Approach to Non-Conventional Trade Marks in India and in the UK

Introduction

In this blog I will discuss the registration obstacles for non-conventional marks in India and in the UK. In my analysis I will focus on sound marks and smell marks when discussing the development of the law in the two countries. In addition, I will compare the current approaches and conclude with a discussion on whether the law should be more inclusive of non-conventional marks and approve their registration.

What is a non-conventional trademark?

A trademark aims to distinguish the goods of one person from the goods of another individual. Traditionally, a trademark is understood as a word, a graphical logo or the shape of goods and/or a combination of colours. However, this common understanding caters to visual perception, neglecting other senses that human beings are blessed with.

We are capable to distinguish between different smells, sounds and tastes because when we experience them, we can readily identify their sources. This ability extends to recognising specific scents of a place, identifying a person by their voice, a song by the music only and so on.

Marks that we feel though these senses are referred to as non-conventional marks which can be equally crucial in distinguishing goods and services of one individual from another individual as the traditional trademarks.

Are non-conventional trademarks recognised in India?

The Indian Trademarks Act, 1999 regulates trademarks in India, and it clearly states that only marks that are visually distinguishable can be registered. This restricts the registration for non-conventional trademarks such as sound and smell as they lack graphical representation.

However, the provision of the Act is not a complete embargo since sounds that can be represented by musical notes and therefore through a visual representation are eligible for registration given that the other requirements are satisfied. [1] One essential condition is that the sound must be associated with a specific product or service to be registered. Therefore, the graphical requirement under the Trade Marks Act, 1999 does not absolutely limit the registration of sound marks and there are clear examples of sound marks registered in India such as Yahoo Inc., the first Indian sound mark and ICIC Bank, the first company to register a sound mark. [2]

Nevertheless, graphically representing an olfactory mark is complicated, which explains the reason why the Indian law does not allow registrations of smell marks and why there are no precedents in this area. This careful approach aims to guarantee clarity and certainty, recognising the challenges of granting trademark rights to a proprietor when distinguishing their goods or services from those of others might raise difficulties.

Thus, where it was possible to expand the law and maintain certainty, steps were taken by Indian legislators, such as the introduction of the Trade Marks Rules, 2017, recognising sound as a trademark category, but where the registration of the trademark would have caused ambiguity in the law, such as with smell marks, the Indian law favoured the traditional approach.

Approach in the UK

The previous approach adopted by the UK in relation to non-conventional trademarks corresponded with the Indian law. However, with the recent amendments of the Trademark Act 1994 and in particularly following the EU Trademarks Directive in 2017 the requirement of a graphical representation of the trademark was removed, which expanded the recognition of trademarks in the UK jurisdiction.

The 2022 amendment to UK trademark law has alleviated the registration process for non-conventional trademarks, particularly when there is recognised distinctiveness among the goods or services of the applicant compared to others. This update indicates a significant shift towards accommodating diverse forms of trademarks in the legal framework.

Therefore, the UK does not shut the door to the recognition of non-conventional trademarks such as sounds and smells. However, it does not imply that these non-traditional trademarks can be easily recognised. The case of Sandvik is a demonstration of a successful registration of a new sonic logo, however it equally showcases the necessity of distinctiveness and clear recognition of the mark. [3]

Similarly, for smell marks the UK law follows the same requirements of distinctiveness set in the Trademark Act 1994, which despite allowing the registration of such non-conventional trademarks, raise obstacles for a vast majority of smell mark applications. The requirements are that the scent must clearly and properly depict the topic matter of the smell and most people must be able to recognise the origin in the same way as they can with traditional trademarks. There have been some successful applications for registration of a ‘floral fragrance smell reminiscent of roses applied to tyres’ and a ‘strong smell of bitter beer applied to flights for darts’ in the UK. Nonetheless, if the smell is the main substance of the product, such as No. 5 fragrance by Chanel, then the application for registration will be unsuccessful. [4]

Comparison

The UK trademark law seems to embrace a more liberal approach towards non-conventional trademarks as it abolished the requirement of graphical representation for a trademark to be registered in 2017, whereas the Indian law still relies on this specific condition. However, there has been an enlarged recognition of sound marks in recent years in India indicating a shift in the Indian approach which can be further augmented in the following years.

Nonetheless, in relation to the registration of smell, India still follows the old doctrine of ensuring certitude of the law.

Conclusion: Should These Trade Marks be Registered?

With the current development and increased emphasis on intellectual property it becomes crucial to protect the rights of creators of all types of properties and not limit the safeguarding net to creations that can only be graphically represented. This neglects other senses such as smell, sound and taste which are of the same importance as sight.

The Indian Law seems to still follow a more careful approach due to the issues with the feasibility of the liberal theory in the real world; the more non-traditional trademarks, that cannot be easily distinguished, get registered the harder it becomes for the courts to ensure justice and conclude whether the rights of the proprietor of the trademark have been infringed.

Nevertheless, by following the attitude of the UK law and the recent expansion of the trademark law, Indian Law may be able to value various types of intellectual creations, maintaining at the same time certainty of the law.

Author:–Harleen Kaur Grewal, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.

References

[1] https://cleartax.in/s/sound-trademark

[2] https://www.mondaq.com/india/trademark/1177272/sound-mark-registration-process

[3] https://www.mewburn.com/news-insights/navigating-the-sonic-maze-overcoming-the-challenges-with-registering-sound-marks-in-the-uk

[4] https://staylegal.co.uk/can-you-trade-mark-a-smell