesis are as follows:

First, it is a fact that chemical senses have developed in the market to become
signs. As history reveals, different signs and marks have been witnessed over time
due to changes in commerce and marketing. From symbols to signs, and from social
to legal instruments, the development of marks has undergone different
transformations. This can be observed for example in cases where marks symbolized
ownership (i.e. shipwreck and branding on animals), or where they guaranteed quality
or product authenticity (i.e. hallmarks and silversmiths), or where they just followed a
pattern from the trade as in the Industrial Revolution. It is arguable therefore, that in
today’s market producers and consumers are aware of a variety of trade marks. What
is more, with the introduction of new technologies like radio, TV and so on, the visual
and sound receptiveness has evolved and so have marks. As a result, the usual trade
mark patterns is once more being extended and we as consumers see more marks that
are not common. The question is, how familiar are we, as consumers, with the fact
that trade marks indicate that a product comes from a certain undertaking and not
another?

Facts reveal that marks, and specifically trade marks, appear to have a variety
of functions. They represent not only quality and/or origin but also they are indeed a

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Conclusion and Suggestions

company’s assets -- economic function. Added to this is the consumer fascination

with becoming connected to a famous figure or just being in fashion. Throughout this
work, I projected that trade marks are being misunderstood by many consumers as
being more of a tool of fashion or a style of living. Facts reveal that marks, and
specifically trade marks, appear to have a variety of functions. Certainly, by this
deviation it has become more difficult to determine if these new types of marks,
chemical senses, are truly trade marks. This is due to the fact that chemical sense
marks can be seen as part of the image of a product and also as a marketing tool.

Bearing this in mind, trade marks do not have a unique function in present
markets but a few different functions. Yet when registration is sought for a trade mark
there is, it appears, only one function that the trade mark has to accomplish -- the
origin function. By doing so, a trade mark will, in most cases, achieve the
fundamental purpose of a trade mark -- to distinguish goods/services of one
undertaking from those of other undertakings.

Secondly, in order to protect trade marks and therefore preventing others from
using the mark or a similar one, traders may register a sign as a trade mark. If
registered a trade mark will grant a monopoly over the use of that particular sign for
only specified goods/services in one or more classes of goods/services. Protection as
said is by registration which is obtained through an application at the Trade Mark
Office (application can be for a national, community or international trade mark).
National trade marks systems are harmonized by the trade marks Directive but they
continue to be a separate systems. Therefore, while I mainly centre the discussions on
CTMs, the same principles apply to national registrations.

Third, focusing more on what the legislation has to say about chemical senses
and therefore facing the issue of whether or not legislation recognizes chemical senses
as signs that can be protected under the trade mark regime, it is not surprising that the
EU legislation as well as the US (as many others), do cover these unconventional
marks. However, the EU legislation does not specifically mention chemical senses as
potential marks. Despite that, it would not necessarily be correct to believe that they
are not included.

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Conclusion and Suggestions

It appears that legislation is open to any sign and in consequence not

discriminatory. This argument therefore allows chemical sense marks as potential
trade marks. Moreover, not only is this implicit in the legislation, it is also the
recognized practice. Chemical senses have actually been registered in some European
countries. This leads us to the conclusion that chemical senses can be regarded as
marks under the law and consequently, protected under the trade mark regime.

Nonetheless, while changes in trade mark legislation have paved the way for
the registration of chemical senses eventually flows have emerged. The thorny
question to answer will be: is it the law or the practice?

Fourth, the requirements for registrability are identical through the European
Union. Thus, I observe that as for any other trade mark, chemical senses are subject to
a significant number of requirements. One of the most discussed in the area of
chemical senses has been, without doubt, graphical representation. The reason lies in
the fact that because of the nature of chemical senses (non-visual), it is impossible for
them to be represented in this way. This is not however necessarily correct since other
non-visual marks are able to be registered and thus have satisfied this requirement i.e.
sound marks can be graphically represented by way of a score.

As mentioned throughout this work, chemical sense marks did have a good
start -- registration was seen in different EU jurisdictions. The graphical
representation requirement was in those cases, fulfilled by a detailed description.
Nevertheless, after the Sieckmann case, a number of potential graphical
representations, such as a chemical formula, a sample and/or descriptions, were
submitted but they were not accepted on the grounds that they either represented the
chemical sense rather than the sign and/or were unclear and subjective. Therefore, the
primary concern is to find and adopt a reliable method of representation for these
types of marks. As simple as it sounds, the work has not been done and appears to be
full of controversy.

The requirement of graphical representation requires that the sign be

represented. The odour communication system that represents odour appears to do so
by e-noses. There are different devices; some appear too complicated since the digital

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Conclusion and Suggestions

format used by the process is a compound which is used for analytical chemistry
purposes. Trained operators are needed to understand them. Nonetheless, there are
others which are more user-friendly. Indeed, while e-noses appear to be a novel
technique for us, there are types that are commonly used in the food and medical
industry as well as other industries. Moreover, e-noses have been recently used in the
courts of France in cases of infringement, and I believe therefore that this type of
communication system is a reasonable start. E-noses do represent adequately the
sense of a smell.

Fifth, distinctiveness is a requirement which has its own particular problem.

Yet the majority of cases examined by the Registries and/or courts, when presented
with a chemical sense, do not seem to have explored this issue in depth. The
distinctiveness of a mark goes together with the primary function of a mark -- origin
function. The problem is that chemical senses are not easily interpreted by consumers
as indicators of origin. The way that chemical senses have been presented to
consumers (marketing tools), and moreover, the way they are commonly used (to
appeal and/or disguise a bad taste or odour), suggests they lack distinctiveness ab
initio.

Certainly, a mark must be capable of identifying a product thus indicating that

the product comes from a particular source; therefore, if consumers do not perceive
this, the mark is not inherently distinctive. There is however a small market in which
chemical senses may be distinctive. For example, a mark could be considered
distinctive in situations where the specification to which the mark relates is quite
narrow.

It is also important to remember that a mark can acquire distinctiveness

through use and thus lack of distinctiveness can be overcome. I do not doubt that by
familiarizing the relevant public over a period of time, and following intensive
advertising and sales campaigns, this proviso can work for chemical senses. In the
end, the distinctiveness assessment in the context of registration requires the relevant
consumer to perceive the sign as a trade mark. Therefore, if a Registry or a court
considers that according to an overall assessment the mark has come to identify the

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Conclusion and Suggestions

product concerned as originating from a particular source, then the mark has acquired
distinctiveness through use.

Sixth, albeit there is not to date a single trade mark case in the EU which has
raised the issue of functionality other than with respect to shape marks, I believe that
chemical senses do not escape controversy in this field. It has been ascertained that
functionality must in principle be extended to cover all marks and not only those that
have a technical function. Looking at the broad spectrum, technical should be
understood as not only mechanical but involving other types of functionality as in the
US. The reason being that this exclusion is intended to ensure effective competition as
a matter of public policy.

Thus, it is controversial that the principle of functionality is not extended to

other types of marks. In the end, in many situations chemical senses provide an
aesthetic function and/or add value to the goods. For instance, a smell or taste can be
seen as making the product fanciful, or decorative. Quite apart from the fact that this
will mean that the sign is not a proper trade mark because it will not be perceived as
such - it is not capable of distinguishing - it will indeed mean that the sign has a
technical and/or aesthetic functionality.

Seventh, the courts in India have however, been holding an uncanny stance in
this regard. In the year 2007, the Delhi High Court30 did not allow trademark
protection to a blister packaging containing a distinctive orange coloured, oval-shaped
tablet. John Deere on the other hand was given protection for its green paint with
yellow strips on its vehicles manufactured for agricultural use. 31 The blue colour of
parachute oil bottle was also granted protection by the same court. 32 Other successful
cases of single colour trademarks registrations include entities like Vitronix AG (#
13924234- brown colour label) and Deutsche Telekom AG(# 1462271- magenta
colour label) have successfully registered their colour marks in India.33 But in the year

30
Cipla Limited v. M. K. Pharmaceuticals MIPR 2007 (3) 170
31
Deere & Company & Anr. v. Mr. Malkit Singh & Ors. CS (COMM) 738/2018 decided on 8-08-
2016.
32
Marico Ltd. v. Mr. Mukesh Kumar & Ors. 2018(76) PTC 168(Del)
33
Ip Expressions, A biannual publication from the office of Controller General of Patents and
Trademarks, India Vol. no. 1, Issue 2, January 2015.

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Conclusion and Suggestions

2018 the same court denied the red shoe sole to Christian Louboutin which is among
the top 5 luxury brands for women fashion and is well known among the consumer
group belonging to an upper class society and declared that red shoe sole does not fall
within the definition of ‘mark’ as provided in its definition in the Act and is not even
a trademark to be afforded protection.34 The court denied it trademark protection even
though the same court had earlier granted it the status of a well-known trademark.35
The court failed to take in purview that the definition provided in the Act is inclusive
and not exclusive in nature while a coordinate bench of the Delhi High Court has
earlier propounded that the definition is inclusive and that is why it includes single
color marks.

Eighth, infringement, while outside the main purpose of the thesis, cannot
escape consideration. The registration of smell and taste marks is not totally effective
if the law cannot ensure protection. Without a doubt, the consideration of
infringement affects the correct functioning of chemical sense marks. One can expect
that a case of a chemical sense mark infringement will be resolved using the same test
and approach as with any other type of mark. This logic is apparent in many cases in
which the court emphasize that all types of trade marks should be measured and
examined in the same way.

However, addressing the similarities between chemical sense marks seems to

be more problematic when comparing conventional marks. The task of making
comparisons when assessing infringement can be extremely challenging for judges
when chemical sense marks are at issue. For example, by applying a global
appreciation test, the aural and visual examination is obviously void. Therefore, only
a conceptual similarity can be assessed. Evidently, this is not enough and so, to this
test, the smell and taste examination needs to be added.

Currently, to conduct a proper assessment, judges need to rely on the graphical

representation and thus we appear to be back at square one. There is not a reliable
graphical representation for chemical senses. Yet, I believe that e-noses
communication, although considered as an external source, can be a convenient an

34
Christian Louboutin SAS v. Abubaker and Ors. (25-05-2018- DELHC)
35
Christian Louboutin SAS v. Pawan Kumar and Ors. 2018(73)PTC 403 (DEL).

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Conclusion and Suggestions

objective test. At the end of the day, assessing colour marks and sound marks also
requires external sources. Hence, we can work on the assumption that e-noses as an
external sources will not be a problem either.

Finally, having observed all of the above, the question is: what is left for
chemical sense marks? Certainly, one might think that this research challenges the
validity of these types of marks, but on the contrary, I believe that chemical sense
marks are, in limited situations, able to act and function as trade marks. The point is
that, sooner rather than later, measures need to be in place going beyond graphical
representation. Legislation needs to accommodate chemical sense marks as it has in
the case of shape marks and sound marks. Thus, the hypothesis stands still and
proven.

The difficulty remains though that the problem of chemical sense as marks is
still unresolved. This situation, in my personal opinion, is for the most part due to
their complexity and technicality. Until now, we have seen how consumers,
academics and judges, to name a few, have a long way to go in understanding and
interpreting them. It is therefore the right time to start believing in chemical senses as
trade marks. Hence, it is necessary to build a path for them. By doing this, chemical
sense marks could be assessed by their real significance and not merely by good
marketing.

The true aim is simply to give guidance to whoever would like to commence
in using chemical senses as marks of commerce. While I declare that my ideas may be
wrong, what is of importance is that these ideas will help others to develop good or
better ones.

7.4. SUGGESTIONS AND RECOMMENDATIONS

 The registration of color, sound, and scent non-traditional trademarks necessitates

increased specificity and precision. Increased specificity in color, sound, and scent
registrations would benefit United States trademark law by protecting the interests
of the consumer, the trademark owner, and the marketplace. As a result, trademark
registrations would more clearly define nontraditional marks and would better

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Conclusion and Suggestions

protect registrants’ rights. The trademark registry would more effectively provide
notice to a prospective user of an identical or confusingly similar mark before that
user expends large sums developing and promoting a new brand. Additionally,
increased specificity would minimize consumer confusion as to source, enabling
the consumer to correctly identify and purchase its preferred goods and services.
 By requiring the use of an international color code, color mark registrations would
provide precision and enable clear identification of unique colors. Publishing a
color drawing and a facsimile of the specimen in the Official Gazette would
provide increased clarity and notice to the marketplace. The applicant also may be
required to provide a chromatogram in addition to the color code. Internationally
accepted industry standards such as PANTONE ®, RAL™, Focoltone®, RGB, etc
will be objective enough.
 Sound mark registration should include pictorial representation by detailed
musical notation or a sonogram to enable quick comparison of sounds.
Additionally, requiring that a description must supplement the representation
would improve comprehension of the mark. Availability of the sound to searchers
of the registry in a digital audio format would also enable a clear and precise
understanding of the scope of the mark. How is the sound clip easily
accessible if it exists as a CD-ROM in one of the five Indian trade mark
registry offices?
 Olfactory scent mark registration would benefit from implementing a smell
classification system or adopting other technologies such as an electronic nose or
spectrogram, enabling quick identification of, and differentiation among, scent
marks. Providing opportunities to sample the scent in conjunction with immediate
access to a graphic depiction and a precise description would provide further
clarity as to the nature and scope of the mark. Recently, Noble Laureates, Dr
Richard Axel and Dr Linda B Buck demonstrated that each olfactory receptor cell
in the human body is related with a single comparing odourant receptor gene.
Most smells are made out of different odourant molecules, and each odourant
molecules initiates a few odourant receptors, prompting the arrangement of an

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Conclusion and Suggestions

'odourant pattern'36. Therefore, an exact 'odour matrix' (like shade outlines in the
Pantone framework37) can be defined to classify and distinguishing smells. This
may tackle the issue of graphical representability of smell marks to the degree of
probability of representation of such marks. In any case, other issues featured for
Sieckmann's case is exactness of such representation and attainability of keeping
samples with registry remain uncertain. Despite the fact that no answer can be
offered as of now, the previously mentioned discovery may give a way to deal
with the issue of representing smell marks.
 Trademark law would be stronger and more effective if it incorporated several of
the European Union’s registration requirements. Further, by utilizing current
registration procedures to their fullest potential, Trademark law would provide the
specificity and certainty needed to create and protect rights in non-traditional
trademarks. While these new methods may be costly, they would aid in
administration of the trademark system, create legal certainty, and further the
policies of Indian trademark law.
 Adoption of Singapore Treaty on The Law Trademarks (2006) would be a great
start and a welcome reception of Unconventional Trade marks in India.



36
Barbara Berg, The scent of surprise , http://fhcrc.org/visitor/nobel/buck/article.html.
37
Frankfurt J. Mishawaka Rubber &Woollen Co. v S S Kresge Co.(1942),cited in Barrett Margreth,
Intellectual Property :Cases and Materials (US),2001,p.674.

Page | 276
A Critical and Comparative Analysis of
Unconventional Trade Marks with
Special Reference to India

THESIS SUBMITTED FOR THE DEGREE OF

Doctor of Philosophy
in
Law

Supervisor Submitted By
Prof. R.K. Murali Ruchir Singh

FACULTY OF LAW
BANARAS HINDU UNIVERSITY
VARANASI- 221005
INDIA

Enrolment No. : 302909 Year 2021

CHAPTER-VII

CONCLUSION AND SUGGESTIONS

Yet, owing to the significance of modern trade marks as desirable symbols it is

Page | 251
Conclusion and Suggestions

A general overview, especially from manufacturers, favours registrability of

unconventional marks. Yet, it seems that chemical senses may not function as trade
marks at all due to their subjective nature.

7.1. CHEMICAL SENSES--SUBJECTIVE NATURE

Whilst assessing smell and taste, the presence of chemical interactions is at

Page | 252
Conclusion and Suggestions

combination of these can produce unique results that cannot be described as the sum
of separate sensations.

In John Lewis of Hungerford’s Application,4 the appointed person considered

It is indeed impossible to try to create a sign that is objective which in nature

is subjective. However, observe the following: art work is very much subjective but
this subjectivity does not make the work any more or less artistic. The question is:
would the same apply to chemical senses? The subjectivity of a smell and/or taste will
make the sign more or less distinctive. This, as explained in Chapter V, will result in a
sign being barred from registration ab initio. Moreover, as also mentioned in Chapter
VI, subjective marks are bound to be problematic when assessing infringement.
Therefore, because of the subjective nature of chemical senses, I am concerned about
their potential for protection under the trade mark system.

7.1.1. Chemical Senses: Aptitude to Function As Marks

4
John Lewis of Hungerfordâ€™s Application [2001] ETMR 1193.

Page | 253
Conclusion and Suggestions

7.1.2. Examination Of Socio-Economic Problems: The Market Conditions

Page | 254
Conclusion and Suggestions

to be assessed is whether the sign serves to convey information as to the origin of the
product or, is just a commodity and thus not considered to be a trade mark.

In Chapter 2, we observed that the function of trade marks go beyond origin

Due to this factor, marketers may lose customers. However, by manufacturers

indicating that the chemical sense sign is not a component of the product but a trade
mark, they may obtain an indicator of source and therefore, the distinctiveness
requirement.

5
P Torremans, Holyoaks & Torremans Intellectual Property Law (5th edn Oxford University Press,
Oxford 2008), p. 380.

Page | 255
Conclusion and Suggestions

Additionally, in some product lines, chemical sense signs may be seen as

Note that the problem of asserting distinctiveness in unconventional marks is

Giving indefinite protection to functional features restricts competition and

therefore goes against public interest.7

Page | 256
Conclusion and Suggestions

Understandably, where there are a limited number of possible ways of

7.1.3. At The Point Of Sale

One of the major problems presented by chemical senses is that usually a

Page | 257
Conclusion and Suggestions

Note that recognition is not to be confused with recall, however. It is believed

7.1.4. Revisiting The Function Of Trade Marks

Notwithstanding the argument of legislation for the registration and protection

11
Elias B, Do Scents Signify Source? An Argument Against Trademark Protection for Fragrances
(1992) 82 Trademark Report 475, 480.

Page | 258
Conclusion and Suggestions

In Chapter 2 the actual purpose of a trade mark was studied and as a

The protection granted to trade marks goes beyond the prevention of

consumer’s confusion to protecting trade mark reputation.12 This has being
recognized in the current legislations.

Having said that, currently there is a tendency to misunderstand brands and

trade marks. Therefore, there is the need to ratify that brands are not the same as trade
marks.

12
H MacQueen, C Waelde and G Laurie, Contemporary Intellectual Property, Law and Policy (
Oxford University Press, Oxford 2008), p. 544.

Page | 259
Conclusion and Suggestions

Chemical sense marks can be seen as an attempt, from the manufacturers, to

The idea is that in order to register a mark, it must be recognized as indicating

Page | 260
Conclusion and Suggestions

To sum up, while there is an incentive to proclaim chemical senses as trade

7.1.5. Protection Of Chemical Senses: Is It An Overprotection Of Intellectual

Property Rights?

Page | 261
Conclusion and Suggestions

Page | 262
Conclusion and Suggestions

The case is seen as an attempt by the court to clarify what is to be regarded as

In the Netherlands, the case of look-alike perfumes was no surprise since a

Page | 263
Conclusion and Suggestions

Page | 264
Conclusion and Suggestions

On one hand intellectual property rights are never said to be overprotected by

7.1.6. Adaptation To Social Change, Is It Wise?

Advertising campaigns to promote smell and taste do target life style. It is

Page | 265
Conclusion and Suggestions

7.2. DEMERITS OF UNCONVENTIONAL TRADE MARKS

Tweaking of the laws shall be necessary in case untraditional TMs are to be

granted effective protection. Reasons for this are more in developing countries,
including India.

Firstly, each variety of unconventional trademarks may be accurately

Page | 266
Conclusion and Suggestions

Thirdly, in developing countries, cost prohibitive nature of granting

Fourthly, the question of enforcement continues to haunt, both the registered

Page | 267
Conclusion and Suggestions

7.3. CONCLUSION

Facts reveal that marks, and specifically trade marks, appear to have a variety
of functions. They represent not only quality and/or origin but also they are indeed a

Page | 268
Conclusion and Suggestions

company’s assets -- economic function. Added to this is the consumer fascination

Page | 269
Conclusion and Suggestions

It appears that legislation is open to any sign and in consequence not

The requirement of graphical representation requires that the sign be

represented. The odour communication system that represents odour appears to do so
by e-noses. There are different devices; some appear too complicated since the digital

Page | 270
Conclusion and Suggestions

Fifth, distinctiveness is a requirement which has its own particular problem.

Certainly, a mark must be capable of identifying a product thus indicating that

It is also important to remember that a mark can acquire distinctiveness

Page | 271
Conclusion and Suggestions

product concerned as originating from a particular source, then the mark has acquired
distinctiveness through use.

Thus, it is controversial that the principle of functionality is not extended to

Page | 272
Conclusion and Suggestions

However, addressing the similarities between chemical sense marks seems to

Currently, to conduct a proper assessment, judges need to rely on the graphical

34
Christian Louboutin SAS v. Abubaker and Ors. (25-05-2018- DELHC)
35
Christian Louboutin SAS v. Pawan Kumar and Ors. 2018(73)PTC 403 (DEL).

Page | 273
Conclusion and Suggestions

7.4. SUGGESTIONS AND RECOMMENDATIONS

 The registration of color, sound, and scent non-traditional trademarks necessitates

Page | 274
Conclusion and Suggestions

Page | 275
Conclusion and Suggestions



Page | 276

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