International Journal of Mechanical and Production Engineering Research and Development (IJMPERD) ISSN (P): 2249–6890; ISSN (E): 2249–8001 Vol. 10, Issue 3, Jun 2020, 9421–9432 © TJPRC Pvt. Ltd.

REGISTRATION OF NON-TRADITIONAL IN INDIA

AMRITA MISHRA

Assistant Professor, Faculty of Legal Studies, Siksha O Anusandhan (Deemed to be University), Bhubaneswar, Odisha, India

ABSTRACT

In the era of globalization when cross border trade occurs on the international market, has become a key tool to denote the identity of a company. A successful trademark bears its own , adds distinct personality to the products and is the essence of competitiveness current trademark law illustrates some innovative innovations concerning the making and presentation of ‘mark’ itself. The modern industry is in the busy process of inventing new items with typical odor special touch and single tone to provide modern consumers with more sensitive consumer goods. Although in all jurisdictions these novel trademarks have not yet reached a high acceptance, the use of such marks in common in contemporary market. Non-traditional trademarks remain a developing practice in the modern market and the case-law on this subject matter evolves. Studies, however, show that there is an increasing number of request of the proprietor to register non-traditional trademarks in the global trade. On the contrary, there is no uniform worldwide

standard for examining, registering and enforcing these marks. This research paper captures, against this background, Original the brief history of non-traditional trademarks, the rationale of its protection under the legal systems is prevalent through various case studies, registration by the United States (US), (EU), and India. It also looks at

how these modern discharge their functions just like trademark. The paper also analyzes the problems Article surrounding the lack of uniformity education when reviewing and registering non-traditional trademarks globally. It ends the recommendations for review harmonization and registration process across different registries.

KEYWORDS: European Union, Trademark, Non-traditional, Jurisdiction

Received: Jun 06, 2020; Accepted: Jun 26, 2020; Published: Aug 26, 2020; Paper Id.: IJMPERDJUN2020895

INTRODUCTION

The past of the trademarks is as old as human memory. It started with the commencement of goods circulation. The roman forgers are thought to be first users with the ID markings on their weapons. In Rome and in Ancient Greek, Potters used ‘potters’ labels to classify the vase builders. The artisans and merchants used to affix ‘output labels’ in guilds in order to differentiate their products from products of inferior quality. This helped them to maintain confidence in the guilds and to take action against inferior quality goods manufacturers for failing to meet the guild standards. A trademark in recent years register and courts have been grappling with applications for Silhouettes, forms, fragrances, textures, tastes, brief animations, single colors, body movements, technical concepts, product label positions and Tarzan’s yell. This unconventional invasion is due to the abstract nature of the trademark’s legal definition. Trade, for one things mark law follows an inclusive concept emphasizing the practical, instead of the ontological character of a symbol. Any sigh that it does Trade mark communication by distinguishing goods or services commercial root basis, can be reported as one. Conversely, the trade mark registration systems have developed historically around paradigmatic subject matter: A modern or new, visual trade mark consisting of words, instruments, or a combination of both. The need to reconcile those differences Imperatives- the registration system

www.tjprc.org SCOPUS Indexed Journal [email protected] 9422 Amrita Mishra for trademarks is open to all categories of marks and it seems to be ‘ business as usual,’ but the registration systems has been designed with only words and figurative devices in mind-a careful reconsideration is needed of certain fundamental assumptions that underpin this area of .

Trademark is a type of industrial property that is distinct from other types of intellectual property used to differentiate between a company and services. A standard trademark conventionally involves a name, term, expression, logo, emblem, design image or a combination of these methods. There are also several other ‘non-traditional’ trademarks that have sound marks, odor marks, color marks, shapes and taste marks have gained prominence in recent times.1

In the US, the concept of ‘trademark’ in the Lanham Act includes non-traditional marks by not excluding them. It contains’ any word, name symbol, or device; or any combination thereof that identifies and distinguishes one person’s goods and services from another’s and indicates their source. The Supreme Court has made it clear that the trademark could contain anything that could possess some purpose. On the other hand, section 1(1) of the UK Trademark Act defines trademark as ‘any sign that is capable of being graphically portrayed, capable separating goods and services from those of other undertakings by one undertaking.2

In particular, a trademark that consist of words, patterns, letters, numerals or the form of its products or packaging. So, unlike. The position of the US, in the UK there is a restriction on what might actually be a trademark. The Article 15.1 of the TRIPS Agreement stipulates that can record any sign or combination of signs. As a trademark although it may be appropriate for the label is ‘visually visible’. Under EU law. A sign must be cable of being graphically presented in addition to which it must be clear, precise, self- contained, easily accessible, intelligible, durable, objective, and distinctive and not deprive trade or the public of signs that the directive or regulation implies should be free for all. In India, section 2(1)(zb) of the Indian Trademarks act specifies that any mark that is distinguishable, i.e capable distinguishing between goods and services of another. A trademark can be depicted graphically.3

Registration of a trademark helps to instill consumer confidence and the avoidance of confusion as to the source of products sold under a mark. In most cases, consumers rely on trade-marks. It’s difficult to rapidly and efficiently inspect a commodity to assess its price. The biggest need to use non-traditional trademarks arises because market-savvy firms want to design and advertise their products in such a way that it appeals to the aesthetic sense of the consumer. Even although a non- traditional mark is equally entitled to protection as is a conventional mark.4

DISCUSSIONS History

The traditional and traditional trademarks such as plain words, devices, and designs have long been used to distinguish goods. Over time, as well as words, logos, color combinations and graphic designs, other elements have come to serve as

1 Kerly D M, Law of Trade Names and Trademarks ( Sweet and Maxwell, London), 2005, p.12. 2 Michaels Amanda, A Practical Guide to Trademark Law (Sweet and Maxwell, London), 2002, p.10. 3 Article 2, EC Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trademarks ; Article 4, EC Council Regulation No. 40/94 of 20 December 1993 on the Community Trade Mark 4 Roth Melissa, Something old, something new, something borrowed, something blue: A new tradition in non-traditional mark registrations, Cardozo Law Review, 27 (2005) 457

Impact Factor (JCC): 8.8746 SCOPUS Indexed Journal NAAS Rating: 3.11 Registration of Non-Traditional Trademarks in India 9423 identifiers of the source of goods/ services, thus serving the function of marks. Such modern marks go beyond conventional nature trademarks, features, scope and economic potential. The revolution in digital and social media has bought about paradigm shift in the branding strategies. The most striking branding strategy of the 21st century is the non-traditional trademarks. The technological Review many businesses have convinced them to experiment with ‘strong branding’ using colour; sound; smell; fragrance of raspberries; touch etc.Shape, colour, stitching pattern design, and sound were in use by different companies that have indicated brand origins for more than a decade, although their legal subsequent developments were protection and registration. For example, the coca cola contour bottle, originally designed in 1915, only got trademark registration in 1860.5

Coco cola’s packaging bottle shape has achieved iconic status and is in itself the world’s most recognizable single brand. Since the 1830s, color marks have existed. Tiffany retains a stamp of color on its icononic ‘tiffany blue’ packages- exclusive blue boxes for its jewelry. Tiffany blue is a shade of light blue produced by the company from 1845 onwards for its own goods. Another example is pink colour trademark. Owens Corning, from 1956 to provide visual contrast, the corporation’s insulation was painted pink. As a result, the company became so associated with its pink insulation it registered the word mark PINK. Although combinations of colors were long. Although protectable as a trademark, it wasn’t until the 1980s that the US law accepted a single color as a trademark when Owens-Corning launched its fiberglass building insulation campaign Thinkpink.

History also shows a trademark may also be a stitching pattern. Efficient from 1873 Levis Strauss & Co. has consistently applied the design of arcuate stitching or a protruding piece of fabric (red tab) on jeans as trademarks. From 1924, Metro- Goldwtn –Mayer Corporation (MGM) used the roar of lion as a sound mark to announce the film’s beginning. It filed as application for trademark registration. The NBC chimes received a sound trademark registration in 1985. Retrieved back in 1950. As of 1994, has used the sound mark as an audio signature and is registered worldwide in many countries, and heard every three seconds out in the world somewhere. Trademark rights are established by the recognition of consumers in a non-traditional mark.6

Registrability of Non-Traditional Trademarks

In order to be eligible for protection and registration, the mark must respect with certain statutory provisions. These requirements will differ according to country. To country in compliance with the national legislation. This versatility comes with under legal conventions such as the Paris convention, the Madrid agreement, the Trademark Law treaty, the Singapore Law Treaty, etc. try to achieve some degree of standardization and uniformity. It is generally hard to get registration of trademarks other than traditional trademarks. Some countries offer non-traditional trademarks some sort of protection. Some countries such as India’s law are silent or lack clear provisions. As for non-traditional trademark registrability. In such a case, the trademark registration handbook of the trademark registries concerned provides required guidelines for review procedures and registration non-traditional trademark requirements. Under article, as in conventional marks 15 non- traditional trademarks of the TRIPS must satisfy the basic pre-requisites: distinctive character, visual perception. It must

5 Torremans Paul Carl Leo, Trademark law: Is Europe moving towards an unduly wide approach for anyone to follow the example?, Journal of Intellectual Property Rights, 10 (2) (2005) 128, 131. 6 Swizzels Matlow Ltd’s Application (No. 2), (2000) ETMR 58. www.tjprc.org SCOPUS Indexed Journal [email protected] 9424 Amrita Mishra consist of a distinctive sin that can serve as an identifier to the source. It should not create uncertainty in the public mind and should not mislead the public. Based on local practices, these basic requirements can be applied differently. A different type of non-traditional trademarks or a particular form of graphic representation, permissible in one country might not be enough.7

Special Characteristics

It must consist of a distinctive sign that can serve as an identifier to the source. It should not create uncertainty in the public mind and should not mislead the public. Based on local practices, these basic requirements can be applied differently. A different type of non-traditional trademarks or a particular form of graphic representation, permissible in one country might not be enough. It must consist sign that can serve as an identifier to the source. It should not create uncertainty in the public mind and should not mislead the public. Based on local practices, these basic requirements can be applied differently. A different type of non-traditional trademarks or a particular form of graphic representation, permissible in one country might not be enough. Non-traditional marks are creative means of contact. The origins of the goods/services originated with customers. It gives the traders in the global market a competitive opportunity. Such marks hold a high potential of economic assets and with their distinctive scent or touch leave a higher degree of commercial impression on consumers. Factors for deciding if such sign should be licensed include: the trademark’s commercial perception, the related trade practices, if the sign is unique in a given field or is merely a refinement of a common feature and if the sign has any secondary uses. A mark that, due to its nature, did not inherently function as a mark would require proof of acquired distinctiveity. To be registrable such marks need not be functional, for example, if usable scents are not approved for registration in certain jurisdictions inherent in the product itself, such as perfume smell. The functionality test is based on, even if a sign has been used and could potentially serve as a mark, it may not be able to distinguishing as a matter of public policy whether it was important to the use or function of the product or if its cost or quality is affected.8

Rationale for Protection

The TRIPS Agreement specifically recognizes the registration as trademarks of the shape of the goods, their packaging, and and color combination. Although marks such as smells, sounds, taste, touch, holograms etc. are not mentioned explicitly a simple reading of the section in the description clause implies that, because the agreement provides a definition which includes these unconventional marks within its ambit. All jurisdictions provide an inclusive mark definition and therefore there is no statutory prohibition to protect non-traditional marks trademark provided it meets other statutory requirements. Non-traditional trademark has four basic functions: firstly it identifies the source or origin; secondly links the mark, the products and the proprietor; thirdly it guarantees quality and fourthly it advertises the products. It has bigger potential that of traditional trademarks. They affect consumers the most in the current international-trade climate. Since the principal function of trademark shall identify the products, the non- traditional recognition trademarks are especially important where people in areas of low literacy are unable to recognize traditional marks and typically recognize products by their form, color, touch or odour. For a segment of society such as the visually impaired and the illiterate in which people are unable to identify traditional trademarks, they have become important. In view of developments in trade ad trade practices

7 Majumdar Arka, Sandhu Subhojit and Majumdar Sunandan, The requirement of graphical representability for nontraditional trademarks, Journal of Intellectual Property Rights, 11 (5) (2006) 313, 315, 316. 8 McCarthy J Thomas, Trademarks and Unfair Competition, Vol 3 (West Group, St Paul Minn), 1996, 7-92.

Impact Factor (JCC): 8.8746 SCOPUS Indexed Journal NAAS Rating: 3.11 Registration of Non-Traditional Trademarks in India 9425 and the increasing globalisaion, recognition of unconventional trademarks could also be justified commerce and industry. Several countries have recognized and granted resignation for several unconventional trademarks, including the United States and the EU.9

Types of Non-Traditional Trademarks

Non-traditional trademarks exist that relate to all five senses. They will include some visible sign such a colour, shapes, moving pictures, holograms etc. or (ii) non-visible signs such as scent, sounds, taste or textures. Trademark Manual (Draft) of Indian practices and procedures Trademark Registry, 2015 states that the category of unconventional trademarks includes colour, sound, shape of goods, packaging and smell marks. The level of protection countries provide for such marks varies between authorities. In another country what is regarded as a protectable mark can not be granted protection. From a global perspective, the following are the primary types of non-traditional registrable trademarks.

 Smell/scent/olfactory marks;

 Sound/aural marks/ audio signature;

 Tactile/touch/texture/haptic marks;

 Single colour marks;

 Holograms; and

 Moving images/motion/ animated marks.

Smell Marks

Also known as fragrance/olfactory marks. Scent is a trademark which is theoretically protectable. Odor marks are generally applied to preparations for cleaning, cosmetics, and fabric softners. Recognition for the first time as application for a written explanation of the smell of high effect, new floral fragrance reminiscent of plumeria blossom’s for sewing thread was submitted to smell marks by the US courts and sticky yarn has been accepted as a graphic representation and has been granted trademark protection. In this acse, scent was associated with colours, but this is scientifically unrecommended. The court distinguished between functional and non-functional odors- the odor is not an inherent attribute of products of those products which have it as their inherent attribute as scents etc. In the trade mark application of John Lewis of Hungerford Ltd the trademark was graphically described by the statement that the trademark consists of the scent, taste or essence of cinnamon with respect to furniture. The request was refused on the ground that the formulation the smelling, aroma or essence of cinnamon was lacking in precision due to the degree of subjectivity allowed the question to be determined a fragrance demonstrated the scent, taste or assence of cinnamon and to what extent different perceptions of different persons could be equally different be considered a bench mark. Application published in Venootschap Firma Senta Aromatic Marketing for tennis balls the description “smell of fresh cut grass” was accepted.“Raspberry scent “has been accepted in Myles Ltd., application as for Gasoline and diesel. In the UK the Sumitomo Rubber Company has registered successfully “Rose-

9 Ralf Sieckmann v German’s Patent Office, Case No. C-273/00. www.tjprc.org SCOPUS Indexed Journal [email protected] 9426 Amrita Mishra reminiscent floral scent/ smell” as applied to tyres. Leader in the world Darts manufacturer, Unicorn products, got a “strong smell” trademark on the flight bitter beer” of their darts. 10

Smell mark can be protected at India where the applicant proves: i) the smell is used as a trademark; ii) its is not a trademark inherent or natural characteristics of the goods but added for identification by the applicant iii) the public finds the scent to be a label identifying the applicant’s goods; goods, and iv) marks are graphically represented. Smell mark can be protected at India where the applicant proves: the smell is used as a trademark; ii) it is not a trademark inherent or natural characteristics of the goods but added for identification by the applicant iii) the public finds the scent to be a lable identifying the applicant’s goods; goods, and iv) marks are graphically represented. The court ruled that, with respect to an olfactory symbol, a chemical formula does not meet the conditions of graphical representability. A written description. Chemical formula depicting the ascent does not represent a substance’s, as it is not intelligible, clear and accurate enough. In addition, a formula does not represent the odour, but rather the substance itself. A sample odour deposit it not a graphical representation. Smell the samples aren’t robust and reliable enough.11

Smell is impacted by temperature, humidity, and wind. It can get weakened or strengthened. The perceptibility is another factor in deciding the odor and thus the physical, emotional, sensitivity and health of the person take on a crucial task. The problem can occur more so in graphical representation of the mark than with sound marks. Most items applied fragrance to it, as in the form of fragrances, cosmetics, fabric conditioners, detergents etc. More flavourful or pungent. Those scents are unlikely to be considered by potential buyers as a statement of origin of the products. It is therefore uncomfortable to prove that a particular smell indicates the merchandise of a given trader. The courts held this to be a smell the label does not meet the graphical representation criteria when it is merely presented in the form of a chemical formula, by written explanation, or by deposit or mixtures of the odor sample of these elements.

Sound Marks

The courts held this to be a smell the label does not meet the graphical representation criteria when it is merely presented in the form of a chemical formula, by written explanation, or by deposit or mixture of the odor sample of these elements. Yahoo’s yodel turned into a first sound mark to be issued by the Indian Trade Marks Registry (2008) and ICICI’s Dhin dhin chik chik (2011). USA, Austria, Denmark, France, Ireland, Italy, Germany, Ireland, Italy, the Office for Harmonization in the Internal Market (OHIM), Spain, Sweden, UK, Norway, Switzerland, Germany recognize sound marks. The measure is if other traders are likely to choose to use the sound in the ordinary course of their market, without improper motive. The acceptability of a sound, such as words or other types of marks; depends on whether the sound is a distinctive mark, or has become one.12

A sound label can consist of songs, notes strings-with or without words, jingles, popular sounds that occur in nature or electronic sounds which do not occur in nature. For example pieces of classical , prima facie, may be appropriate as

10 Firstly this does not amount to graphic representation and secondly, odour being volatile in nature might fade and disappear after a period of time 11 Bhattacharjee Sudipta and Rao Ganesh, The broadening horizons of trademark law, Journal of Intellectual Property Rights, 10 (2) (2005) 120. 12

Impact Factor (JCC): 8.8746 SCOPUS Indexed Journal NAAS Rating: 3.11 Registration of Non-Traditional Trademarks in India 9427 a trademark. The examiners nevertheless have see how more than just a few classical music bars can serve as a trademark. A pure series of musical notes can’t decide the pitch or the important parameters of the remedy to be represented, and therefore to fail to meet clear representation requirements. Whole or large sections of classical pieces will probably be dismissed on the ground that they may not be treated like a trademark. A sounds acceptable the mark depends on whether the sound is a distinctive sign or has become; that is if the average user perceives the sound as being a trademark special product-association. Similarly, a plain onomatopoeia, by itself, satisfy the graphical representation requirement. If the symbol for sound is graphically represented by a simple onomatopoeia, it is not clear if the sign is the onomatopoeia itself, as pronounced, or whose actual sound or noise phonetic imitation is onomatopoeia. And where the fact that the sign is a pronounced onomatopoeia, possibly lacking the necessary clarification or precision not least because onomatopoeia can differ in perception, depending on the single. The standing committee on the Law of marks, Industrial Designs and Geographical Indications of the World Intellectual Property Organization (WIPO) (SCT) suggests that offices that allow sound sign representation to consist of a summary of the sound constituting the mark, or of a musical notation on a stave a digital or analog recording of the sound-or some combination thereof. Where to electronic filing is open, and the application can be attached to an electronic register. In some jurisdictions, however, only a musical notation can be considered on a stave to represent the mark correctly. The sound mark will qualify for acceptance only with evidence of factual distinctiveness. The examples are: very basic pieces of music consisting of one or two notes only; songs usually used as chimes; well-known folk songs with respect to entertainment services, park services etc.; children’s nursery rhymes (especially with regard to marks on children’s goods/services) and music closely associated with particular regions or countries for the form of goods/services. Where the mark consists of an unmistakable sound but includes other distinctive elements, for example a word, which can be considered as a whole for registration purposes. The registrar could request that the applicant include the such more information as the inspector on any music tendered for registration to assess whether or not the mark is distinctive, may be required. Being the proposed sound must be registrable and be capable of graphical representation. But notably sounds can be interpreted graphically, for instance by visual notation music. The musical notation and/or sound marks can be represented sound definition in world. The title of piece of music alone shall not be allowed comply with graphical representation criteria. The method for which the music shall be played if it is part of the mark or if the sound emanates from a musical instrument. Graphic/ computer volume calculation and the character of the sound in the representation has to be given. Where the sound is expressed in part by visual notation, a clarifying definition in words the sound should be part of that. Terms onomatopoeic, sonogram or can also consider spectrograms as graphical representations. The tone of it manufactured by products during use and which occur solely as a result of that usage, may not serve as a good mark of speech. Also sound mark must be non-functional. The siren sound does not serve as a siren trademark. In contrast, if the applicant may prove that the sound has acquired ‘distinction through use, although descriptive, the application may be considered, for example, registration may be granted to a toilet flushing sound for plumbing services which has acquired distinctive features through use.13

Tactile Marks

13 Londe Anne Gilson La, Cinnamon burns, marching ducks and cherry-scented racecar exhausts: Protecting nontraditional trademarks, Trademark Reporter, 95 (2005) 773. www.tjprc.org SCOPUS Indexed Journal [email protected] 9428 Amrita Mishra

Tactile marks are called touch/ texture/haptic marks, too. A Hallmark conceptually, touch like velvety surface of a wine bottle or feel of cotton. Protectable as a trademark, to indicate its source. Touch marks include also known as haptic marks because of its Greek haptesthai origin, meaning “Touching belonging’ International association of trademarks adopted in 2006 touch mark recognition and registration resolution. In 1996, Louis Vuitton Malletier sought protection for his ‘distinctive’ US trademark man-made textured pattern used on its luxury luggage as a surface features and goods. The International Association of Trademarks adopted in 2006 touch mark recognition and registration resolution. In 1996, Louis Vuitton Malletier sought protection for his ‘distinctive’ US trademark man-made textured pattern used on its luxury luggage as surface feature and goods made from leather. German Patent and trademark register office granted trademark in 2003 on the basis of a request lodged in the Underberg AG name for many classes like class 32 and 33 goods. Clare Kimberly has federal registration of a trademark for container configuration used for facial tissue for dispensation. Touchdown marketing has a trademark registered in the ‘pebble-grain textures’ of its basketball-shaped cologne and its ‘soft-touch feel’ distributor and fresh Inc. have registered trademarks on ‘cotton- textured paper wraps the goods in soap was acquired in 2006 by American wholesale wine& spirits Inc. trademark registration.

It is no simple task to turn the touch into protectable sensory branding. Tactile marl should not be usable like other non-traditional trademarks. A cell phone designed to get warmer in one’s pocket when it rings to attract the user’s attention or an artificially sticky steering wheel that enhances the user’s attention performance cannot be registered. If the tap is essential for use and the article‘s intent, or which necessarily effects its cost or quality, does then not warrant legal protection. Tactile mark does not serve as a trademark automatically when used for the first time. Artificial textures don’t necessarily count for defense by mark. Rights over the tactile marks are generally asserted by the use over established. There is a dearth of recognized tactile marks and these are least common non-traditional trademarks. Hence, the legal authority is scarce.14

Colour Marks

The mark and trademark definitions only refer to a combination of colours. A combination of colors can therefore be registered prima facie. Merging of there are statutory colors or even a single color in combination with a single color in combination with a word or device recordable. Single color is rarely used as the primary distinguishing means the source of the goods or services in trade. They are however capable of being used as a secondary trademark if the proprietor distinctly used the trademark to educate the public that it in a trade mark. Regard must also be paid to the general public interest not to unduly restrict other trader’s availability of colours. A single color can only be capable of denoting the origin of a commodity under extraordinary circumstance. A single color can be trade recordable label if the trade is really rare and peculiar and recognized by the traders and consumers alike, that it serves as the original badge for that class of goods as kept in Dyson Ltd’s demand for trademarks. As in the case of Ty-Nnat Spring Water Ltd’s application of trademarks, colours per se without any unusual or fanciful features would be devoid of any distinctive character, as they are deemed in the public domain and form part of the sign store that all traders can access. Evidence filed to support a claim for factual distinctive color must be very substantial strong and convincing. It needs to demonstrate clearly that the color label is exclusively designates the products or services of the applicant to the respective customer. There are less likely to assess factual distinctiveness where the products or services are limited and are unique to the local sector.

14 Susan Binsy, Recent developments in non-traditional trademarks, http://www.manupatra.com (21 November 2006).

Impact Factor (JCC): 8.8746 SCOPUS Indexed Journal NAAS Rating: 3.11 Registration of Non-Traditional Trademarks in India 9429

In Qualitex Co. v. Jacobson Goods co., the US Supreme Court found a green-gold color used on dry-cleaning press pads which are registered as a trademark where the color had taken on distinctive character. The court claims it’s the source- distinguishing capability of a sign allowing it to act as a trademark and not its ontological colour, form, scent, word or sign status. In this case, green was considered to be ‘secondary’ colour, it was used in such a way as to fully identify the brand with green-gold colour. Functional meaning was not there. However, even with acquired distinctiveness, registration of a color cannot succeed if the color is commonly necessary in trade. In a judgement in 2012 the red color of Christian Louboutin used on the Louboutin shoes soles was protected by its trademark red colour.15

Color mark registration depends on how the colors are viewed, and what they refer too. The European Court of Justice (ECJ) ruled in the Liberal that a pure color sample particularly on a paper in unlikely to be sufficiently durable. For a graphical representation purposes, designation of a color by a graphical representation of the universally accepted identification code, it is reliable and secure. If the colors are in a figuration like a circle or square may then be approved in as little as two colors, but if they are applied to the products packaging, they are less likely to be recognized as a bookmark. Proof of factual distinctiveness will be required in such cases. One of those the fundamental concepts of the color mark laws are that a practical color can not be bookmarked. In other words, if a business does lawn mowers, there can be no defense. In this case, be given green as a functional color, since green is the color of such lawns.16

There is no need to consider a single color per se as being inherently distinctive. In re owens-corning Fiberglas, a pink color for the fibrous glass could be registered isolated residential. In KWS Saat an application for single colour orange trademark in respect of seeds and treatment installations for seeds, consultancy services and agriculture, horticulture and forestry products was rejected on the grounds of lack of distinctiveness. However, if a particular colour of packaging has become distinctive in fact as indicating the goods of particular trader, there must not be any impediment in accepting the mark for registration.

Several brand offices across the country including many in Germany, Sweden, the United Kingdom, Norway etc. accept single registrability color per se of established secondary significance or acquired distinctive character. If the color is a fanciful about goods/services, can be viewed as intrinsically distinguishable and registration make. To form a trade mark, a color or a combination of colors must be able to distinguish between one traders goods or services, those of other traders.

The draft manual for Indian Trademark Practice and Procedure is Trademark registry, one means of signifying the significance of colors for the trade mark is to use them as a livery, i.e. as a consistent color scheme for a arrange of applications products of the same general type designating a source of trade. Using the examples of this are the liveries for buses, trains and vehicle service stations use in respects of services.17

Taste or Gustatory Marks

Trademarks of taste are highly unlikely to be considered uniquely distinctive in some without strong proof of acquired distinctive jurisdiction. Contradict appearance and smell marks, taste marks are applicable only to goods and not to services.

15 Shield Mark BV v Joost Kist h o d n Memex, Case No. C283/01. 16 Sappherstein Michael B, The trademark registrability of the Harley-Davidson Roar: A multimedia analysis, B C Law and Intellectual Property & Technology Forum & Journal, 1998, 101 17 Amicus Letter of the INTA in Shield Mark BV v J Kist, Trademark Reporter, 91 (2001) 1269. www.tjprc.org SCOPUS Indexed Journal [email protected] 9430 Amrita Mishra

OMPI ACT report notes that the requirement for graphical representation can be fulfilled by using a written explanation of the taste and an indication that it relates to a taste label. It must pass the non- functionality test however. US Court of Appeal in Re N.V. Organist’s decision underlines that aspect. According to the Board, “the flavor would not actually act as a trade. In any event, mark ‘it was also held that the taste of the applicant would not function as a trademark since many other orange flavored medicinal items exist. Consequently, N.V will not be distinct from an orange taste for the antidepressants. A product of Organon. The board said: “A lot of oral pharmaceuticals have an orange taste, and taste marks by their nature are not inherently distinctive. The board of appeals also noted that flavor is a characteristics of the goods and not theirs. As stated by the Court of Appeals and Trademark proceedings, it is difficult to describe how taste will serve as a trademark if customers only sample products after purchase. The registration of a flavor mark would require significant evidence of the acquired product. Specifically, OHIM Board of Appeal have rejected the request “A taste of artificial strawberry flavor” as pharmaceutical gustatory mark preparations by stating that “ in any event it is clear that such taste cannot distinguish between the pharmaceutical preparations of one company and those of another”.18

Indian Position on Non-Traditional Trademarks

Pursuant to Article 18 of the Indian Trademarks Act; any application for trademark registration should be compliant with the law. Under the rule 25(12)(b) of the rules relating to Trademarks 2002, application to register a trade-mark for goods and programs must be such that they can be seen in graphics. Furthermore, Rule 28 specifies that the trademark should be so representable on text. Additionally, rule 30 specifies the impact which the graphic representation should have be durable and be satisfying. It should be recalled that Rule 29 (3) provides that explicitly, it can also be three-dimensional marks registered, and so can a color combination. Section 9(3) derogates from the registrability of forms as a trademark if it is derived from the nature goods, or where to obtain a technical result forms give the goods substantial value. Probably it should also be noted that section 2(1)(m) of the mark is act defines an inclusive definition of mark consisting of goods forms and packaging, or a color- combination.

One can say that, in light of all these provisions while a lot of non-traditional ones can be included marks that fall under this description, graphical representability tends to be an obstacle. This ensures that everything goes method is unavoidable. It will be followed by the United States Supreme court inconsistent if the definition of India is applied trademark is by its very definition restrictive. The law of cases is in this respect always silent except in the matter of forms and how much depends on perception of the laws and formulas prescribed. Indian courts are likely to adopt the stickman approach in the future and therefore, in such circumstances, the registration of a mark will depend various consideration like graphical representation of non-traditional marks, and whether they are lasting or satisfactory.19

The Indian courts dealt with trade dress case in William Grant & Sons Ltd v Mc Dowell & Co Ltd in depth for the first time. This case dealt with a action and acknowledged for the first time the value of trade dress vis-a- vis a transboundary reputation. The settled position of law in terms of shapes is that trade dress needs to be distinct and must have secondary significance. The Indian courts have raised the question of using a single color and categorically claimed that it is

18 McCarthy J Thomas, Trademarks and Unfair Competition, Vol 3 (West Group, St Paul Minn), 1996, 7-115. 19 Haggerty Thomas P, A blue note: The Sixth Circuit, production design and the confusion, Tulane Journal of Technology & Intellectual Property, 8 (2006) 219.

Impact Factor (JCC): 8.8746 SCOPUS Indexed Journal NAAS Rating: 3.11 Registration of Non-Traditional Trademarks in India 9431 not possible to differentiate a single colour. Presently, Cadbusry’s wanted to mark purple as their colour trademark but not accepted. along with looking at the color combination, the place is by law and color criteria explained has gained secondary value, such as that of white and red in “Colgate” dental case products along with colgate’s inscription in a anyway sounds uncontroversial.20

As for other non-traditional trademarks. There appears to be no such thing as smell and taste traces whatever the case law and that issue remains fairly relevant still unexplored. Anyway, graphical requirement representation hampers registration. With the looking at the sound labels there is nevertheless a possibility to file under Indian Trademark Act because visual perceptibility is not and is not a criterion are methods of graphically representing the sound marks sustainably and satisfactorily. This, though, is even field remains unexplored.21

CONCLUSIONS

Although attempting to extend the reach of sort of the Sieckmann approach has trademarks in Europe ensure that the Tribunals adopt a rigorous test Trademark graphical representation. Though it is extremely useful in avoiding controversies non-conventional trademark registration, it may push cases out where there is competition between companies and expansion of the customer’s base warrants use of these frames. Meanwhile, the American approach of the attitude anything goes along with the requirement to precise identification of non-traditional markings tends to be entirely unsuitable for the legal climate in countries such as India, the key explanations for the meaning of ‘mark’ and ‘date’ was combined with the criteria for the registration of a mark. The tenor of the court’s judgments and of the definitions seem to indicate a keen judiciary to facilitate the enrolment of non-traditional brand names.

The TRIPS Agreement and other applicable international legal instruments there is a need for worldwide harmonization of trade-mark schemes on trademarks. In the interests of global trade, therefore, it is desirable to protect non- traditional trademarks. This also underlines the need to promote flows of investment and technology transfer in both the global and national markets. This is particularly important since Madrid’s international registration system facilities international registration of trademarks. Second, Harmonization of registration modalities, notably what would be considered good sign representation? No such registrations are dominant in trademark registers shall have appropriate benchmarks for the jurisdictions. She would do it clarify that the registry of trademark will apply the same requirements as those of uniqueness than traditional marks and what the criteria would be for graphical representation, especially of signs that are not visible. For instance in the case of olfactory marks, whether a chemical formula could be accepted by trademark register and/or other representational means? As for color per se, the plain would the reproduction of that color is sufficient or should the color code be provided, or should the register of trademarks require the details of the colors applied in the packaging or as applied to the goods in the application form? WIPO, at least, should have uniform guidelines on the graphic representations of trademarks which are not traditional.

REFERENCES

1. Mishra, Neha. "Registration of non-traditional trademarks." Journal of Intellectual Property Rights 13.1 (2008).

20 http://www.coca-colaindia.com/about_us/refreshing_facts. asp (21 November 2007). 21 Gibson Guitar Corp v Paul Reed Smith Guitars, LP, 423 F 3d 539, 543 (6th Cir 2005). www.tjprc.org SCOPUS Indexed Journal [email protected] 9432 Amrita Mishra

2. Carapeto, Roberto. "A reflection about the introduction of non-traditional trademarks." Waseda Bulletin of Comparative Law 34 (2016): 26.

3. Zhan, Qian. "The International Registration of Non-traditional Trademarks: Compliance with the TRIPS Agreement and the Paris Convention." World Trade Review 16.1 (2017): 111-140.

4. Calboli, Irene, and Martin Senftleben, eds. The Protection of Non-traditional Trademarks: Critical Perspectives. Oxford University Press, 2019.

5. Setyawan, Andry. "Non-Traditional Trademarks in Indonesia: Protection under the Laws and Regulations (An Intellectual Property Law)." JILS (Journal of Indonesian Legal Studies) 2.2 (2017): 123-130.

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