All you need to know about Non-Conventional Trademarks
The history of trademarks dates back to the ancient era. Indian craftsmen used to engrave their signatures on their artistic creations before sending them to Iran. Even Chinese manufacturers sold their goods with their marks on it in the Mediterranean area over 2000 years ago.
Industrialization has allowed competing manufacturers and traders to offer consumers a variety of goods in the same category. So it became important that consumers were given guidance that would help them in considering the alternatives making their best choice from the available goods. For this to be possible the goods were required to be named and this naming of the goods came to be known as a trademark.
A Trademark may be defined in general sense as “a sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors.” Under the Indian Trademarks Act, 1999, a trademark has been defined as “a mark capable of being represented graphically and which is capable of distinguishing the goods and services from those of others and may include shape of goods, their packaging, and combination of colours.”
Since trademarks came into existence, the common perspective of people regarding trademarks was that trademark included marks consisting of a word, a phrase, a symbol, a design or a combination thereof. But because of the changing economic scenario and increasing technological usage, trademarks are no longer limited to their traditional and conventional types and have expanded into a new category. This new category is known as non-conventional trademarks.
A non-conventional trademark, also known as a non-traditional trademark, can be defined as any new type of trademark that is not associated with the traditional or conventional category of trademarks. A key feature of non-conventional trademark is that it is difficult to register but it fulfills the qualifications of a trademark i.e. it uniquely identifies the commercial origin of products or services.
Generally, the following trademarks fall in the category of non-traditional marks –
- Colour marks
- Shape marks
- Sound marks
- Scent marks
- Motion marks
- Taste marks
Colour marks – A colour mark is a non-conventional trademark where at least one colour is used to perform the trademark function of uniquely identifying the commercial origin of products or services. Although there have been cases where certain colours have been registered as trademarks but still getting a colour to be registered as a trademark for your company remains a hard nut to crack as colours don’t generally constitute the characteristics of a distinctive trademark. An example of a registered colour trademark is the colour brown which has been registered as a trademark by United Parcel Service’s brown truck for delivering of personal property.
Shape marks – A shape mark application is filed whenever somebody wishes to protect an overall shape in relation to goods and services. An example of a famous registered shape trademark is the Coca-Cola glass bottle. Just like colour marks, the registration of shape trademarks is difficult to obtain. Recently, Nestle lost a trademark battle over its attempt to register the shape of its KitKat chocolate as a registered trademark.
Sound marks – When a company wants to protect a sound for its goods and services from illegal use, it applies for sound trademarks. Many famous companies have their sounds registered. Example would be the bong bong sound of Intel inside, the lion roar of Metro Goldwyn Mayor. A key requirement for registration of sound is that the application must be accompanied by a recorded representation of the sound.
Scent marks – An application of scent trademarks is filed when a company wants to protect a particular scent in relation to its product and services. Scent marks are often considered to be more problematic than visual trademarks since they are defined subjectively and are therefore open to interpretation. An example of a registered scent trademark is the scent of Eucalyptus Radiata applied to Golf tees.
Motion Marks – Motion trademark implies the registration of moving images which can combine sound and aspects of product designs. A company can apply for motion to protect a specific movement of its products. While submitting a movement trademark application, a video file of the movement should be included. Some famous examples of movement trademarks are the Toyota Jump trademark(trademark no 1676600) and animated sequence belonging to Microsoft (trademark no 1321792).
Taste Marks – Taste Marks, unlike sound and scent mars, can be applied to goods only and not services. In the case of El Lilly, an application was made for “Taste of Strawberries” for pharmaceuticals and was represented using a verbal description. It was held that not only did the mark lack distinctive character, but the verbal description was not sufficiently precise and did not satisfy the Sieckmann requirements.
Registration of Non-Conventional Trademarks
The way of registration of non-trademarks is similar to that of registration of conventional trademarks. Under the statutory registration procedure, the proper criteria mentioned in the statutes are required to be fulfilled. However, in certain jurisdictions, the graphical representation is a mandatory requirement.
The criterion of graphical representation is considered very important because in major cases, representing non-conventional trademarks graphically is complicated to achieve. It should be noted that a graphical representation gives the idea of how the trademark appears for which registration is being asked.