Beyond The Ordinary: The Rise in Use of Non-Conventional Trademarks in Pharmaceuticals Industry

Abstract

In the changing landscape of intellectual property law, Trademarks have gone beyond the traditionally used symbols, names, logos to enhance the non-traditional identifiers. Non-conventional or Non-Traditional trademarks such as sounds, color, shape, scent or any other motion marks have emerged as a new innovative tools widely being used in the today’s changing and competitive market era that redefine how brands connect with the public at large. These marks not only nourish the more sensory interaction with the consumer but also reflect the evolutionary changes of branding strategies in a competitive global environment. Non-Conventional trademarks are full of potential but still present some unique challenges, especially in jurisdictions like India, which is in process of evolving & developing their legal framework to accept these novel identifiers. This blog discusses the concept of non-conventional trademarks, its use in Pharmaceutical Industries, relevance and complexity surrounding the registration process under Indian Law.

Introduction

Trade Marks is defined under “Section 2 (1)(zb) of the Trade Marks Act, 1999, as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.” Traditionally the trademarks were only limited to the recognizable form like words, symbols, logos, alphabets, and so on which can be seen and recognized easily however, the change in the market dynamics and the entry of many competitors operating in each sector have expanded their scope to include more diverse form known as Non-Conventional Trademarks. These can be in the form of color of Products or the packaging, sound, shape or even the smell giving the companies a more defined entity than other competing in the same market or industry.

The Trademark law in India, known as Trade Marks Act, 1999, comes into force according to the rules established under the International Principles laid down in TRIPS (Trademark-Related Aspects of Intellectual Property Rights Agreement). The act defines the framework in which the trademark is to be registered, protected and the enforcement of the trademarks extends further with the Trademark rules, 2017.

Non-Conventional Trademarks

Non-conventional trademarks include a variety of distinctive elements beyond the traditional visual marks, such as sounds, smells, colors, product shapes, touch or texture, tastes, motion or moving images, and positioning. Unlike conventional trademarks that primarily use visual elements, non-conventional trademarks engage multiple senses to foster brand recognition. These trademarks tap into hearing, olfactory, tactile, and even gustatory experiences, making them powerful tools for establishing strong brand associations with consumers. The significance of these non-conventional trademarks lies in the introduction of the innovative branding concepts. With changes in the consumer expectations and advanced marketing methods, brands now tends to prefer using the non-conventional trademarks for the purpose of effective branding, catch the attention of prospective consumers and for lasting impressions.

Sound trademarks are one of the most special and widely used trademark in today’s time which is considered as a non-conventional Trademark. “Yahoo Inc’s three-note-yodel and ICICI bank corporate jingle stands out as these were the first registered non-conventional trademark in Indian Jurisdiction in the year 2008 and 2011 and by this Yahoo became the first approved sound trademark in India and ICICI bank marked the first approved sound trademark for an Indian Company.”[1]

To register a sound rate mark in India, the process requires submitting an MP3 recording of the sound, which must be no longer than 30 seconds, to the office of the registrar of trademarks, as outline in Rule 26(5) of the trademark rules, 2017. Additionally, a graphical representation of the musical notation must also be provided. The draft manual of trademarks, practice and procedure specifies that the application must indicate that trademarks pertains to a sound otherwise, it will be treated as a word mark and evaluated accordingly.

Colour marks can classify into single-colour marks and marks involving combination of colours. The trademarks act, 1999, references colour combinations in section 2(1)(m), 2(1)(zb), and 10(1). In addition, section 26(2) of the trademark rules, 2017, requires that an application for a combination of colours be accompanied by a reproduction of the mark. On the other hand, single colour trademarks are not specifically mentioned in the act. Section 9(1) (a) states that non–distinctive trademarks are not eligible for registration, which presents a challenge for single-colour trademarks. This is because single colour are widely accessible and commonly used, making it difficult to argue that distinctiveness.

The recognition of non-conventional trademarks has gradually being recognized within an Indian legal framework including the case of “Red Bull GmbH vs. The Registrar of Trade Marks (2017), the Delhi High Court held Red Bull trademark for its distinctiveness as used blue-and-silver colour combination.”[2] This ruling reflected the judiciary is willingness to broaden the interpretation of trademark protection to include the non-traditional or non-conventional marks also. Similarly, the court‘s decision in “Colgate Palmolive Company vs. Anchor Health & Beauty care Pvt. Ltd. (2003), acknowledged that a combination of colours and function as a great mark if it develops distinctiveness through consistent use over time.”[3]

Shape Trade Marks are recognised under section 2(1)(m) and 2(1)(zb) of the trademark act, 1999, similar to the registration of colour combinations, provided the shape is distinctive and can be represented graphically. Section 9(3) of the act, also addresses, shape, trademarks, emphasising that the shape must be distinct from the product itself and not inherently linked to its nature. The law states that the shape should not serve a functional purpose, meaning it should not be designed to achieve a technical result. Moreover, the shape should not add intrinsic value to the product in a way that could undermine the competitiveness of similar products offered by other manufacturers. Draft manual of trademarks, practice and procedure offer additional guidance on the criteria and process for registering the shape trademarks in India.

This also includes motion and multimedia trademarks which are characterised by moving elements and can include movie clips, animated logo of television shows, videos, and other elements that change the positions.  When combined with sound, the state trademarks are referred to as multimedia marks. All the Indian trademark act does not explicitly prohibited registration of such marks, it faces challenges due to the absence of guidelines for the graphical representation. Non-conventional trademarks and route marks which involves a specific placement positioning of a mark on a product, which may include both figurative and colour elements, touch and pressure marks which refers to products unique and recognise surface structure that can be filled with the fingertips, including patterns, and shapes

The Pharmaceutical Industry: A Distinct Ecosystem

The Pharmaceutical sector operates within a highly regulated ecosystem where consumer safety is paramount. This regulation, coupled with the industry’s inherent focus on innovation and competition, creates a unique environment where traditional trademarks alone may not suffice. Over the years, a product in the pharmaceuticals business had been identified through such tools as names, logos and symbols representing its trademark however, because of the uniqueness faced in the industry, it has proven quite inadequate. One of the primary reasons is the very controlled nature of the pharmaceutical industry, which has its main emphasis on safety and clarity. Traditional trademarks may not offer the uniqueness which is needed to avoid the consumer confusion or misrepresentation and a little resemblance in the product names, shape or packaging leads to serious implications, as patients may get mixed up, putting them at risk.

The Drugs and Cosmetics act, 1940, is particularly significant for the pharmaceutical industry as it governs the labelling, packaging, and advertising which also include registered trademarks of drugs to ensure public safety. It prohibits misleading names and claims, and mandates clear, accurate information about active ingredients and usage, thus complementing trademark regulations.

The sheer volume of general drugs available are combined with the extremely similar looking products and their designs makes it almost impossible for the traditional trademarks to appear distinctive. As pharmaceutical continuously companies putting out a multitude of basically similar drugs for just the same health conditions, distinguishing by trademark becomes a necessity. Employing only the traditional marks to provide some kind of distinction between these drugs especially those which are for same disease, contains same ingredients won’t be enough to maintain the distinction between the products of different companies and indeed the manufacturers.

In the present global market, a pharmaceutical company needs to be homogenous in branding across multiple jurisdictions, which may have different trademark laws in such a scenario, traditional trademarks could be limiting because they may not have enough strength to gain the recognition for the brand name when the competition is very high. Non-conventional marks provide an edge in offering a more unique mode of identification of products overcoming all the traditional challenges.

More than this, traditional trademarks fail to bring out the psychological and sensory aspects of branding. The pharmaceutical industry has slowly come to realize the potential of using sensorial cues in attracting consumers and building a more significant, positive relationship with the product of the consumers. A specific shape or color might immediately recognize a brand or medicine as compared with a conventional name or symbol.

For example, Pfizer’s Viagra, the blue color and diamond-shaped pill has become the synonymous with the brand and important part of its brand identity another example can be of AstraZeneca’s Nexium, a product used to treat against the acid reflux is characterized by an instantly recognizable purple-and-gold palette tablet making its product highly distinctive.

Challenges

The use of non-conventional trademarks, while promising, is not without challenges according to “Section 2(1)(zb) of the Trademark act, a  trademark must be represented graphically.”[4] This requirement poses difficulties for marks such as sound and scents, as they cannot be depicted through conventional visual means. The legal framework needs to adapt further to accommodate these unique forms. Also establishing that a non-conventional trademark is distinctive and has a strong association with a particular brand can be a significant hurdle. For example, proving that a color scheme of AstraZeneca’s Nexium has become synonymous with its brand requires extensive use and consumer recognition over time.

The regulation of trademarks in India is primarily governed by trademarks act and its associated rules. That’s definition of “Mark” includes various forms, such as logos, labels, tickets, names, signatures, words, letters, numerals, the shape of tickets, packaging, and combination of colours or any combination thereof. While this definition does cover some non-conventional trademarks also, the Indian legal framework causes challenges for registering unconventional trademarks.

Under the trademark act, a trademark must be capable of being represented graphically, meaning that a mark must be able to be deducted in either proper paper or digital form to qualify for registration. This requirement create significant difficulties for non-visual trademarks, such as smell and taste marks as they cannot be represented graphically in a practical way. For marks like motion or multimedia marks, the current regulations allow a representation using a series of images that convey movement. However, the absence of clear guidelines for these types of trademarks result in uncertainty for the practitioners. Consequently, unconventional trademarks, often face of cycles in meeting the fundamental criteria for registration in India.

Conclusion

As the Pharmaceuticals industry continues to expand and innovate, the use of non-conventional trademarks is likely to become more prevalent. These trademarks not only help establish a unique brand identity but also serve practical functions such as deterring counterfeiting and enhancing product recognition. With advancements in technology and better data analysis, companies can now tract how these trademarks resonate with customers, reinforcing their brand presence and increasing market share.

The regulatory landscape in India is gradually evolving to keep pace with these changes. The Indian Courts are starting to recognize and validate the non-conventional trademarks, and the future amendments to the trade mark act may provide clearer provisions for their registration and protection. This evolution will not only empower the pharmaceutical companies to use non-conventional trademarks more confidently and strategically but other sectors will also be empowered.

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

References:

https://www.legalserviceindia.com/legal/article-16216-non-conventional-trademarks-in-india.html

https://www.lakshmisri.com/insights/articles/unconventional-trademarks-a-roadmap-to-the-future#

https://legalupanishad.com/non-conventional-trademarks-in-india/#google_vignette

[1] https://www.nishithdesai.com/generateHTML/5801/4

[2]https://curia.europa.eu/juris/document/document.jsf?text=&docid=216554&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=4685038

[3] https://indiankanoon.org/doc/1306228/

[4] Section 2(1)(zb) Trade Marks Act, 1999