Introduction
Trademarks serve as identifiers of the source of goods or services, traditionally encompassing logos, names, and slogans. However, as markets grow increasingly innovative, non-traditional marks have emerged, referred to as unconventional trademarks. These encompass non-visual and non-traditional marks such as sounds, scents, tastes, colours, textures, shapes, and motions. Their primary aim remains the same: to distinguish a product or service while ensuring consumer recognition. For example, the roaring lion of MGM Studios is an instantly recognizable sound mark. However, unconventional trademarks challenge traditional concepts of visual representation, leading to significant complexities in their registration, protection, and enforcement. Their essence lies in unique sensory elements that transcend conventional designs and embody distinctiveness in novel ways. As intellectual property laws evolve, accommodating unconventional trademarks becomes pivotal, highlighting their growing commercial and legal significance in a highly competitive and creative global economy.
The concept of unconventional trademarks has a relatively short history. Rooted in the expansion of brand identity, their evolution began in the mid-20th century, gaining traction with sound and colour marks. The Lanham Act in the United States allowed broader interpretations, recognizing sound marks as trademarks as early as 1978. A landmark case was the U.S. registration of NBC’s chimes. In the European Union, unconventional marks like smells and shapes were embraced through the EU Trademark Directive (1988). India followed suit, with amendments in the Trade Marks Act, 1999, paving the way for unconventional marks like sound in 2017. These developments reflect a global shift toward recognizing intangible brand identifiers, albeit with legal challenges.
Types of Unconventional Trademarks
- Sound Marks: A sound mark is a distinctive sound capable of identifying the source of a product or service. For example, the Intel “chime” and Nokia’s default ringtone are iconic sound trademarks. The Indian Trade Marks Registry formally recognized sound marks in 2017, with Yahoo’s yodel being one of the first registrations in the country.
- Colour Marks: Specific colours, when used distinctively, can qualify as trademarks. For example, the specific shade of Tiffany & Co.’s blue or the red soles of Christian Louboutin shoes have achieved recognition under trademark laws. In India, colour marks must demonstrate distinctiveness through consumer association, as established in the Christian Louboutin v. Pawan Kumar case.
- Shape Marks: Protecting the three-dimensional configuration of a product, shape marks are common for unique packaging or product forms. Toblerone’s triangular chocolate and Coca-Cola’s contoured bottle are classic examples. Indian courts have examined the distinctiveness of shape marks in cases like Gorbatschow Wodka KG v. John Distilleries Ltd., emphasizing the importance of non-functionality.
- Scent Marks: Rare and intriguing, scent trademarks involve the registration of unique fragrances associated with goods or services. The EU approved the scent of freshly cut grass for tennis balls, though such registrations face hurdles like difficulty in representation and subjective interpretation.
- Texture and Motion Marks: These marks protect unique tactile or motion-based identifiers. While less common, they reflect evolving brand strategies. For instance, a velvet touch packaging could be a texture mark, while the motion of a Lamborghini car door opening upward could be a motion trademark.
Despite these categories, the registrability of unconventional marks requires proof of distinctiveness, non-functionality, and compliance with representational standards. Jurisdictions differ in their approach to such marks, adding complexity to global branding strategies.
Challenges and principles in unconventional trademarks
Ambiguity in definition and underdeveloped instances:
The legal recognition of unconventional trademarks in India has progressed but remains fraught with challenges. The Trade Marks Act, 1999, does not explicitly define unconventional marks, leaving their interpretation largely to judicial discretion. For instance, while sound marks have been officially recognized since 2017, other types, such as scent or texture marks, face ambiguity due to representational challenges.
Limitations in representation and burden of proof:
India’s trademark regime requires graphical representation for registration, which poses a significant barrier for unconventional marks. This requirement has historically excluded scent marks, as scents are inherently non-visual. While global jurisdictions like the EU have embraced technological representations, such as chemical formulas or scent descriptions, India lags in adapting its legal framework to such innovations.
Another challenge lies in proving distinctiveness. Unconventional marks often lack inherent distinctiveness and must rely on secondary meaning—demonstrating that consumers associate the mark with a specific brand. This evidentiary burden is heightened for non-traditional marks. For example, in the Cadbury v. ITC case concerning Cadbury’s claim over the purple colour of its packaging, Indian courts demanded robust evidence of consumer recognition to establish distinctiveness.
Limitations with protection of characters of primary purpose:
A core limitation of unconventional trademarks lies in their inability to protect the primary functional features of a product or service. This restriction is essential to uphold principles of competition law, ensuring that trademark protection does not confer a monopoly over elements that are functional, utilitarian, or essential for competitors to use freely. The doctrine of functionality, deeply embedded in global trademark jurisprudence, strikes a critical balance between fostering innovation and preserving fair market practices.
Functional features are defined as those attributes of a product that contribute directly to its performance, efficiency, or utility. Allowing such features to be trademarked would effectively stifle competition, as it could prevent other businesses from using similar functional designs or attributes, even when necessary to compete effectively. For instance, a distinctive shape mark may be protected, but only if it is non-functional and purely aesthetic. This principle was emphatically addressed in the landmark U.S. Supreme Court case Qualitex Co. v. Jacobson Products Co., where the court underscored that a feature (such as colour) must not serve a functional purpose to qualify for trademark protection. Here, the court highlighted the importance of maintaining open competition by preventing functional monopolies through trademark law.
The Indian legal framework aligns with this principle, as illustrated in Gorbatschow Wodka KG v. John Distilleries Ltd.. In this case, the court examined the registrability of the vodka bottle’s unique shape. While it recognized the aesthetic appeal and distinctiveness of the bottle’s design, the court stressed that such a shape could not monopolize features that enhance the product’s utility or consumer experience. This ruling is pivotal in safeguarding fair competition, as it prevents businesses from using trademarks as a tool to block competitors from creating similarly functional or appealing products.
The overlap between functionality and competition law is particularly relevant in unconventional trademarks, where unique features like shapes, textures, or colours may blur the line between branding and utility. For example, in cases involving shape marks, courts carefully assess whether the shape contributes to the product’s effectiveness (e.g., ergonomic advantages) or serves solely as a brand identifier. Such scrutiny ensures that trademarks remain tools for distinguishing products rather than impeding innovation or restricting access to essential features needed by competitors.
By ensuring trademarks do not monopolize functional features, competition law and the doctrine of functionality safeguard public interest, promoting innovation and market accessibility while preventing intellectual property from stifling fair competition.
Furthermore, the overlap between trademarks and other IP rights, such as patents or copyrights, complicates the protection of unconventional marks. The Indian judiciary has attempted to navigate these overlaps, but ambiguities persist, necessitating legislative reform and clearer guidelines.
In conclusion, unconventional trademarks signify the evolving landscape of branding, offering businesses unique ways to stand out in competitive markets. Their distinct sensory appeal provides significant commercial value, yet their protection poses challenges, particularly in jurisdictions like India with rigid legal frameworks. By addressing limitations such as graphical representation, distinctiveness requirements, and overlaps with other IP rights, Indian law can align with global standards. These reforms would balance innovation with fair competition, ensuring trademarks protect brands without stifling market accessibility. As unconventional marks grow in importance, a robust, adaptive legal system is essential to foster creativity and equitable intellectual property practices.
Written by Vriti Singhvee, legal intern at Intepat IP.
