An unconventional trademark is a type of trademark which does not fall in the category of conventional trademark or traditional trademark. An unconventional trademark is mainly in the form of sound marks, smell marks, shape marks, and color marks. An unconventional trademark must possess the communicative ability to be able to differentiate goods and services from one person from that of another. The mark should have the potential to be distinctive; it must indicate source and thereby distinguish the goods.
In recent years, trademark registries and courts have grappled with trademark applications for silhouettes, shapes, scents, textures, and tastes, as well as short cartoons, single colors, body movements, and Tarzan’s yell. This invasion of the unconventional is due to the open-ended definition of a trademark. On the one hand, trademark law has embraced a definition that emphasizes the functional, rather than the ontological, status of a sign. Anything which does the communicative work of a trademark, by distinguishing goods on the basis of trade origin, can be registered as one. On the other hand, registration systems have historically developed around paradigmatic subject matter: a conventional or traditional trademark that is visual and consists of words and/or figurative devices. The need to reconcile these conflicting imperatives – the system is open to all categories of signs and it’s apparently ‘business as usual,’ yet the registration system was designed with only words and figurative devices in mind – requires a careful reconsideration of certain basic assumptions in this area. The Indian Trade Mark Registry's Draft Manual of Trade Mark Practice and Procedure provides the contextual framework for this reappraisal and this article responds to the various approaches it has adopted to accommodate such signs.
One of the most common arguments against non-conventional trademark is that they are leading to an undesirable restriction in the free intellectual property resources. Therefore it becomes imperative to first ask whether they should be registered. According to the dynamic opinion of the public assuming that a particular non-conventional trademark is distinctive and is not functional, a non-conventional mark like sound, smell or shape should give trademark protection.
The non-conventional trademark caters to a segment of society that has, in the opinion of the researcher, been ignored in the earlier trademark regime. I refer here to those for whom visual perception often becomes difficult or even impossible, the visually impaired and the illiterate. The mark such as shape, smell, and sound, embodying multi-sensory perception, enable the aforementioned consume consumers to make more beneficial purchasing decisions. Their identification of what they prefer incentivizes quality production for the holders of these marks. Registration prevents unjust enrichment.
The argument that non-conventional trademarks are undesirable because they are making inaccessible free intellectual resources, for instance, classical music over which no one has copyright, is also not tenable. As McCarthy has remarked, “One cannot come to the bottom-line conclusion that any item is “in the public domain” until one has exhausted all of the possible areas of exclusive intellectual property rights. It must also be noted that just because something has received copyright protection does not mean that it cannot be registered as a trademark.
As per section 18 of the Indian Trademark act, any application for registration of a trademark should be in compliance with the rules. According to rule 25(12) (b) of the Trademark Rules, 2002, the application for registration of a trademark for goods and services has to be in such that it can be depicted graphically. Further, rules 28 make it clear that the trademark should be such that it can be presented on paper. Rule 30 further makes a specification to the effect of the graphical representation made should be durable and satisfactory. In addition to this, what needs to be remembered is that rule 29(3) makes it explicit that a three-dimensional mark can also be registered and so can a combination of colors. Section 9(3) makes an exception to the registrability of shapes of the trademark if it results from the nature of goods, or obtains a technical result or where the shape gives substantial value to the goods. It might be noted that section 2(1) (m) of the trademarks Act defines to be an inclusive definition consisting of shapes and packaging of goods or a combination of colors.
Depending upon the registrability of non-traditional trademarks, the trademark has to comply with certain statutory requirements. These requirements may vary from country to country depending on its national legislation. This flexibility is provided by the TRIPS Agreement itself through international treaties such as Paris convention, Madrid protocol, trademark law treaty, Singapore law treaty, etc. try to achieve some degree of standardization and uniformity.
In the light of the TRIPS Agreement and other related international legal instruments on trademark, there is a need for harmonization of trademark systems worldwide. Hence, it is desirable to protect non-traditional trademarks in the interest of global trade. This also emphasizes the need to encourage investment flows and transfer of technology in the global as well as national markets. This is particularly significant since the Madrid system of international registration of trademarks facilitates international registration. Non-traditional trademarks pose certain difficulties in terms of interpretation and application of traditional/conventional trademark principles. There are two significant issues: firstly, the harmonization of criteria for the registration of these marks, and whether an office/trademark registry that accepts for registration could apply to them by analogy the same criteria it applied to traditional marks. Secondly, the harmonization of modalities for registration, in particular, what would be considered an appropriate representation of the sign. These registrations are not dominant in trademark registers of the jurisdictions to provide sufficient benchmarks. It should be clarified whether the trademark registry should apply the same criteria of distinctiveness than for more traditional marks and what the criteria would be for graphical representation, particularly of non-visible signs. For example, in the case of olfactory marks, whether the trademark registry could accept a chemical formula and/or other means of representation? As for color plus marks, would the plain reproduction of that color suffice or would the color code need to be provided, or should the trademark registry require that the colors as applied in the packaging or as applied to the goods be detailed in the application form? At least the WIPO should come out with uniform guidelines concerning the graphical representation of non-traditional trademarks. The WIPO Standing Committee on Information Technologies (SCIT) can provide proper guidelines with regard to the representation, description, and the application of trademark principles to non-traditional trademarks.