Traditionally, trademarks have been associated with words, names, symbols, and logos that distinguish goods and services in the marketplace. However, with the evolving dynamics of business and consumer behaviour, non-conventional trademarks have gained prominence in recent years. In India, the concept of non-conventional trademarks has been recognized and protected, providing businesses with unique ways to safeguard their brands. This article explores the Indian perspective on non-conventional trademarks, delving into the legal framework, types, challenges, and benefits of adopting such distinctive marks in the competitive landscape.

Introduction:
A trademark[1] serves as an essential tool for brand identification and consumer trust in the business world. Traditionally, trademarks encompassed standard elements like words, names, logos, and symbols. However, as businesses seek innovative ways to stand out in the crowded market, non-conventional trademarks have emerged as a powerful alternative.

These unique forms of trademarks involve unconventional elements such as sounds, scents, shapes, colours, holograms, and even moving images that can be used to represent a brand's identity[2]. In India, the legal recognition and protection of non-conventional trademarks[3] have opened doors for businesses to protect their intellectual property creatively[4].

Legal Framework for Non-Conventional Trademarks in India:

The Indian legal system acknowledges the significance of non-conventional trademarks and provides protection under the Trademarks Act, 1999. Section 2(1) (zb) of the Act defines a trademark as a mark that can be represented graphically and capable of distinguishing goods and services[5]. This definition is broad enough to encompass non-conventional elements, making it inclusive of non-traditional marks.

Types of Non-Conventional Trademarks:

• Sound Marks: Sound trademarks consist of specific audio compositions that can distinguish a brand. Examples include the iconic jingles of McDonald's or Nokia. To register a sound mark, the applicant must submit an audio representation of the mark.
   
• Colour Marks: Colour trademarks involve the use of distinct colours to identify goods or services. The colour should be applied to a specific part of the product or its packaging. For instance, the distinct purple colour of Cadbury's chocolate packaging is a well-known colour mark.
   
• Shape Marks: Shape trademarks pertain to the unique three-dimensional shape of a product or its packaging. The Coca-Cola bottle's iconic curvaceous contour is a classic example of a shape mark.
   
• Hologram Marks: Hologram trademarks consist of holographic images that change with perspective or angle of view. These marks have dynamic visual effects, making them distinctive and memorable.
   
• Smell Marks: Although relatively rare, smell trademarks use distinctive scents to identify products. However, registering smell marks can be challenging, as representing scents graphically is complex.
   
• Moving Image Marks: Moving or animated image trademarks involve dynamic images, often seen in advertisements or digital branding. Representing these marks requires graphical or video representations.

Challenges with Non-Conventional Trademarks:

While non-conventional trademarks offer exciting possibilities for brand recognition, they also pose specific challenges, especially in the Indian context.[10]

1. Distinctiveness: The primary purpose of a trademark is to distinguish goods or services. Non-conventional marks need to be inherently distinctive to be eligible for registration. Proving distinctiveness can be more challenging for non-traditional marks compared to traditional ones[11].
    
2. Graphical Representation: The Trademarks Act mandates graphical representation for trademarks. This requirement creates hurdles for non-conventional marks like smells or sounds, as translating them into graphical formats can be complex.
    
3. Subjectivity: Perception of non-conventional trademarks can be subjective and vary among consumers. Establishing a consistent understanding of a non-conventional mark's identity may be difficult.[12]

Case Laws:
In India, various legal precedents have emerged over the years that solidify the recognition and protection of non-conventional trademarks. Notable cases have set important benchmarks and helped establish the framework for such trademarks:

Yahoo! Yodel: Yahoo! Inc's yodel became the first sound mark to be registered by India's Trademark Registry. The registration was allowed under the Trademarks Act 1999, which protect unconventional trademarks like sounds, colors, and holograms if they can be graphically represented and distinguish one company's goods or services from others. Yahoo! filed the application in 2004, representing the yodel with musical notes. The registration was approved due to the yodel's unique recognition in India and worldwide. This landmark case emphasizes the growing importance of non-traditional trademarks and benefits brand owners in India. Other companies, including Nokia, have also applied for sound mark registration, showing the increasing demand for this kind of intellectual property protection.[13]

Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd.: Colgate succeeded in protecting the unique "visual appearance" of its toothpaste carton, which was characterized by its design and colour combination[14].

Trademark Infringement and Litigation:

With the rise of non-conventional trademarks, instances of trademark infringement have also increased. Infringement occurs when another business or entity uses a similar or identical non-conventional mark, leading to confusion among consumers. To protect their intellectual property, businesses must actively monitor the market for potential infringements and take legal action when necessary[15].

Litigation involving non-conventional trademarks can be complex, especially when establishing distinctiveness and proving infringement. Courts often consider consumer perception, market presence, and the uniqueness of the mark in question. In some cases, expert witnesses may be called upon to testify about the mark's distinctiveness and recognition in the relevant industry.

Position Of Non-Conventional Trademarks In India

Sound Mark

Non-conventional trademarks are gradually becoming part of Indian legal practice, as defined by Section 2(1)(zb) and Section 2(1)(m) of the Trade Marks Act, 1999[16]. These trademarks include sound marks, and some notable examples in India are Yahoo Inc.'s yodel[17], ICICI Bank's corporate jingle[18], and Britannia Industries' bell sound[19]. To register a sound trademark in India, an MP3 recording of the sound, not exceeding 30 seconds, must be submitted to the Office of Registrar of Trade Marks, along with a graphical representation of its notations. The application must clearly indicate that the trademark is for a sound to be examined appropriately.

The key criterion for acceptance or rejection of a sound trademark is its distinctiveness, whether it has become synonymous with the product or service in the minds of consumers. The Draft Manual of Trade Marks Practice and Procedure provides further clarity by stating that musical notes, with or without words, may be used to graphically represent the sound, adhering to Section 26(5)[20] of the Trade Marks Rules, 2017. The Shield Mark[21] doctrine is also applicable in India in the context of sound trademarks.

Sound trademarks, such as Yahoo's yodel and ICICI Bank's corporate jingle, have gained recognition in India, opening doors for other businesses to protect their unique audio identities. The distinctiveness and representation of the sound are essential factors in the registration process, fostering innovation and diversity in trademark protection.

Colour Mark

Colour marks in India can be classified into two types: single colour marks and combination colour marks. The Trade Marks Act, 1999 mentions combination colour marks in Sections 2(1)(m), 2(1)(zb), and 10(1). For trademark applications seeking protection for combination colours, Section 26(2) of the Trade Marks Rules, 2017 requires the inclusion of a reproduction of the mark.

However, the Act does not explicitly mention single colour trademarks. Additionally, Section 9(1)(a) of the Act specifies that trademarks lacking distinctiveness should not be registered. This creates ambiguity in the registration of single colour marks, as single colours are commonly available and widely used, making it difficult to establish their distinctiveness. The concept of colour depletion, which acknowledges the limited availability of colours in the world, further complicates matters.

The law surrounding the trademarking of colours in India appears unclear, and the judiciary holds considerable discretion in this matter. As a result, courts have delivered conflicting judgments over the years. For instance, in the Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd.[22] case in 2003, the Delhi High Court restrained the defendant from using the red and white colour combination of the plaintiff's packaging, considering it as passing off. However, in the case of Cipla Ltd. v. MKI Pharmaceuticals[23], four years later, the court opined that there could not be a monopoly over colours and that copying the colour of another product did not amount to passing off.

The exact position of colour trademarks in India remains uncertain, and the courts' contradictory rulings add to the complexity. The ambiguity in the law and varying judicial opinions highlight the challenges in obtaining trademark protection for colour marks in the country.

Shape mark

Shape of goods can be recognized as a trademark under Sections 2(1)(m) and 2(1)(zb) of the Trade Marks Act, 1999, similar to the combination of colours. For shape to qualify as a trademark, it must possess distinctiveness and be graphically representable. Section 9(3) of the Act further specifies certain conditions for shape marks. The shape must be distinctive from the goods or services and not be dictated by the nature of the product. Additionally, it should not serve any functional purpose, meaning it should not be designed to achieve a technical result. Moreover, trademarking the shape should not result in a loss of value for similar goods or services.

The Draft Manual of Trade Marks Practice and Procedure provides additional clarity on the registration of shape marks in India. Courts in India have been consistent in their judgments regarding shape as a trademark. In cases like Lilly ICOS LLC and Anr. v. Maiden Pharmaceuticals Ltd.,[24] the Delhi High Court ruled in favor of the plaintiff, stating that the almond shape of their product had been copied by the defendant with deceptive intent. Similarly, in the case of Gorbatschow Wodka KG v. John Distilleries Ltd,[25] the Bombay High Court recognized the shape of the plaintiff's vodka bottles as a trademark, granting them an injunction against the defendants as the shape was distinctive and contributed to the product's goodwill.

In summary, shape marks can be protected as trademarks in India if they meet the criteria of distinctiveness, non-functionality, and non-deceptiveness. The courts have been consistent in their approach to shape trademarks, upholding the rights of businesses when their shape marks are copied or infringed upon.

Conclusion:
In conclusion, non-conventional trademarks offer exciting possibilities for businesses seeking to create strong brand identities and differentiate themselves in the competitive marketplace. India's legal framework has made significant strides in recognizing and protecting non-conventional trademarks, offering businesses a valuable means to safeguard their intellectual property.

As businesses continue to innovate and explore novel ways to engage consumers, non-conventional trademarks will remain crucial in shaping the future of brand protection and identity in India. With clear guidelines, increased awareness, and a streamlined registration process, non-conventional trademarks will continue to thrive, fostering creativity and innovation in the Indian business landscape. Embracing these unique dimensions of brand protection can pave the way for a more diverse and dynamic marketplace, benefiting both businesses and consumers alike.

End-Notes:

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8. Kurup & Aksa Pradeep
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11. https://deliverypdf.ssrn.com/delivery.php? Last visited: 26/7/2023
12. DPIIT, MCI Chair on Intellectual Property Rights & "Graphical Representation of Non-Conventional Trademarks,"
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14. Colgate Palmolive Company And ... vs Anchor Health And Beauty Care Pvt. ... on 29 October, 2003, https://indiankanoon.org/doc/1306228/ (last visited Jul 26, 2023)
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16. Section 2 in The Trade Marks Act, 1999, https://indiankanoon.org/doc/117176/ (last visited Jul 26, 2023)
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25. Gorbatschow Wodka Kg vs John Distilleries Limited on 2 May, 2011, https://indiankanoon.org/doc/792062/ (last visited Jul 26, 2023)