Trademark FC Issue 4 2017 v6:Layout 1 1/8/17 15:04 Page 1

The Issue 4 2017

TrademarkGLOBAL REACH, LOCAL KNOWLEDGE www.trademarklawyermagazine.com Lawyer

Social media: The new counterfeit goods’ harbor Harley Lewin from McCarter & English, LLP explores the problem

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PLUS Jana Remišová, PATENTSERVIS, explores the implementation of the new EU regulation on in the Czech Republic

• Jurisdictional updates • Requirement of Use in the USA • Chinese law updates • Top news stories • Romanian law • Development of merchandising rights in China • Unconventional trademarks INDIA . 51 The trade Taj Mahal Palace Mahal Taj the color combination of combination the color Red THE LAWYER or combination of colors, if ofor combination capable colors, colors is one to be reckoned with. Although it may be argued Although it may with. be reckoned is one to Colgate Palmolive Company and Ors. v. Anchor Health Anchor v. and Ors. Company Palmolive Colgate In India, Although the law does not explicitly recognize protection recognize not explicitly does Although the law In While Indian jurisprudence on this subject is still Indian While observed by the Delhi High Court the Delhi High observed if that by having a product shape, style, combination, color distinctive and texture ineluctable leads to it for decades, has been in the market of secondary meaning on account inference acquired having of and goodwill, its reputation earned cost. at huge of ‘single color’ marks, the Indian courts in some cases the Indian marks, color’ ‘single of single observed that even colorshave be protected, may is the color where circumstances as in exceptional such ‘badge of origin’. a trade as a very to unusual and recognized word/figurative cases of trademarksIn involving complex prove it is for the applicant to as colors, elements as well is the essential partthat the latter of the the mark since be so. to element is usually presumed or figurative word and Beauty Pvt. Care Ltd., the plaintiff which be a part claimed to of its White, and was It trademark was in question. for dental products Hotel that the trademark applied for is only the image of the a particular from point-of-viewbuilding taken and thus, a device mark or, at best, does it surely the , the of given nature protection entail an unconventional as its subject matter. monument architectural of distinguishing the goods or services of one trader from as trademarks. be recognized those of would others, ‘badge of that it acts as a mark be such must The color of example An a suitable form of description for origin’. a trademark of of that consists a combination colors be: capsule would a pharmaceutical applied to applied to one halfmark color of consists of a a maroon and a gold color applied to the other capsule at one end, in the representation as illustrated half, on the application As per the Act, if without a mark limitation is registered Act, per the As for all colors. it shall be deemed registered of color, evolving, an interesting example of example an interesting trademarkevolving, protection the image of to a building in respect accorded recently of services food and drink for providing and temporary the famous namely, accommodation: capability of and, when read and , they would deserve they the would , 51 distinctiveness etc. have not yet been expressly not yet have etc. age age P combination of colors

, 45 : rotection and enforcement of and enforcement unconventional rotection sounds, shapes, trademarks as colors, such smells,motions, been a has always and tastes 13

The Trade Marks Act, 1999 (“Act”) expressly recognizes expressly 1999 (“Act”) Act, Marks The Trade Dheeraj Kapoor and Shilpi Jain, LexOrbis, explore unconventional LexOrbis, and Shilpi Jain, Dheeraj Kapoor shapes, sounds, etc. and inform us trademarks such as colors, law. of their place in Indian trademark with the corresponding new Trade Marks Rules, 2017 Rules, Marks with new Trade the corresponding Although trademark. sound as an acceptable (“Rules”), motion smell, taste, if well trademarks, as test found to recognized they are ofon the touchstone being represented graphically many take it may India, In trademark status in India. all aspects amendments before and legislative precedents subject of interesting debate under Indian law. This is law. subject of under Indian debate interesting the fact that they to due to value add tremendous particular business because ofany power the enhanced of they recollection effectuate. goods shape of of unconventional trademarks are comprehensively codified trademarks comprehensively are of unconventional come. as a benchmark for times to P Unconventional An trademarks: perspective Indian 1/8/17

1 t ayou L e: l c Shilpi has extensive knowledge of IP contentious and non-contentious matters. of and non-contentious knowledge IP contentious Shilpi has extensive trademark to in relation and advice matters opinions provides She regularly with She is also closely associated the legal issues. and other IP related of publication team and several LexOrbis and has authored research at: She can be contacted articles and papers in leading IP publications. [email protected] Shilpi Jain, Associate, LexOrbis Associate, Shilpi Jain, Intellectual Appellate Board, Trade Marks Office and the Office Marks Trade Board, Appellate Property Intellectual is intricately associated He as advisory as well Office laws. on various related and has authored of and publication team with LexOrbis, the legal research articles and papers in leading IP publications and advisesmany many small and medium- corporations, multi-national 500 companies, Fortune at: can be contacted He and technology start-ups. enterprises, sized [email protected] Résumés LexOrbis Associate, Dheeraj Kapoor, and expertise property in intellectual knowledge Dheeraj has extensive the High Courts, before matters in handling diverse and specializes laws, ti Shilpi Jain Dheeraj Kapoor Dheeraj Kapoor CTC Legal Media CTC Legal r A s bi r

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INDIA

However, more recently in Britannia Industries Ltd. v. ITC Ltd., the for registration. Thus, the above tests act as a statutory bar to the Division Bench of the Delhi High Court held that since ITC failed to registration of shape marks. establish that the combination of yellow and blue in its trade dress Some shapes of goods, which have been protected as trademarks in has become a ‘badge of its goodwill’, Britannia could not be restrained India, include the shape of Zippo brand of lighters, the shape of bottles from using the same colour combination in its trade dress for biscuits. of John Distilleries Limited, and those applied for by the Coca-Cola As far as shapes are concerned, distinctive shapes of goods or their Company. packaging or any other three-dimensional objects capable of being Coming to the topic of sound as trademarks, they are registrable represented graphically would be worthy of trademark protection in and deserve full protection especially with the explicit recognition India. Although the Act includes “shape of goods” in the definition of given to them under the new Rules. Applications for sound marks trademarks, apart from the touchstone of distinctiveness, it also lays must now be submitted in an MP3 format, not exceeding 30 seconds down certain additional tests before they can be recognized as having in length and recorded on a medium allowing easy and clearly audible the trademark status. These tests are as follows: replay. This needs to be accompanied with a graphical representation (1) The “shape of goods” should not result from the very nature of of the notations constituting the sound mark. Although “notations” the goods themselves (for instance, the basic shape of an egg tray has not been defined under the new Rules – and there is no explanation to contain /hold eggs); given as to what may be acceptable to fulfill the requirement of “a (2) The shape should not be such as is necessary to obtain a technical graphical representation of its notations” – generally, modern staff result (functionality test; for instance, a round-edged shape of a notations are acceptable for musical compositions. However, the fact pharmaceutical capsule meant to be swallowed; or a bar of soap that the scope of these terms has not been defined or restricted to a with indentations along its sides to allow a better grip, which would particular manner of rendering the notations graphically, the legislative be a shape consisting exclusively of features for achieving a technical intent appears to be inclusive and progressive. Thus, if the graphical result); notations are unambiguous and clearly define the sound mark, they (3) The shape should not be such as to give substantial value to the would be acceptable, which is particularly useful in the case of a sound goods (this is to exclude shapes that add some value either in the that is not musical and rather arbitrary noise but is still capable of design or appearance of the goods, disregarding the main function being registered on account of its distinctiveness. On the other hand, attributable to a trademark i.e. source identification. This is determined an original tune may entail trademark protection across classes on by a comparison between the shapes sought to be registered and the account of its inventiveness. Surely, the uniform process under the shapes of equivalent articles). new Rules coupled with digitization of records would simplify sound Further, it is important to understand that if the “shape of goods” mark searches in order to ascertain conflicts and for due diligence does not succeed on the above tests, no matter how much distinctiveness activities. they would have acquired through use, they would still not be accepted In India, sound marks such as the Yahoo yodel and the corporate

52 THE TRADEMARK LAWYER CTC Legal Media INDIA 53 THE TRADEMARK LAWYER protecting unconventional marks. unconventional protecting While we await further of development await we jurisprudenceWhile in this sphere Unconventional trademarks an important in corporate play can role Unconventional branding of and adoption branding and shape sound strategies, color to markets in increasingly competitive be a smartmarks could move the purpose that ensure and quality of services products/ the not are that sustain their appeal. only factors courts/tribunals that Indian ready are shows the current trend of law, while approach a broad adopt to smell and taste 53 age age P

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1 t or animated marks are also non-conventional in nature also non-conventional marks are or animated ayou L e: l c In India, the possibilities of the law recognizing the possibilities of recognizing the law India, In Motion ti CTC Legal Media CTC Legal jingle of ICICI Bank have already been registered. The former The the is registered. been jingle already of Bank have ICICI granted be markfirst sound to registration and the latter in India in the name of be registered sound markis the first to an Indian the sound of include in India Other sound marks registered entity. to ‘proposed a notations on certain musical over sung ‘Hisamitsu’ The “Raymond: of sequence musical basis and the popular be used’ Complete Man”. of identifier act things movement as a source which and signify a given these marks, In association and brand value. commercial having the moving commercial or sequential images uniquely identify the Law originAlthough Trademark of Indian or services. products can their acceptability marks, motion recognize does not expressly and that they the position can be both distinctive be gauged from motion mark One such granted that has been graphically represented. trademark, Hand-Shake registration is the famous Nokia in India graphically a series through of has been represented which images in sequence. as legitimate trademarks are yet to be realized and explored as the and explored be realized as legitimate to trademarks yet are with be difficulties associated must their graphical representation the same follow to is likely India since Further, and resolved. analyzed position as the EU liberal) – the US (more some extent – and to the product to or quintessential inherent that are smells and flavors of the development Until registration. from itself be excluded would that chances are there further on this subject, jurisprudence in India not be granted marks registration would smell and taste on the basis distinctiveness, acquired prove to order In of distinctiveness. inherent has that the smell or taste show to be a significant burden may there with the applicant. exclusively be associated to come r A s bi r

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