Non-conventional trademarks are those trademarks that does not come under the category of conventional trademark like mark which includes letters, numbers, logos description by picture, signs or other elements which are the combination of such product. It does not comply with the 2D structure as they cannot be graphically represented.
Different types of conventional trademarks:
- Smell Mark: In the case of Ralf Seidman v German Patent Office, registration regarding this smell mark was rejected by the Registrar and it was stated that the graphical representation is necessary for a trademark to be registered. The European Court of Justice explained that the smell can be registered if it is described in such a manner that it shows the distinctive nature of the product.
Also, in case of R v John Lewis, application was filed for the registration of smell or essence for furniture items. The court held that such an oral description for smell was not appropriate in order to make the graphical representation.
In the case of Re Celia Clarke, an application for registration of Trademark was filed for the fragrance of some flowers in order for the embroidery process. The court in this case distinguished the fragrance as it is not a very important characteristic of every product but the fragrance for goods like perfume spray fragrance plays a fundamental role in the product.
Many countries still not concern the registration of smell makes but many countries like Australia and France allows the registration of smell marks.
The following authorities do not provide protection for smell marks:
- EC Directive
- Community Trademark
- Sound marks: In case of Shield Mark v Joost Kist, the case was regarding the musical and nonmusical sound marks and the relevance of graphical representation in respect of sound marks. The court held that for musical sound the essential feature will be the detailed notation of the music where all the notations regarding the pitch and the durations and other relevant factors are present. In respect of nonmusical sounds such as of a cock crowing was not sufficient enough to be registered.
Case of Metro Goldwyn Mayer Corporation– the registration for the sound of a Lion roaring was applied before the registrar which was rejected. But the same trademark was allowed in the United State where in the court held that sound marks can be effective trademarks when this sound in the minds of the audience later on connect with the source that might be eligible for the registration.
Examples in India: Yahoo yodel, the registrar allowed the registration to the ICICI bank for this sound mark from the notes that form the jingle.
The following authorities do not provide protection for sound marks:
- EC Directive
- Community Trademark
- Taste mark: Taste marks are treated as same to that of smell marks. Only the application of flavor marks is functional as it needs to be accessible to the other competitors in the market.
Example: peppermint flavor of Colgate for adults and bubble gum for kids.
Flavors can be generic as they are generally used by different producers only specific for different flavor are protected than the similar ones.
Case: Eli Lilly: the company applied before the registrar for the registration of artificial Strawberry flavor in medicinal products.
The court held that in general trademark what is Mark can be registered but in this case it was not allowed because the medicinal companies added these artificial flavor in order to substitute the displeasing taste of medicines. If the same is allowed to register, then this will have put the customers freedom and customers are not going to recognize the taste of strawberry as a trademark but only as a process to substitute the taste of medicine.
- Shape mark– it is provided under section 9(3) of the trademarks act wherein the registration of the shape mark is not allowed if the product falls in the following 3 categories:
- Emerges from the kind of the product itself.
- Is important to get a technical output
- Provides additional value to the product.
Example: In zippolighter, the shapes of Zippo lighters at same but the design is different. Zippo lighter has shaped mark because it qualifies the three test necessary for a product to get shape mark:
- Shape is not necessary for the product to function.
- Shape was not required in order to produce a technical result.
- Shape does not add any value to the product.
Case: Phillips v Renington: Facts: Philips wanted to have shape mark for their razor as the competitors were using the same shape which was creating confusion to the consumers.
The Court held that the face plate of the razor which was the shape does not fulfill the criteria under section 9(3) as it was used for the technical purpose where the faceplate stretches out the skin and it is not vimiscal in nature. Therefore, the court did not allow the shape mark to the Philips Company.
- Color mark– can be of two types:
- Single color
- Combination of different colors
Case: Libertel Group BV v Benefit Trademark Office- the issue was that whether single color can be registered. The court held that the representation office product shall be clear and accessible. The court in this case rejected the orange color to be registered as a trademark.
Heidelberger Bauchemie– the issue was related to the combination of two colors for registering as color mark. The court held that in order to get registered for the combination of colors it must be done systematically and in a uniform manner.
Provisions relating to non conventional trademarks:
- S.2(1)(m) of T M Act- it states that mark includes the shape, package, combination of different colors.
- Rule 25(12)(b) of Trademark rules 2002- it states that in order to get a registration for the trademark, it needs to be graphically designed.
- Rule 30- the graphical presentation by the mode of graphs should be appropriate and up to the satisfaction level of Registrar.
Sec 9(3)- it provide exception for the registration of Trademark as shape when it is of such a nature that it shows the output of the product from the characteristics of the good or it is done in order to to get a technical objective for where it provides some additional value to the product