Author: Harsh Kashyap, School of Law, Forensic Justice and Policy Studies, National Forensic Sciences University, Gandhinagar
To the Point
Non-traditional trademarks, including smells, sounds, colours, shapes, and packaging, are changing brand identity in India. Unlike conventional trademarks of words or logos, these trademarks rely on sensory perception, raising concerns in their registration, enforcement, and distinctiveness. Globalisation and promotion strategies have opened the Indian trademark landscape to more non-conventional trademarks. This effort balances protecting intellectual property rights, consumer recognition, and competition laws. It is crucial for businesses that wish to achieve solid brand protection to properly understand the legal framework, practical issues, and the judiciary’s interpretation within the Indian context.
Abstract
Non-traditional trademarks in India form part of the branding and intellectual property transition. Unlike traditional trademarks, these trademarks comprise olfactory, auditory, and visual elements, and are not limited to words or logos. The registration of non-traditional trademarks often involves complex components such as distinctiveness and non-functionality, as well as graphical portrayal. It is usually tested pursuant to the Trade Marks Act, 1999. This article will explore the current legal framework, the key statutory elements, international aspects, and challenges thereunder in the enforcement of these rights. Through case law and regulatory practices, this article provides a descriptive–analytical understanding of how smells, sounds, and shapes are becoming valid identifiers and impacting brand protection practices in the Indian jurisdiction.
Jargon simplified
Non-traditional marks – Unique types of trademarks that exist beyond names and logos. Examples include: sounds (such as jingles), shapes (such as the Coca-Cola bottle), colours, or even smells.
Graphical representation – A visual representation of the trademark, so it can be filed and recognised. Music can be notated as notes, and shapes may be drawn.
Distinctive / Acquired distinctiveness (Secondary meaning) – The inherent quality of a consumer immediately connecting a sound, shape or colour to a single source. For instance, a consumer immediately associates the gold Ferrero Rocher wrapper with that particular chocolate.
Functionality doctrine – A principle stating that functional features of a product (like the shape of a connecting brick in Lego) cannot be monopolised as a trademark because those features are used by everyone in the market.
Trade dress – The total image and appearance of a product or its packaging that distinguishes it from other products, like a Zippo lighter or Ferrero Rocher chocolate.
Olfactory marks – Trademarks based on smells (like the scent of a particular perfume), but challenging to register in India since they cannot be presented visually on paper.
Persuasive authority – This refers to decisions by courts in other countries (such as the U.S. and Europe) that Indian judges look to as guidance, but are not legally binding in India.
The Proof
The idea of non-traditional trademarks in India represents a marked shift from traditional branding practice. Trademark owners have historically only been entitled to use words and imagery, or some combination thereof. As consumer markets evolve and trade continues to globalise, brands use sensory elements, such as sounds, smells, colours, and shapes, to differentiate their products. The need for brands to respond to this shift has necessitated continued adjustments to the Indian legal framework for trademarks, particularly under the Trade Marks Act 1999, which expressly provides the statutory foundation for the registration and protection of trademarks. Section 2(1)(zb) informs readers that “trademark means a mark capable of being represented graphically and capable of distinguishing the goods and services of one person from those of others.” While the provision is intended to be generally inclusive, applying non-traditional trademarks is fraught with complications.
Fundamental to trademark law is uniqueness, the ability of a trademark to identify goods or services produced or provided by a single source. For instance, establishing uniqueness becomes more difficult when we look at non-traditional trademarks. A smell or sound must not only be unique, but consumers must have come to associate that unique smell or sound with the trademark. The Trade Marks Manual of India stipulates that a mark needs to distinguish goods and should not be functional or generic. For example, a shape of chocolate will only be registrable if its shape is not controlled by technical necessity but is an identifier of the source. Sound marks (auditory marks), such as sounds or jingles utilised in the brand, would need studies of consumer recognition or evidence of use in the marketplace to substantiate their trademark uniqueness (WIPO, 2019).
A major obstacle faced by non-traditional marks is the need for a visual representation. Infinitely more difficult to represent visually are sensory marks, compared with words or logos. Section 2(1)(zb) indicates that the mark must be capable of being a visual representation, and has resulted in various innovative methods for representation, including using musical notation for auditory marks, diagrams for shapes and even chemical formulae or descriptive notes for scents. This requirement is not simply a formality; it ensures effective examination, publication and enforcement practice. For example, while the EU and the systems of trademark in the United States equally require visual representation for trademarks, there has been a more flexible approach by these jurisdictions than is reflected in Indian practice, and similarly, examiners in India are beginning to rely on analogical reasoning in the assessment.
The principle of functionality is a significant constraint on non-traditional trademarks. If a mark is functional to the use of the product or if it has an impact on the price or quality of the product, then trademark law cannot substitute for the rights conferred by a patent. For example, the scent of a detergent that performs a functional cleaning is not eligible for trademark protection, as that would be an improper extension of exclusive rights over a functional aspect of a product or service. Section 9 of the Trade Marks Act specifically excludes registration of marks that are not distinctive or that are functional, which is consistent with international standards as outlined in TRIPS (WIPO, 2021). This establishes an appropriate balancing act of protecting a brand’s identity and sustaining competition.
India’s stance towards non-traditional trademarks is shaped largely by global jurisprudence and international conventions. The TRIPS Agreement encourages all member states to accept and protect all forms of trademarks, non-traditional trademarks included, provided they are distinctive and not functional. Additionally, WIPO guidelines also make reference to evidence of consumer perception and distinctiveness. Courts in India will also refer to the case law of European and American jurisdictions to help them interpret the ambiguity of issues in Indian law. For example, EU case law with respect to shape marks, such as Lego shapes, and sound marks, such as NBC chimes, can give persuasive authority to Indian examiners and courts when deciding novelty, distinctiveness, and registrability.
Even when statutory provisions allow for non-traditional trademarks, registering and enforcing them in India is difficult. This is often because evidence of secondary meaning or acquired distinctiveness has to be shown. Non-traditional marks are often tactile, audible, olfactory, or visual marks that are difficult to describe or quantify as compared to traditional marks, so the registration process and litigation process for infringement become even more difficult. There is also a dearth of judicial guidance on non-traditional trademarks, and when cases do arise, courts are automating reasoning with scenarios involving traditional marks. Furthermore, enforcement could be difficult as well, for example, determining infringement of a scent or colour may require scientific testing, consumer surveys or expert testimony. This can revolve around litigation expenses.
Still, trends suggest growing acceptance of non-traditional marks in India. Brands are utilizing a variety of distinct shapes, colours, and sounds, and the Indian Patent Office and courts are gradually aligning to recognize many of these non-traditional trademarks. More recently, both updates to the examination guidelines and academic commentary have indicated a move towards a more practical approach. As consumer recognition of sensory branding continues to develop, the law will be in a better position to protect these marks as well. This development serves as another example of a more general trend in the law related to intellectual property: that is, weighing strong protections for innovators against competition and consumer interests.
In conclusion, the rise of non-traditional trademarks in India highlights the rapid changes taking place in the context of branding and intellectual property (IP) law. There are provisions within the legal framework provided in the Trade Marks Act, 1999, for the consideration of non-traditional marks; however, challenges to practice remain, especially concerning distinctiveness, graphic representation, and functionality. India’s practice is influenced by the international landscape and relevant case law. Despite these challenges, progress is being made in the recognition of sensory marks, active litigation and progressive examination practices, which bode well for the future of non-traditional trademarks in India.
Case Laws: Judicial Recognition of Non-Traditional Trademarks
Judicial interpretation has substantially informed the development of non-traditional marks in India, and the courts have slowly been conferring protection on marks beyond traditional marks. In examining the cases regarding sound, shape, and trade dress, Indian jurisprudence has engaged with global developments while generating its own. In addition, cases from the European Union and the United States also provide compelling persuasive authority on the issues of functionality, distinctiveness and graphical representation. Overall, these cases demonstrate the challenges and potential to protect sensory marks in contemporary trademark law.
Yahoo! Inc. v. Akash Arora & Anr. (1999)
This case is frequently cited for its early recognition of sound marks in India. The case was fundamentally a dispute concerning domain name infringement; however, the Delhi High Court had clearly noted that Yahoo!’s jingle (the Yahoo! yodel) had acquired distinctiveness and consumer recognition. Following this recognition, the Indian Trademark Registry ultimately approved the registration for the Yahoo! yodel in musical notation, which led the Court to conclude that sound was represented graphically, and therefore sounded for purposes of the statutory requirement under Section 2(1)(zb) of the Trade Marks Act, 1999. This decision was instrumental in systematically extending the idea of trademark to sound, beyond both words and logos and thus created a basis for auditory branding as an intellectual property right.
Gorbatschow Wodka KG v. John Distilleries Ltd. (2011)
In Gorbatschow Wodka KG v. John Distilleries Ltd. (2011), the Bombay High Court analysed the bulbous shape of the Gorbatschow vodka bottle. The court held that the defendant’s use of a deceptively similar bottle shape was likely to cause confusion among consumers and was infringing the plaintiff’s trade dress rights. The court held, importantly, that the overall appearance of a bottle can indicate the source of a product, even in regard to an otherwise functional bottle shape, if the shape was tacitly associated with the product by consumers. The court’s holding is significant in that it subjects Indian law to aligned jurisprudence with international understanding of trade dress protection, in relation to brand packaging as a source of trademark identification. It is representative of Indian law, considering that under Section 2(1)(zb) of the Trademarks Act, the “shape of goods” may be registered as a trademark (or trade dress) if it is distinctive and non-functional.
Ferrero Rocher v. Ruchi International (2010)
The Delhi High Court addressed the issue of whether Ferrero Rocher chocolates could be registered as a trademark, taking into consideration both the golden wrapping and ball shape of the chocolate in its analysis. The court found that, while the ball shape was functional, the combined use of a golden foil, special arrangement, and overall trade dress was sufficiently more than function and had acquired distinctiveness. The court protected the overall visual impression of the product packaging and emphasised above the difference between the function and aesthetics of consumers, which was a key to establishing distinctiveness. The correlation between the shape and the overall visual impression was an important principle developed for trade dress protection in India.
Zippo Manufacturing Co. v. Anil Moolchandani (2011)
In this case, the Delhi High Court granted protection to the well-known rectangular shape of Zippo lighters. The Court held that, although Zippo’s design was the product of utility in some ways, it had acquired secondary meaning through extensive use and consumer recognition. The decision confirmed that, under Indian trademark law, a non-functional shape that acquires distinctiveness through use can be protected as well. Even more tellingly, the ruling indicated judicial readiness to protect non-traditional marks with sufficient evidence of consumer recognition and association.
International Precedents: P&G, Lego, and Smell Marks
Procter & Gamble v. OHIM (2001)
In the case of Procter & Gamble v. OHIM (2001), the European Court of Justice (ECJ) decided whether the shapes of laundry detergent tablets could be registered as trademarks. Procter & Gamble argued for the protection of its shape as a viable trademark based on the distinctive design; the European Court of Justice correctly rejected the application because the shape of the tablets was mainly functional. The relevant ruling arose out of a recognition in trademark law that functional solutions deserve no permanent protection under trademark law, and functional solutions are best suited for protection under patent law. The decision delineated functionality and distinctiveness in European Union law, ensuring that shapes that are trademarks must be used to identify the source of goods rather than for functional purposes. This case has also influenced the decisions of Indian courts relating to the features of product designs and trademarks.
Lego Juris v. OHIM (2010)
In this case, Lego sought trademark registration for its famous red toy brick in the European Union. The ECJ rejected the application, finding that the shape of the Lego brick was determined by its functional attribute of interlocking with other bricks. The court observed that features vital to the product’s utility cannot be monopolised by trademark law, as it would unduly limit competition. The case confirmed the functionality doctrine by stating plainly that a trademark should not give rights to exclusive use of the functional character of products. The Lego ruling has been cited in recurring discussions in the Indian legal framework to illustrate limitations of shape marks and advise against attempts to expand trade mark protection through a utilitarian design.
In re Clarke (U.S., 1990)
This U.S. case is one of the first successful registrations of a fragrance trademark. The applicant wanted to protect the scent of plumeria flowers used in sewing thread. The U.S. Patent and Trademark Office (USPTO) approved the registration, concluding that a scent could function as a source identifier if it were non-functional and distinctive. The decision illustrated that even non-tangible sensory experiences can function as trademarks if a consumer associates a good or service with the respective brand. Even though India has yet to recognise olfactory marks due to the difficulty of graphic representation, Clarke is endlessly cited in academic discussions, and practitioners use it as an example of what sensory branding might look like beyond visual and auditory.
Conclusion
In India, courts and the Trademark Registry have started to bestow recognition on sound and shape marks, acknowledging their value as branding tools, as seen in the famous cases such as Yahoo!, Ferrero Rocher, and Gorbatschow Vodka. Trademarks are protected if they have no functional purpose and can be represented graphically. Olfactory marks are unprotected due to the inability to represent them graphically. The relevant legal reasoning draws heavily from international law traditions, as we see the influence of the European Union and the United States apply to Indian legal practices. In recognising the importance of marking signs and signals by other parties, promotional cases such as Lego Juris, or the uniqueness of a scent in Sieckmann, to mention a couple of examples from the literature, evidence the importance of clarity and functionality doctrine, lending weight to the need for legislation.
In conclusion, the future of non-traditional marks in India will depend on how the country evolves in terms of the need for innovation and fair competition. The ideal would be creating a breed of mark that reflects the best international practice and operates under an Indian paradigm that fosters brand innovation over market competition. This will provide legality for recognising these types of marks in the future.
FAQS
1. What qualifies as a non-traditional trademark?
Non-traditional trademarks are not just words or logos. Non-traditional trademarks may also include sounds, shapes, smells, colours and even motion marks, provided they perform a trademark function of identifying the source of the brand.
2. Are non-traditional trademarks permitted under the law?
Yes, non-traditional trademarks such as sounds and shapes are permissible in India pursuant to Section 2(1)(zb) of the Trade Marks Act, 1999, provided they have acquired distinctiveness and can be represented graphically. Smells remain mostly prohibited, due to basic technical considerations.
3. Can sound marks be registered in India?
Yes, sound marks are registrable if presented in musical notation and audio recording. Good examples of sound marks are Yahoo!, Yodel, Nokia, and ICICI Bank corporate jingle.
4. Why is it challenging to register smell marks?
The difficulty arises from representing the smell in a graphic form. Descriptions, chemical formulas or actual samples are not considered sufficiently precise or durable for trademark protection, as noted in the European Sieckmann case.
5. What does the future hold for non-traditional trademarks in India?
The future will likely be gradual acceptance, tempered by consumer trends and the international marketplace. Sounds and shapes are now gaining protection, although we expect technological advances and law reform will eventually allow smells, colour and motion marks to be registered in the coming years.
