Smell, Taste, Texture? : Exploring the world of Unconventional Trademarks

Introduction

In the most normal of instances, a trade mark is registered either in the form of a word mark i.e. the name of the product/brand or as a device mark i.e. the logo of the product/brand. This is the usual manifestation of a trade mark, when registered in India.

However, in some rare instances there are some other peculiar forms of trade mark registrations as well. These are not the most conventional forms of registrations and are often accounted for a higher degree of proof due to their nature. These unconventional forms of registrations, are a new instance in India and the registry must derive a reliable jurisprudence to deal with them.

The purpose of this piece, is not to provide the procedure to register an unconventional trade mark as mostly each case requires a specific approach and a general procedure still remains vague. However, this piece might be considered a starting point to understand the very concept of unconventional trade mark and their rising prominence in trade mark jurisprudence globally.

An unconventional trade mark is unlike a normal word/logo mark as it tries to register some really unique characteristics of a product. These characteristics might be the smell, texture, colour etc. of the said product. These applications thus, require a different lens of judgment as the conventional norms to judge applications are inapplicable in such cases. It is also observed that an unconventional trade mark may have a higher degree of proof when compared to a traditional/conventional application.

Some of these unconventional forms of trade mark registrations are explained below:

1. Olfactory/Smell Trademarks

An olfactory trade mark is an instance wherein, the scent/smell of a product is usually registered. There are numerous issues that may arise for the registration of smell mark. This primarily revolves around the difficult task of proving a distinctiveness in scent as the reception of smell may differ for different people. In various instances, an olfactory registration may occur after the chemical formula is produced on paper to prove distinctiveness. Irrespective of this task, there have been numerous instances wherein such registrations have been carried out. For example: a company has registered the smell of fresh mown grass for their tennis balls in the jurisdiction of the European Union. While, a few companies in England have also registered the smell of their products.

The Indian jurisprudence on Olfactory trademark registration is still in its infancy with Sumitoro Rubber Industries recently filing a smell mark with the registry.

1. 3D/Hologram Mark

In a Hologram mark, a mixture of images and colours are used wherein numerous images may be layered over an another which ensures that the original mark is only visible from a certain angle. This makes the registration of such a mark incredibly difficult, as it is difficult to reproduce the Hologram on 2-D paper. Thus, companies registering a Hologram are often incapable of doing so as what they intend to register is often misrepresented in front of the registry. Yet, inspite of the difficulties, there have been some examples of the registration for a Hologram such as the Hologram of the Glaxo Group being the most prominent example.

An example of a 3D/Hologram Mark

1. Texture Mark

In the case of a texture mark, the texture of a product, a product’s packaging may be registered as a trade mark. An imperative pointer here is the fact that the texture must be exclusive to the product and it must go beyond mere decorative perogatives. A meaningful association of the product with the texture must be proved and proving the same might be incredibly difficult. Texture yet again, might be extremely subjective as what might be of a soft texture for someone might not be the same for others. Yet globally there are instances where Texture trade marks have infact been registered. The Khvanchkara wine bottle’s velvet touch is an incredible example of a registered Texture mark.

The Khvanchkara wine bottle’s velvet touch

1. Colour Mark

In a colour mark, the colour of the product itself is registered. Colour marks are still comparatively common amongst other unconventional trademarks as it is easier to prove the same during the application process. Yet, sometimes the colour might be misrepresented when the application is printed as the exact colour might either turn milder or brighter depending on the printer’s quality. This however, is not common and does not frequently occur. An inherent issue with the registration of a colour mark is the fact that the ambit of its applications are incredibly broad. This is the reason why, colour marks are seldom registered however companies are free to protect the use of a particular shade, based on consistent use and history. For example in the United States, the Barbie Company has constantly protected the use of a particular shade of pink (Pentone 219C), due to their consistent use of the said shade for the last 50 years. However, they have been incapable of registering the same as a trade mark. The court carries a seasoned reasoning stating that the colour has a really broad ambit and exclusive use is thus, an impossibility. The similar instance has occurred with the prominent line of chocolates called Cadburry as well. Cadburry has been using a distinct shade of the colour violet (Pentone 2865C), which they have tried to register but have mostly failed due to the same reasoning that the court had in the Barbie matter as well. Yet both these companies have been able to protect the use of said shades through consistent use and history regardless of the registration status of the shades.

In India, however Colour marks are still considered to be a disputed jurisprudence. Most of the colour marks registered in India are considered because of a previous colour mark registration internationally. For example: The Colour mark of Deutsche was accepted because they had a prior colour mark registered abroad.

1. Soundmarks

Another instance of an unconventional trade mark is what we call the sound mark. Defined simply, a sound mark is a form of a registered trade mark wherein, a distinctive sound of a particular product may be registered. Out of all the mentioned instances, the registration of a sound mark is the most frequent. This is primarily because of the fact that it is comparatively easier to prove a sound mark when compared to a taste or a smell mark. A sound mark is distinct due to the inherent fact that a sound mark is a unique identifier of the company itself. It thus, also becomes easier to register as well. To register a sound mark, a graphical representation and the written description of the mark along with a MP3 file containing the sound must also be attached along with the application (not more than 30 secs uploaded on a CD, DVD etc).

There are numerous prominent sound marks that have already been registered. A really well-known example might be the Nokia ringtone. Sound marks have been registered in India as well, with ICICI Bank becoming the first major entity to register one. Other examples include the Four Note bell sound of Cisco or the Theme Song of the National Stock Exchange.

Conclusion

While unconventional trade marks are not a commonality in India. The implications of the same are far reaching. Soon enough, we shall start observing such applications in India as well considering the globalization of trade mark filings in India and the introduction new companies within the nation. The tribunals/courts must consider such applications with immense care as their decisions now will determine the path for such registration in the future.

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

References

1.      Gautham Balaji, Unconventional Trademarks: Can Sounds, Smells, Colours and other Non-Traditional Trademarks be Protected in India?, De Penning & De Penning, March 27, 2024, available at https://depenning.com/blog/unconventional-trademarks-evolution/.

1. Rachna R. Kurup & Nimita Aksa Pradeep, NON-CONVENTIONAL TRADEMARKS IN INDIA: THE WHAT, THE WHY AND THE HOW, E- Journal of Academic Innovation and Research in Intellectual Property Assets (E-JAIRIPA) Vol. 1 (01), Dec 2020, pp. 131-148.
2.  Gautam Doshi, Explained: How India registered as many trademarks in four years as it did in the previous 75 years, September 04, 2021, Scroll.in, Available at https://scroll.in/article/1004500/explained-how-india-registered-as-many-trademarks-in-four-years-as-it-did-in-the-previous-75-years.
3. Taste as an Unconventional Trademark, Maheshwari & Co., January 18, 2023.

5.      Swati Mehra, Exploring the Realm of Non-Traditional Trademarks: An Indian Perspective, August 14, 2024, Academike, Available at https://www.lawctopus.com/academike/exploring-the-realm-of-non-traditional-trademarks-an-indian-perspective/.