Can Tactile Marks Be Effectively Protected Under Trademark Law?
INTRODUCTION
For a long time, logos, names, and jingles have been the mainstays of trademark law. A recent trend in branding, however, is the use of non-traditional trademarks such as haptic markings. One way to tell where a product or service came from is by looking for tactile marks, which can also be called touch, texture, or haptic marks. These markings play a crucial role in differentiating brands and improving the customer experience. In this post, we’ll take a look at the recognition and enforcement challenges associated with tactile marks and see if they can pass muster as trademarks.
A tactile mark stimulates the skin’s tactile receptors to produce a distinct sensation. A wine bottle’s smooth surface can give way to the cottony feel of a bar of soap wrapping. Tactile marks get their names from the Greek term haptesthai, which means “about touch.” The textured pattern that Louis Vuitton’s premium luggage is known for is an example of a mark. One more is Underberg AG’s textured drink container. In 2003, the firm’s trademark in Germany was protected due to its distinctive design. Paper towels made by Kimberly-Clark and soap packaged in cotton-textured paper by Fresh Inc. are two examples. The importance of tactile branding in the space, beverage, and high-end goods industries has been well-established.[1]
In 2006, the International Trademark Association, INTA, officially recognized the importance of tactile marks by adopting a resolution in support of the recognition and registration of these marks. Still, despite such advancement, tactile marks are among the least common forms of non-traditional trademarks.[2] Legal protections for these marks are often based on their distinctiveness, non-functionality, and long use. Unlike traditional trademarks, tactile marks do not automatically function as trademarks upon their first use. Instead, their recognition often depends on establishing secondary meaning in the minds of consumers over time.
CHALLENGES IN PROTECTING TACTILE TRADEMARK
Trademark protection is governed by several key criteria, the foremost being distinctiveness. A tactile mark must be capable of identifying the source of the goods or services it represents to qualify as a trademark. Such distinctiveness can be inherent or acquired through continuous use and consumer recognition. In the case of tactile marks, however, inherent distinctiveness is rare because textures and materials are often perceived as functional or aesthetic features. Therefore, most tangible marks depend upon secondary meaning and, thus, there is a huge requirement for significant evidence, for example, consumer surveys, advertisements, and other market data.
Another important criterion for trademark registration is non-functionality. It cannot perform an ancillary function relevant to the cost, quality or usability of the product. For example, a sticky steering wheel that will improve grip or a cell phone which heats up inside a user’s pocket to warn of an incoming call would almost certainly be regarded as functional and therefore not entitled to trademark registration. The functional test under law frequently coincides with the benefits for practical use bestowed by touch inventions, and there is often very little to disentangle the message of a trademark from its functional use.[3]
Even in India, emerging discussions regarding tactile marks have been witnessed. The Act of 1999 does not provide for any definition for the ‘tactile marks’. While its provision for non-conventional trademarks may bring it to the ‘ambit’, however, in the absence of direct precedents, the applicants having protection to the ‘tactile feature’ stand uncertain.[4]
There are a few practical issues that make the identification and enforcement of tactile marks quite challenging. For one, there is no graphical representation of tactile sensations. Trademark registries are typically visual and auditory marks. Thus, it leaves tactile marks without an easy means of documentation. Descriptions, 3D models, or electronic sensory files have been suggested as alternatives, but none have gained much acceptance.
The second challenge is the subjectivity of analyzing tactile marks. Tactile marks cannot be objectively analyzed like visual and auditory trademarks. A person may have a different feel for a given mark. It may lead to inconsistent rulings on infringement cases and uncertainty among brand owners. Besides, there are few recognized tactile marks and the jurisprudence surrounding the same is minimal, which further makes it impossible to predict outcomes in court.
Commercial constraints also deter the registration of touch trademarks. The cost of registering and acquiring rights over these marks is costly, especially for small to medium-sized enterprises. Tactile trademarks can also be considered generic or functional when the textures of these marks are commonly used or part of the appeal of the product.
FUTURE OUTLOOK
Despite these barriers, tactile marks still offer broad areas of improvement and development opportunities. Technological progress, haptic technologies and artificial intelligence specifically, may find its way through towards more perfect description and assessing the tactile mark. These enable standardization in a documentable tactile sense in a coherent method, further enabling applicants to easily meet the qualifications to be included for registration.[5]
Consumer behaviours are increasingly preferring multisensory brands. Luxury, cosmetic, and food packaging goods have gradually integrated haptic qualities into their packaging to enhance consumers’ experience and, by this, create consumer loyalty. Accessibility and usability appear to be great areas for potential advancement through the incorporation of assistive technology and inclusive design within touch-based attributes.
Tactile marks, to benefit fully, require international harmonization of trademark laws. Organizations like WIPO may play a very important role in developing guidelines for the recognition and enforcement of tactile trademarks. Greater clarity in global standards will give applicants more legal certainty, which will encourage industry-wide adoption of tactile marks.[6]
Tactile marks represent a promising but yet insufficiently researched area within trademark law. They have the potential to develop more distinctive sensory branding channels. However, recognition and protection of trademark touch face considerable legal and practical hurdles. The difficulties in issues such as distinctiveness and non-functionality, and problems of representation, require an extremely cautious approach in order not to lose balance between innovation and legal certainty. The day after tomorrow holds much promise for the tactile marks. Technology will advance, and the interest of consumers in sensory branding is already present. However wide adoption and implementation depend on modernizing legal frameworks and international cooperation. The issues mentioned will be addressed to better support brands in their pursuit of deep connections with consumers through sensory experiences.
Author: DRISHTI RAWAT, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing
[1] Lukose, L. P. (2015). NON-TRADITIONAL TRADEMARKS: A CRITIQUE. Journal of the Indian Law Institute, 57(2), 197–215. http://www.jstor.org/stable/44782501
[2] Mishra, N. (n.d.). (PDF) registration of non-traditional trademarks. Registration of non-traditional trademarks. https://www.researchgate.net/publication/298463513_Registration_of_non-traditional_trademarks
[3] Pérez, M. B. (n.d.). “falling in love with a trademark from the sense of touch. main challenges of claiming a tactile …: Article: Chambers and partners. Article | Chambers and Partners. https://chambers.com/articles/falling-in-love-with-a-trademark-from-the-sense-of-touch-main-challenges-of-claiming-a-tactile
[4] supra, note 1.
[5] Pérez, M. B. (n.d.). “falling in love with a trademark from the sense of touch. main challenges of claiming a tactile …: Article: Chambers and partners. Article | Chambers and Partners. https://chambers.com/articles/falling-in-love-with-a-trademark-from-the-sense-of-touch-main-challenges-of-claiming-a-tactile
[6] Saloni Gupta, (2019, February 21). Position of unconventional trademarks in India. Trademark – India. https://www.mondaq.com/india/trademark/783188/position-of-unconventional-trademarks-in-india
