Trademarks have been in existence since as early as 5000 B.C. Humans have an unmistakable desire to use marks to designate ownership- either as property owner or as manufacturer. It is probable that primitive man used marks to indicate ownership of livestock. Later marks were used to indicate the maker of goods and their obligation to the quality of their work. There are evidences of cave drawings showing bison with symbols on their flanks, presumably ownership marks. Also marks are found on pottery as old as 5000 B.C.

Circa 3500 B.C. Mesopotamian commodities are identified with cylindrical seals and stone seals are found in Cnossos on Crete. Bricks, potter, quarry stones and roof tiles from First Dynasty Egypt from 3000 B.C. have marks believed to be ownership marks. Sixth century to third century B.C. saw the use of stamped ceramics on Greek pottery. Later there has been documented use of trademarks in Roman Empire. Bricks were also stamped with a mark of the maker of the goods.

A trademark is a distinctive sign or indicator of some kind, used by an individual merchant or service provider to uniquely identify the source of their products/services to customers and to distinguish their products/services from those of other entities. It gives the consumer the idea that what is presented to him as the product is either what he has already known under the same mark —  i.e., coming from a source he is acquainted with or  that it is what he believes as coming from a similar source.  It distinguishes the goods or services of one merchant from another’s.

A trademark basically performs the following functions:

a) It indicates the source of origin of goods.

b) It distinguishes one merchant’s goods from the other.

c) It indicates that all goods bearing the particular trademark are of a particular quality desired by the customers.

d) It advertises and promotes the goods in selling of them.

Trademark law is essentially derived from the English common law  which in turn originated from the law of torts relating to passing off. In early times, before there was a provision for statutory registration of trademarks, infringement could be stopped by bringing an action of passing off. However, the onus of proof in actions of passing off were (and still are) incredibly high and the only remedy available was injunction.  The main downside of bringing a passing off action is that it is time consuming, cumbersome and the outcome is unpredictable.

It was for these reasons that a system of statutory registration evolved. This recognized a statutory right in ownership of trademark and stated with no ambiguity, the rights conferred through registration and remedies in case of violation of those rights.

A trademark is a visual symbol in the form of a word, a device or a label applied to articles of commerce with a view to indicate to consumers that these are goods manufactured by a particular manufacturer or trader and to distinguish them from other similar goods. A trademark is protected under common law. Recent years have seen the emergence of non-standard trademarks like smell marks, trade dress, etc. Some of these non-standard trademarks were granted (smell of fresh grass for tennis balls) and some were not (smell of strawberry for cosmetics).

Among the three main types of intellectual property of patents, copyrights and trademarks, the important distinction is that in the first two cases the protected right is to the tangible object of creation, in the trademark case – it extends to the public goodwill in the product that a trademark stands for. Copyright and patent protection stem from the desire on the part of the governmental authority to stimulate economic activity by enriching public domain with production of expressive and utilitarian original works. The rationale behind the trademark laws, on the other hand, is based on regulating the quality of information in the marketplace by protecting consumers from misrepresentation by sellers and preventing unfair competition practices.

Copyrights and patents reward original artistic creativity and scientific innovation by securing the rights of authorship, trademarks, on the other hand, allow commercial entities to secure claims to an identity in the marketplace. The property value does not lie within the trademarks themselves, but in the information investments of the companies that they embody.

Since a trademark is just a tool that helps the consumer navigate in the barrage of marketing information by pointing at a particular provider of goods and services, it can be any device – a symbol, a word, a phrase, a sound, a shape, even a color or a smell as long as it communicates a unique identity for the consumer.

Trademark is a means for identifying the merchandise of one trader or service provider from another by some distinguishing mark.  As technology is evolving rapidly, there is an increase in protection being sought for new forms of trademarks. The traditional form of trademarks include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.

In recent times all signs audible, visual, tactile and olfactory have become part of trademarks.  Slogans, jingles, tunes, holograms- all these are now practically inseparable from their products.

The main problem in non-traditional forms of trademarks are that protection offered for these are not as easy or straightforward as traditional trademarks. Non-traditional trademarks are more common in foreign territories. If India has to come to par regarding protection of non-traditional trademarks then the statute has to be analyzed from that perspective to see if there is any room for non-traditional trademark protection.

Words, letters, logos and other traditional forms have been used as trademarks the world over.  However, now there is nothing distinguishing about these anymore and the need to attract customer’s attention and even more difficult , to hold it in place has led companies to look toward more novel and innovative ways to distinguish their goods and services. As a result they are looking toward non-traditional forms of trademarks. Non-traditional forms of trademarks, in order to obtain the protection as registered trademarks, must overcome several hurdles. As of today, there is no harmonization where protection for non-traditional trademarks are concerned.

The function of trademark has been discussed earlier. Registration of a traditional trademark in the form of a word name, logo or symbol, phrase or device protects the goodwill of a business and helps to identify and distinguish the source of the goods or services of one merchant from another. Registration of trademark is a sign of ownership of the trademark. The common man starts associating different marks with the quality of goods and the services provided by that business enterprise.

People start associating color, shape and other non-traditional components of the trademark to recognize the source of origin over a period of prolonged use. If these components are not protected as marks, it might easily be copied and infringement could occur. Other novel forms of trademark like smell, sound etc are effective in capturing the consumer’s interest in this age of fast moving technology.

Motion and sound marks are effective in capturing the attention of the internet users as opposed to a sticat mark.

This project will only deal with non-traditional trademarks that cannot be graphically represented, i.e., color, sound, smell and feel.

Color

The royal purple color on a chocolate wrapper distinguishes the goods as Cadbury’s chocolates, irrespective of what language the word Cadbury’s is written in. The red and yellow combined with the M tells us that the food is a product of McDonalds, whether one is literate or not.

Colors and color combinations thus play an important role in distinguishing products. Color transcends the language barrier. A single color, the US Supreme Court held, is never distinctive. In the case of Qualitex Co. v. Jacobsen Products Company Inc., where Qualitex manufactured pads for dry cleaning presses. These presses were a certain shade of green-gold. When a competitor started using a similar color, Qualitex filed suit for unfair competition and sought to register the green-gold color. Thereafter Qualitex added trademark infringement to the suit. The Court was divided over the issue whether color alone can be a trademark. The Court held that color alone can be registered where it has become distinctive of the applicant’s goods in commerce.

In another case, Philmac Pty Ltd. v. Registrar of Trade Marks, the registrar had rejected the application for the colour terracotta as applied to connecting inserts of polypipe fittings. The applicant appealed against this decision. The Court held that the mark had no distinctiveness but could be registered on basis of acquired distinctiveness through use.

The Court identified the following circumstances where color applied to goods would be adapted to distinguish:

  1. The color does not serve an ornamental function by conveying a recognized meaning (e.g., red for danger);
  2. The color does not serve a utilitarian function by physically or chemically providing an effect such as reflection or absorption;
  3. The color does not serve an economic function – that is the colour is not naturally occurring result of the manufacturing process; and
  4. The color is not sought to be registered where there is a proven competitive need for the use of color.

Color will not be protected as a mark if it is “functional”- if it makes the product work better or affects its cost or quality. For example, gilding the pages of a book will not be protected under trademark as gold is a standard element in the decoration and is used in bookbinding.

Also, awarding trademark to colors will deplete the freely available reservoir of colors and thus might exhaust the colors available to the traders in a particular field.

Sound

Where sound is used to perform the trademark function of identifying the origin of products or services, a sound trademark would qualify as a non-traditional trademark. Sound marks can function as trademarks or service marks, as source identifiers for goods and/or services. Sounds create an impression in the mind of the people regarding the brand/owner before even looking at the trademark. How often have we heard the Nokia tune or Windows startup tune and identified the brand without looking at the cell phone or the computer?

In the United States, the test for whether a sound can serve as a trademark “depends on the aural perception of the listener which may be as fleeting as the sound itself unless, the sound is so inherently distinct that it attaches to the subconscious mind of the listener to be awakened when heard and to be associated with the source or event with which it struck.” This was the rule applied in the case of General Electric Broadcasting Co.

In this case, the sound mark (for radio broadcasting services) was described as “a series of bells tolled during four, hour sequences, beginning with one ring at approximately a first half hour and increasing in number by one ring at each half hour thereafter.” The Board held that sound marks can be classified as inherently distinctive. The United States has long since recognized sound marks such as the lion’s roar (MGM), the three second chord sequence used with the Pentium processor of Intel, etc.

Coupled with distinctiveness, graphical representation may pose a serious obstacle in registering sound marks. Generally sound mark is represented using musical notation and a written description. However not everyone can read music. Even written musical notes, while indicating pitch, do not indicate tone. Musical notes give a description of the music, not the music itself.

Deposition of digitized recording of the sound is not allowed because publication of this recording is not possible. If it was allowed, people would have to go to the registry to hear it and also, it would be difficult for the registry to store so many sound samples.

Smell

This kind of mark is the most problematic and the issue has been debated for a long time now. There lies practical difficulty in describing such marks.

The first case came about in 1990 in the case of Clark when the scent mark was identified in application drawing as “ a high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” applied to “swing thread and embroidery yarn”. The examining attorney refused to register the trademark on the grounds that the public would not perceive the fragrance as an indication of origin but mere ornamentation. The Appellate Board reversed this decision. The Board’s reasoning was that the fragrance was “not an inherent attribute or natural characteristic of applicant’s goods but rather a feature supplied by the manufacturer.” Other smell marks like “lemon fragrance” for toner, “almond and strawberry scent of goods” were approved.

As mentioned earlier the main problem is graphical representation of the smell mark. The method followed is that used in Ralf Sieckmann v. German Patent Office. The issue in this case was described as whether “balsamically fruity scent with a slight hint of cinnamon” could be registered. The Patent Office refused the registration. Their contention was that “a trademark may consist of a sign which is not in itself capable of being perceived visually, as long as it can be graphically represented by means of images, lines or characters…”

The Court did not elucidate on the method of representation of a smell mark but said that “ a chemical formula, an odor sample and a literal description of an olfactory mark are not, either alone or combined, sufficient graphical representations” because the formula is not understandable, the sample is not durable and the literal description is not sufficiently precise.

Basically smell marks are not registrable usually because of difficulty in graphical representation. Chemical formula representation is not sufficient because the formula represents the substance not the smell. Further, chemical formula lacks clarity and precision, because of lack of technical knowledge of the common man and also because the same substance can produce different smells at different temperatures. Further deposit of the sample with the registry is also not a feasible option.

In Conclusion:

Non traditional trademarks as explained earlier are based on appearance, shape, sound, smell or feel. To be registrable a trademark must pass the test of distinctiveness, graphical representability and non-functionality.

As globalization occurs and the world becomes a smaller place, more and more businesses are going to resort to non-traditional trademarks because of the evolution and growth of several new products and services.

The Indian scenario is such that it still does not recognize non-traditional trademarks. In fact there aren’t any cases on this subject. As India opens up its markets to different products and services and business enterprises, India will have to recognize such non-traditional trademarks as they are gaining acceptance in the rest of the world.

The recent judgment of the Netherlands Court which recognized copyright in a perfume was a landmark case for precisely this reason, that it kept up with the times and awarded protection for something that was earlier considered non-copyrightable as it was not new or original.

Today’s post is by Guest Barista Shalini Menezes of ::O.bi:t.er: D:ic.t:um.

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2 Comments

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    This post was mentioned on Twitter by priorsmart: via patentbaristas, interesting post – “Non-Traditional #Trademarks” ~ http://cli.gs/Duhrg #copyright #patent…

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    If one accepts the (perhaps dubious) assumption that the property value of trademarks does not reside within the verbal or non-verbal symbol but only in the information investment of a company-then it is perfectly understandable why courts all over the world have been reluctant to grant legal protection for non-traditional trademarks. When the smell, color or shape of a product is deemed eligible for legal protection then a court may be granting a perpetual property right to a non-verbal attribute of a product.
    If you and I produce identical products there will always be another name I can choose. If you and I produce identical products there may be far fewer shapes, or colors or smells available to me as a second comer.
    And oh by the way, even with traditional marks, the information rationale may not explain the basis for legal protection. What does the name Ralph Lauren symbolize? Dresses, shirts, towels, eyeglasses, shoes, wallpaint, candy, ……
    Is there any doubt that Ralph Lauren has a property right inherent in his name regardless of the product or service at issue?