A Brief Study - Protection of Non-Conventional Trademarks in United States of America / European Union and India

Master of Laws (L.L.
M)
A BRIEF STUDY- PROTECTION OF NON-CONVENTIONAL TRADEMARKS IN

UNITED STATES OF AMERICA / EUROPEAN UNION AND INDIA
By Mohammad Arshad
Student No: Q09384448
January 2011 Batch
Tutor: Mr. Mark Wing

1
ABSTRACT
The range of of non-conventional trade marks include sign such as slogan, three
dimensional(3-D),sensory and gestures, actions and even holograms, these nonconventional mark proceed my whole piece work- PROTECTION OF NONCONVENTIONAL TRADEMARKS IN UNITED STATES / EUROPEAN UNION AND INDIA. It is
indicated that European Union has been more watchful in its response of these
marks. India is making god efforts and implementation procedure. But India stills a
go head. Whilst United States of America has always espoused liberal policy towards
the registration of above these marks. But question arise time-to-time when nonconventional trademarks content the fundamental tests required for securing
registration
so
why
these
non-conventional
trademark
could
not
acquire
registration. These different methods above context are arguable itself. The
ambiguity that they denote an irrational constraint on the accessibility of
Intellectual property assets in not reasonable as only those possessions which have
bushed all ways of Intellectual property rights protection could be supposed free.
Furthermore, graphic perceptibility ought not be. It is also not a sine qua non for
building brand connotation in the attentions of clients. Being a multi-sensory in
nature of non-conventional trademarks, also cater to consumers who are graphic fell
and uneducated.
ACKNOWLEDGEMENT
First of all I wish to thank the almighty ALLAH who bestowed me with
the light of wisdom through which I could complete this work.
I am deeply beholden to my supervisor Mr. Mark Wing for continuously
providing me intellectual stimulation. No words of mine can convey the
gratitude. I owe to his for his valuable suggestions, scholarly comments, and
unfailing and unstinted support. I consider myself lucky to have worked
under his supervision. I am greatly indebted to his for the great care with
which he has checked on statutory and judicial developments as well as
recent writings in the many fields and areas covered by this Dissertation.
Mr. Mark Wing has read all the parts and made many detailed comments
and criticisms, which have been invaluable to me. There have been
innumerable occasions on which I have benefited from his scholarship,
insight and generosity. My debt to this eminent scholar and teacher is great
indeed.
I am also grateful to my course leader Prof. Elizabeth Dear, who has
been a great help in timely completion of my work.
Mohammad Arshad
LL.M (Full-Time), FBSE University,
Southampton Solent Southampton
TABLE OF ABBREVIATION
B.C.............................Before Christ
C.F.R. .........................Code of Federal Regulations
OHIM ............................The Office for Harmonisation in the Internal
Market
Co.
..............................Co-operation
E.G. ...................................example
EC .....................................European council
ECJ .......................................European court of justice
Edi ..........................................edition
EEC ..........................................European Economic Community
EU ........................................... European union
Ibid ............................................ibidem
No................................................number
PTO ...............................................Patent $ Trademark Office
Reg. ................................................Registered
Sec. .................................................Section
TMA ...................................................Trade Marks Act
TRIPS ..................Trade-Related Aspects of Intellectual Property Rights
TTAB ..................................The Trademark Trial and Appeal Board

U.S. ....................................United States
UK .....................................United Kingdom
USPTO ..............................The United States Patent and Trademark
Office
v. .....................................versus
WIPO ...............................World Intellectual Property Office
TABLE OF STATUTES AND CONVENTIONS

Paris Convention, 1883
Madrid Agreement, 1891
Trademark Law Treaty, 1994
Lanham Act, 1946
The Community Trademark Regulation, 2006
EU Trademarks Directives,
UK Trademarks Act, 1999
The Trademarks Act 1995,
TRIP Agreement, 1994.
WIPO Treaty, 1996
Trademarks Rules, 2002.
The Trademarks Act, 1998
The Indian Trademarks Act, 1999.
CONTENTS
Abstract
Acknowledgment
List of Abbrevations
4-5
Table of statute
CHAPTER-1
13-19
INTRODUCTION
1.1
History
1.2
Underlying Concepts
1.3
Research Methodology:
1.4
Research Scheme:
1.5
Research Hypothesis:
1.6
Research Questionnaire:
CHAPTER-2
20-31
NON-CONVENTIOANAL TRADEMARKS- DEFINING THE SCOPE

2.1 Introduction
2.2 Problems in Registering Non-conventional Trademarks
2.2.1 Are Non-conventional Trademarks Distinctive?
2.2.2 Are Non-conventional Trademarks Capable of being graphically
represented?
7
2.3
Color Marks:
2.3.1 Color Depletion Theory

2.3.2 Functionality:
2.3.3 Shade Confusion:
2.4
Sound Marks:
2.4.1 Problems with Registering Sound Mark:

2.4.2 Scent Marks:
2.4.3 Graphical Representation:
2.4.4 Maintaining a Scent Mark Registry:
2.5.1 Functionality:
2.5.2 Distinctiveness:
2.5.3 Scent Confusion:
2.6 Taste Marks:
2.6.1 Depletion of Available Flavors
2.6.2 Creating a Distinctive Flavors
2.6.3 Sensory Perception Issues:
2.6.4 Meeting Application Requirements:
2.7 Motion Marks:
2.8 Shape Marks:
2.8.1 Functionality Test for the Shape Marks:
2.9 Feel Marks:
2.10 Conclusion:
CHAPTER- -3
32-43
PROTECTION OF NON-CONVENTIONAL TRADE MARKS IN USA

3.1
Introduction:
3.2
Colour Marks Protection:
3.3
Sound Marks:
3.4
Smell Marks:
3.5
Taste or Flavour Marks

8
3.6
Motion Marks:
3.7
Shape or 3-Dimensional Marks:
3.8
Touch or Feel or Tactile Marks:
3.9
Conclusion:
CHAPTER-4
44-66
PROTECTION OF NON-CONVENTIONAL TRADEMARKS IN EU

4.1
Introduction:
4.1.1 Basic Legal Framework for Trademarks Protection:

4.2 Color Mark Protection
4.2.1 National Legal Regimes of European Union Member States
4.2.2 Directive and Regulation regarding the Community Trademark:
4.2.3 What is the perception of European Court of Justice
a) Graphical Representation:
4.3
Sound Trademarks:
4.3.1 Graphic Representation:

4.3.2 Sonograms:
4.4
Scent Marks:
4.4.1 Graphical Representation:

4.4.2 Cases Example on Registration of Scent Marks:
a) The Chanel:
b) Sumitomo Rubber Co.
c) Unicorn Products
d) Vennootschap
e) John Lewis of Hungerford plc.
4.4.3
Criticism on Approach for Graphical Representation by ECJ:

9
4.5
Flavour or Taste Marks:
4.6
Motion Marks:
4.7
Shape or 3-D Marks:
4.7.1 Functionality and Distinctiveness:

4.8
Touch or Tactile Marks:
4.9
A Touch is not Functional:

A Touch Mark is Distinctive:
A Touch Mark is More Than Decorative:
Conclusion:
CHAPTER-5
67-84
PROTECTION OF NON-CONVENTIONAL TRADEMARKS IN INDIA

5.1 Trademarks:
5.1.1 Introduction:
5.1.2 TYPES OF TRADEMARKS
SERVICE MARKS:
COLLECTIVE MARK:
1. Collective Membership Mark
2. Collective Trademarks and collective Service marks
CERTIFICATION MARK:
TRADE DRESS:
5.1.3 Definition of Trademark
5.1.4 Salient Features of New Indian Trade Marks Act 1999
5.2
Status of Non-Traditional Trademarks:

5.2.1 Colour:
10
5.2.2 Shape
5.2.3 Sound:
5.2.4 Other Non-Traditional Trademarks:
5.3
Existing Position:
5.4 PROTECTION OF NON-CONVENTIONAL TRADEMARKS IN INDIA

Distinctiveness:
Non-functionality:
Registration Standards:
5.5 Conclusion:
CHAPTER-6
85-92
COMAPRETIVE ANALYSIS, CONCLUSION AND SUGESTIONS

6.1
Comparative Analysis of the Different Countries:
6.1.1 Comparison on the Basis of Graphical Representation Requirement:

6.1.2 Comparison on the Basis of Colour Trademarks Protection:
6.1.3 Comparison on the Basis of Sound Trademarks Protection:
6.1.4 Comparison on the Basis of Scent Trademarks Protection:
6.1.5 Comparison on the basis of other Non-conventional Trademarks
Protection
6.2
Conclusion:
6.3. Suggestions
BIBLIOGRAPHY
93
11
A BRIEF STUDY- PROTECTION OF NON-CONVENTIONAL TRADEMARKS IN

UNITED STATES / EUROPEAN UNION AND INDIA
CHAPTER-1
INTRODUCTION
All of us observe, fragrance,flavour,touch and hear them.We can even store
our firewood in them,feed our dog with them,sit on them,clean our pool with
12
them.They are all examples of products having identity of non-conventional

trademarks.1It is new way which would have brands to go beyond sight and
sound to reach patrons all through fragrance,feel and flavour,covering all the
five sense.At this time most of the consumers recognize a variety or brand
not just by its name and infamy but also the demonstrative attachment that
they have towrds the particular brands.Pleasing to the artistic sense of the
consumer has become one of the preliminary objectives of all businesses. 2It is
the gurantee of ammazing good to come.This is accurate cause that the
concept of trademarks came out.Where there is thing about the concept of
the trademark is diferent kind of symbol,mark,sign which is used by an
individual person or firm and other legal identfication of the products or
services to consumers which trademark shows uniquness itself. 3A trademark
can be described as symbol placed on, sign. 4According to United Kingdom
Trademark Act of 1994, a tardaemark as a sign capable of being represnted
graphically which distinguishes the goods or services? 5
1.1 HISTORY
An ancient time,the use marking to established his owns,there are number of
products still indicates that they have own rights.For example,Bison painted
on the walls of the Lascaux Caves in Southern France contains marks that
scholors say indicate ownership.In aroud 5,000 years B.C these paintings were
1
Gilson, J.,andGilson , A (2005) Protecting Nontraditional Trademarks.

[Online]. Available http://www.brinkshofer.com/files/141.pdf
[accessed on 25 Febuary2012]
2
Roth, E. M, (2005).Something Old, Something New, Something Borrowed, Something Blue: A New
Tradition In Non-traditional Trademark Registrations. [Online]. Available :
LexisNexis Liberay.[accessed on 4 December 2011]
3
Kostopoulos (n.d.)Procuring Patent&Intellectual Property.
[Online]. Available :http://www.kostlaw.com/index-3.html [accessed on 12 January 2012]
4
Hart,T.,Fazzani,L & Clark,S.(2006).Intellectual Property Law.4 th
ed.NewYork:Palgrave,p.81
5
Section1 of TMA 1994
13
made aparellel marks were foudd around 3500 B.C. in Middle East. 6All such
type of things especilly seals are showed that who built certain things.All the
ancient Greeks,Romans,Chinese and Egyptians made different kinds of stamps
or seals which indicated their claim of ownerships.Aprt of these inventions,
such things are not only indicate their rights of ownership but also they
indicates their values and quality of marks. 7At first time in Europe,nearly in
Middle age,they began using marks to indicate name those who made.At
beginning Bell was amomg the firstly gripped this practice,other makers were
also follwed this.When first time added water marks then people wanted to
know who made that particular work as paper sheet.The Bakers Marking Law
in 1266,they used stamps which was passed by English government.This above
law is called earlist law as for Trademark protection.The first case was
produced before lower court in England in 1618.The case was that a
mafacturer produced high quality clothes while a competitor who produced
low quality cloth,so Court of Law broght an action and after that this case
was known to be registerd firs case as on Trademark protection 8,which is
known as Southern v.How9.
At same time Thomas Jefferson viwed the particular laws on trademark in
1791, because of a dispute over sailclothe marks.But apart of this efforts
Johnson, D (n.d.) Trade Mark, A History of a billion dollar business.

[Online] Available: www.infoplease.com/spot/trademarks1.html
[accessed on 2 January 2011].
7
Kenneth,L. Port (n.d.) On Nontraditional Trademarks.

[Online] Available: http://ssrn.com/abstract=1564230
[accessed on 8 January 2012]
8
Johnson, D.(n.d.).Trade Mark, A History of a billion dollar business.
[Accessed on 2/1/2011].
9
Southern v How [1648] 79 Eng.Rep. 1243
14
there was no particular legislation was passed except some states .In the
1870, there was first federal trademark passed.
1.2 UNDERLYING CONCEPTS
Before going to start above given work it would be very pertinaent to
uderline some essential ingredients of the Trademark.According to TRIPS,
Trademark is a symbol,sign or any combination of sign, competent of
distinctive goods or services of one undertaking from
those of others
endevours.It shall be capable of consistuting of trademark.
10
Another side
,the Indian Trademark Act of 199 declared the word mark as follows, the
word mark as include that a brand, label, name, signature, word, device,
heading, letter, shape of goods, combination of colours, packaging and any
combination therof.11If we look in context of conceptual term,the word
mark, logo,brand are used sometimes interchangebale with the term of
Trademark.It
is
very
widable
that
Trademark
includes
name,signature,label,color,device,word,letter,shape
goods,smellscombination of colours, which is
of
very dsitinctive goods and
services one to others business.But must not forgotten that it
shall be
graphical repersentation and along with must be involved to goods or services

for it is registered.12 A question raise that if a tardemark has not been
registered,some terrotorial jurisdictions offer protection for the business,
goodwill or good reputation,bind to unconventional or unregistered
trademarks through the tort of passing off.A remedy is granted through
10
Article 15(1),TRIPS.
Section 2(1)(m).
12
Mishra,N. (2008). Registration of Nontraditional
Intellectual Property Rights, 13(1) pp. 43-50.
11
15
Trademarks,
Journal
of
passing of where there a trade or business has been going without

registration of trademark for long time and same time another copmpetitor
using same or similar brand.It is very that if a mark is registerable, it would
be much easier for a businessman or trader.Because they can easily
demonstate their rights before court of law.There is no obligations under
TRIPS agreement if a person has not registered his marks,could not claim.
1.3 RESEARCH METHODOLOGY
My piece of work on, A brief study-Protection of non-conventional trademark
United States/European Union and India which has been devloped mainly
using the doctrinal method of research.It gathers the collection of data by
way
of
extensive
research
from
both
primary
and
secondary
sources.International Treaties, European Legislation, Convention and Treaties

would be as primary source.Auther has developed his work through books
which is used as secondary source of this work. Through the print journals,
published articles and through internet sources it is been more trusted, it is
recommended by the Lexis Library and other online data bases that the
scholorary writing on this topic is preferred.
1.4 RESEARCH SCHEME:
This piece of research work is bound to the learn the scope of protection to
non-conventional trademarks.It has divided into six chapters.
INTRODUCTION is the First Chapter.This chapter gives a brief overview of
the non-conventional trademarks and also does relate his hypothesis,
research methodology and research scheme.
NON-CONVENTIONAL TRADEMARKS-DEFINIG THE SCOPE
is a second
chapter.This chapter deals with the basics of trademark protection and also
16
discussing what are the main shortcomings to register of the non convention
trademarks.Could non-conventional trademark be secured or protected like
other marks?
PROTECTION OF NON-CONVENTIONAL TRADEMARK IN USA is identified as
third chapter of this piece of work.This chapter covers with the area of
protection of th trademark law in USA.Aouther has tried to discuss some
differnet concepts regarding smale,color and shaps etc.All examples of the
mark protection have been given below.
PROTECTION OF NON-CONVENTIONAL TRADEMARK IN EU is fourth
chapter which discuss with scope protection in EU/UK.It has also discussed
the basic trademark law of th United Kingdon/EU.This chapter also gives a
whole idea and judgments of the European Court of Justice.
PROTECTION OF NON-CONVENTIONAL TRADEMARK IN INDIA is creat as
fifth chapter and which gives awhole idea of the Indian law regarding
Intellectual property law especially TradeMark Act,1994.The main features
this chapter is that it has given number precedents which given by Indian
Courts and Apex Court of India.
COMPARATIVE ANALYSIS, CONCLUSION AND SUGGESTIONS is last chapter
this above given work.This chapter does comperative analysis of these
different countries scope of protection mark. At last, author concludes this
topic with valuable suggestions for better protection of the trdaemarks.
1.5 RESEARCH HYPOTHESIS:
Analyzer has very strong pointed out that the protection of non-conventional
tardemark concept is very clear in US/EU.Although the trademark law is
parallel developed in both countries.Furher he has also proved that US law on
17
trademark is more liberal than EU/India.There is no doubt EU has very strong

recommendations regarding registertation of trademark law.He also looks to
findout that the development of law for the protection of different kinds of
marks in India that is still in a developing stage.But except all these
difficulties,India are playing their best efforts to protect these marks.
1.6 Research Questionnaire

Through this piece of work, the reseracher is very keen to findout the
answers the followings questions.
1. What does mean non-conventional marks?
2. What are the main difference between conventional and nonconventional trademarks?
3. Is it easy task to register non-conventional trade marks before World
community office?
4. Are
non-conventional
trademarks
capable
of being
graphically
represented?
5. Does trademark currently protect color or scent signs?
6. What are the basic laws on Trademark in US/EU and India?
7. Is it really thing that EU has strong recommendations tha US/India?
8. What are steps being taken by Indian government to protection of nonconventional trademarks?
9. How does World Intellectual Property Orgnization (WIPO) work to
protect of non-conventional trademarks?
18
Chapter-2
NON-CONVENTIONAL TRADEMARKS-DEFINING THE SCOPE
2.1 INTRODUCTION
A trademark is a sign or badge of origin that is used to identify certain
goods
and
services
enterprise.Trademarks
as
those
fall
into
produced
by
specific
categories,namely
person
conventional
or
and
unconventional trademarks.The range of non-conventional trade marks
19
include sign such as slogans,three-dimensionel(3-D),shapes,colours,sensory

and gestures,action signs and even holograms.13
Non-conventional trademark is also known as non-traditional trademark.Such
type of trademark does not relate to a non-existing,traditional kinds of
trademark which is generally very hard to register.Where there is a concept
of non-conventional trademark is dynamic. 14 A well known judgment of the
case of Philips Electronics NV v.Remington Consumer Products15,
Appeal of Court stated: The function of trademark is to identify the trade
orgin of goods and services.The function is important to protect both traders
and cnsumers.16
17
13
Denoncourt, J. (2012). Intellectual Property Law.3rd ed. London: Routledge, p.144

Suri, N.(n.d.)Single Colour Mark: Its registriblity in the United States and the United Kingdom.
[Online] Available:
http://www.legalserviceindia.com/articles/collour_marks.htm [accessed on 24January2012]
15
Philips Electronics NV v Remington Consumer Products [1999] RPC 809.
16
Hart,T.,Fazzani,L & Clark,S.( 2006).Intellectual Property Law.4 th
ed.NewYork:Palgrave,p.83
17
IPpro Inc. (2009).Non-conventional Trademarks.[online].Available:
http://www.ipproinc.com/admin/files/upload/4753d4e7e2a6e89536dfae3af6d3097c.
pdf
[accessed on 21 April 2012]
14
20
Above symbols are recognised as world wide. There is no hegitation to say

that trademark is protected under common law.But issue is that, Is a color or
ascent capable of acting as a sign or a badge of origin by Common law.There
is no statutury definition as to what is meant by the term sign.In
Wrigley/Light Green18 ,the notion of a sign was interpreted as being very
broad but some smells are not recognized by Court of Law such as strawbery
for csmetic.19For an instance, A firm has been registered and got for the pink
color for material to insult, athread of floral scent, and for live telicast or
broadcasting apatterent of chimas,which has been protected by an act. 20At
this time all things are registerable such as sign of visual,tactile,audible and
olfactory.There is no doubt that a termendous potential for non-conventional
trademarks,but apart of these things no advantage being taken.The most
effective body to protect the trademarks whether conventional or nonconventional,is WIPO.21Under Trademark Act,1994, Trademark must be a sign
capable of graphical representation and mark must be very distinctive,not to
be descriptive.22It means that sound,color and scent should be capable of
trademark registration but these obligations are still hide.Does trademark
currently protect color or scent signs? The answer to this questions depends
on
whether
the
unconventional
marks
are
capblae
of
graphical
representation.In the recent years there have been great difficulties to

protect unconventional marks such bas colurs and scents.23There are number
Wrigley/Light Green [1999] ETMR 214
Article base (n.d). Trademarks articles. [Online] Available: http://www.articlesbase.com/trademarksarticles/ [accessed on 2 January 2012]
18
19
20
Karki, M.M.S,(2005) Non-traditional Areas of Intellectual Property Protection: Color, Sound, Taste,
Smell, Shape, Slogan and Trade Dress, Journal of Intellectual Property Rights, 10(6) , pp 499-506.
21
Ibid.
22
Section 1(1)
23
Denoncourt J.(2012). Intellectual Property Law.3rd ed. London: Routledge, p.144
21
difficulties to register of non-conventional trademarks because of the strict

conditions need to registeration of trademarks.So we may discuss as below. 24
2.2 Problems in Registering Non-Conventional Trademarks

Where there is thing about the registration of the non-conventional
trademarks,it must be capable of distinctive goods or servicies of one from
those of other persons or form.Alnogwith mark should not be similar which is
prohibited any act of protection of trademark.The use of word capable
presumely is intended to apply in the context of applications to register new
trademarks that have not yet been put to use commercially.25
2.2.1 Are Non-Conventional Trademarks Distinctive?

The first requirement to register any trademarks must be capable of
distinctive.So it is a fandamaental charactersitic of trademark.Section 1(1)
requires it and s 3(a) forbids registration without it. 26In the case of
Electrocoin Automatics Ltd v Coinwrld Ltd27 , Court stated that the sign
must be capable of identifying the goods or services as originating with
particular undertaking and distinct from others.A mark may be distinctive by
nature or by nurture.Those marks are icapable of distinctive so could not be
registered,these things have been already stated in the Trademark Act
1994.28In the context of Indian Act,smell can not be registered, for a
24
Gilson, J and Gilson, A (2005) . Protecting Nontraditional Trademarks.

[Online] Avaialble:http://www.brinkshofer.com/files/141.pdf
[Accessed on 25/02/2012]
25
Bainbridge, D.I (2009). Intellectual Property.7 th ed. Harlow: Pearson Longman,
p.639
26
Trade Mark Act, 1994
27
Electrocoin Automatics Ltd v Coinwrld Ltd [2005] ETMR 31.
28
Section 3,4 and 5.
22
instance, Asian paint had to rfused on that ground all smells are common to
all paints. 29In particular,the absolute grounds for refusal under section 3(1)
(c) and its proviso explore different situations in which sign may lack
distinctive character and be denied registration.Conversely,where evidence
shows that a sign operates as a distinctive mark,it will be generally be
possible to register the mark.30The difficulties comes when a firm fill an
application
to
register
their
untradtional
tardemarks
as
subject
matter.Another question raises that how does a person effectevely level out
and contest a sound,texture using words,scent? 31All tardemarks issues and
disputes come under International treaties like as Madrid Protocol.In
regarding of unconventional tardemarks, many countries have their own law,
regulations and dirictives which protects under these. 32There are number of
marks are given under which come into non-conventional trademarks.
2.3 Color Marks

It is very true that when electronic things has come into existence,the mark
of color is being increased in its own importance whether it is increasing with
adevertsing or industrial promotion.All industries are arounding into colours
because any one choose or prefer his color combination whether they are
represnting their culture,climate or area.For an examples, mostly in
European countries,people used black color,a red color asymbol of peace in
29
Marsoof,A(2007).The Registrability of Unconventional Trademarks in India and Srilanka: A

Comparative Analysis, Journal of Intellectual Property Rights, 12(5) , pp 497-506.
30
Firth, A., Lea,G.,Cornford,P (2005). Trade Marks Law and Practice.2 nd ed. Bristol:
Jordans , p.32
31
Majumdar,A. Sadhu, S.(2006), The Requirement of Graphical Represenatability for Non Conventional
Trademarks, Journal of Intellectual Property Rights, 11(5)
pp .313-317.
32
IPpro Inc.(2009).Non-conventional Trademarks.[online].Available:
http://www.ipproinc.com/admin/files/upload/4753d4e7e2a6e89536dfae3af6d3097c.
pdf
[Accessed on 21 April 2012]
23
China.33It is true that it will not do simply to desribe a color vaguely by

averbal description such as red or pale yellow or even horizontal
alternating green stripe being 8mm wide,the purple stripe being 6mm
wide.The immedate objection is that it doesnot tell us enough about the
color or its shade.Such description lack precision and make it defficult for
others to predict whether their use of color is likely to infringe such a
trademark if it is registered without further information about the color.34
The trademark of color comes under non-conventional trademark,it must be
a unique single color to identify its origin or services as well as commercial
way.Around the World some jurisdictions are allowed to register the mark of
color but still there is no uniformity or stututury provison to protect single
color mark.An important decesion had been taken in the Uruguay Round of
the GATT-TRIPS aspects of Intellectual Property Rights,which as follows:
a mix of colors shall be qulifiying for registraion as tradearks but signatories
may take registeriblity depend on distinctivness aquired through use and
maember may require,as condition of registeraion,that sign be visually
percitible. 35
2.3.1 Color Depletion Theory

This theory advocates that by registering one color as a trdaemark,the chocie
of colurs left to other manfacturers will then be more limited.The most
33
Suri.N.(n.d.)Single Colour Mark: Its Registrablity in the United States and the United Kingdom.
[Online]. Available:
http://www.legalserviceindia.com/articles/collour_marks.htm [Accessed on 24 January2012]
34

p.642
35
Ladas Parry (n.d.). Trademarks: Sounds, Colors and Scents. [Online] Available:
http://www.ladas.com/Trademarks/MakingSenseTM
[accessed on 22 February 2012]
24
famous case Diamond Match Co. v Saginaw Match co.36 regarding color
depletion theory which is pronounced by U.S court of law denied that the
protection of color dimond match is void.Another important case,Campbell
Soup Co. v Armour&Co
37
which also had delivered by U.S court of law, if
such colours increasing obiviously the list of colurs soon out.

It seams to see above both cases that the target of standarding free
availabilty of colours served to restrict protection of color tardemarks.
2.3.2 Functionality
The another important doctrine single color rule is a functionality which
provides that if a agreed item or product is compulsory to the advantage of a
product or where a single color is the biological,environmental color of a
product then any one colud not acquire exclusive rights such as above
features given.38In the case of Ives Laboratories Inc. v Darby Drug Co.The
court was held that Ives Laboratries could not claim or brought an action
against Darby Drug co. because of the color had a functional purpose. 39
2.3.2 Shade Confusion Theory

This crux of this theory is that colours can not function as trademarks
because colours and their different shades can easily lead to confusion.This is
valid point not merely for infringment procedures but also when consumers
are choosing goods prior to purchase.Using only slightly different shades of
one colour as trademarks is likely to creat confusion in the mind of
consumers.40At recent time we can take an example of color tarde marks
Diamond Match Co. v Saginaw Match co. [1942] U.S. 674
Campbell Soup Co. v Armour&Co [1949] 175 F.2d 795,3rd Circuit
38
Thomas,S., A.(1991).Creating Protectible Color Trademarks, 81 Trademark Rep. pp285-88
39
Ives Laboratories Inc. v Darby Drug Co [1981] 601 F.2nd 631
40
Denoncourt J.(2012). Intellectual Property Law.3rd ed. London: Routledge, p.146
36
37
25
such as color megneta for T-mobile, ornage for the mobile opertot orange
and purpule color for cadbary chaclates.
(Example for Shade Confusion theory)
2.4 Sound Marks

There are very authentic things, which may reproduce one of which is
sound creation. A person may create easily so sound marks are most
memorable non-conventional trademarks. As source identifiers for goods
or services in commence, sound marks can function as trademark or
service mark. According to the World Trade Organization Agreement on
Trade Related Aspects of Intellectual Property, A trademark as any sign,
or any combination of sign, capable of distinguishing the goods or
services of one under taking from those of other undertakings 41. Still
TRIPS does not confirm sound as trademarks. So it is very need
recommendation to the states that should be registration a sound as
trademarks. Now one of important question still remain to answer
whether sounds marks are protected as trademark is left up to
discretion of each TRIPS signatory. If we look towards International
41
Moorhead (1988) Trademark Law Revision Act of 1988. [Online] Available:

http://ipmall.info/hosted_resources/lipa/trademarks/PreLanhamAct_100_HR_4156_Hearing.htm
[accessed on 30 March2012]
26
brands such as Yahoo! , Nokia, Intel and Deutsch Telkom, there is no

global uniformity to registration a sound trademarks. 42
2.4 Scent Marks

In the foreseeable future,scent or olfactory marks also encounter parcticle
difficulties carving out amonopoly and they are unikely to be registerable. 43In
the case of Re clarke44,as a US court of law this tardemaks,plumeria scent
added to shewing thread was registered.There is no doubt that marks
registerabilty of scents are most tricky.A practicle difficulties of clearifying
such type of mark to determine where conflicts may exists,In the field of
jurisprudence very limit.It is not also very welcoming in the International
market place.Whether the TRIPS Agreement,or EU Directive or the CTMR to
protection for scent marks.While there are number of jursidictions have
recognised the protection of sound marks but not scent of marks 45
2.5 Taste Marks
In the regaring of taste,taste should be protected as a trademark.But
question is raise that whether flavour is capable of distinctive this one as
trademark.As mark flavour can not be registered until it is operated.In other
thing is that it should be fundamentally distinct or would be recognised by
consumer as trademark.
There is nothing obligations to registered non-conventional trademark as
flavour. 46 It is fundamental work of trademark iis to gurantee the recognised
42
US Government (n.d) [Online] Available: http://www.usembassy-mexico.gov/bbf/le/iprbook.pdf

[Accessed on 24 March 2012]
43
Denoncourt J.(2012). Intellectual Property Law.3rd ed. London: Rutledge, p.146
44
Re Clarke, 17 U.S.P.Q. 2d1238(T.TA.B 1990).
45
Ladas Parry (n.d.). Trademarks: Sounds, Colors and Scents. [Online] Available:
[Accessed on 22 February 2012]
46
Compton E. A.(2009). Acquiring A Flavour For Trademarks: Theres No Common Taste In The World.
27
of the origin of the indicated creation or services to cosumer or finishing user

by enabling him or her distinctive that invention or service industries from
others of additional orgin.
2.6 Motion Marks
In some counties, there is strong recomendation in regarding moving image in
the category of a vedio, animation, logos and film clim.It is also known ad
moving marks, movement marks and animated marks.Regarding motion
image, a pictue is given below:
[Accessed on 12 March2012]
28
[Example motion image]47
The above image of Columbia motion trademarks {TM 1975999 UPSTO} is

exposed as delivered of , A mage which is moving of flash light which rays
of light are emitted against a background of sky and clouds.The word
COLUMBIA seems across the top running through the torch and then
cercular rainbow appears in the encircling the light.
2.6 Shape Marks

47
Hammond,M (n.d).The Empire never ended.[online].Available:

http://marshallhammond.hubpages.com/hub/The-Empire-Never-Ended
[Accessed on 3 April 2012]
29
Another important non-conventional tardemark is shapemarks,such type of

marks
may
be
3-dimensional
submission
of
the
product
itself,the
architectural design of store or sign-post,for instance,MacDonaldsGolden

Arches.This type of shape may be include such as a label or tag etc.Act of
1907,the shape of the Coca-Cola bottle was registered.It is very dynamic
thing when US patent office has registered different shape marks whether it
come 3-dimensional marks or simple marks.In the office of U.S Patent and
Trademark Office registered Apple Inc. ,3-dimensonal shape of iPad
player,these shape marks very unique for new consumers to identifies shape
marks. 48There are some examples of shape trademarks as Coca-Cola bottle
which is given below:
2.7 Conclusion
In this way I am reach in this concuson,nonconventional trademarks are
leading to undesirebale restraint in free intellectual property means.So here
48
Orozco, D. and Conley.(2008).Shape of Things To Come.

[Online]. Available: http://sloanreview.mit.edu/executive-adviser/2008-2/5026/shape-of-things-to-come/
[Accessed on 10 February 2012]
30
first
stuck
question
whether
they
should
be
registered
or
not.Generelly,there are certain condition to be fulfil for protection of

trademarks.Due to multi dimensional approaches each country has different
law as well as local laws apart from there are number of treaties and
agreements that find to achive many typyes of protection of trademarks.For
instance,Madrid sytem,Paris Convention Trademark law treaties.While of non
convention of trademark,such standadization initititatives do not normally
apply.If we look towrds the the developed countries just like United Staes of
America,
has
already
started
to
incoporate
into
free
agrrements
misliciounous provisons regardinging registration of sound marks and

olfactory marks.
In the upcoming chapters, the research discusses the protection available to
these different non-conventional trademarks from different jurisdictions.
CHAPTER- -3
PROTECTION OF NON-CONVENTIONAL TRADE MARKS IN USA
31
3.1 Introduction:
In the United States still they are following such identifirers which
known as logo, graphical symbols, names and acronyms. If we look back trade
mark protection in the United States we found that, they were very reseverd
for marks. Gradually United States of America has spread trademark
protection to other things of marks that are not easily seen as source of
identifiers49.
According to Lanham Act on Trademark, a trademark includes nontraditional marks by not excluding them.The term includes any symbol,
name, word, or device, or any combination thereof that identifies and
distinguishes the services and goods of one person from those of another and
indicates their sources.50 It is quite clear that there is no such statutory
provision or public rules, to prohibit non conventional trademark including,
sound, scent, motion, three dimension tactile marks and flavour. But the
same thing applies for smell, shape, colour, and word. 51Apart of this
flexibility there may be some difficulties arise in a case when a person wants
to register his/her trademark then in that circumstances the United States
Patent and Trademark Office does require legitimacy.
3.2
Colour Marks Protection:
49
Zadra Symes,L (n.d).Sounds, Smells Shapes and Colors Protection and

Enforcement of Non-Traditional Trademarks in the U.S. Available [Online].
http://vipo-online.org/wpcontent/uploads/2011/10/Sounds_Smells_Shapes_and_Colors-tm-protection-US.pdf
50
15 U.S.C. 1127
51
Qualitex, 514 U.S. at 164.
32
We all know that every trade mark having a distinct colour design or logo
which attracts the consumers of having a distinct quality from others.
Moreover, colours can be easily integrated into the advertising and marketing
campaigns. It is said that multi-colour and single colour trademarks are
common of all non-traditional trademarks, so that there is no need of nontraditional label. For instance, the robins-egg blue colour is being used
for boxes, bags and catalogues of a jewellery store suggests that the
consumers would soon received an well-designed jewellery from reputed
company named Tiffany, whilst a delivery truck shows that chocolate
brown is a parcel on the way and would be soon delivered by United Parcel
Service.
The Supreme Court in Wall-Mart Stores, Inc. v. Samara Bros, Inc52,
positively finished the debate on the issue of distinctiveness for colour
trademarks. According to the court that, single-colour trademarks are not
distinctive inherently, so that it must show of secondary meaning. But on the
other hand Multi-colour trademarks are issue to the same pattern. So to this
regard whenever applicants want to choose colours for their mark then they
should avoid the functional colours. Most common instances in this regard
encompasses that black colour for outboard boat motors which lessens the
existing size of the motor, particular colour used for medicines because
through this they may recognize a kind or quantity of that prescription, and
using the colour white for cutlery handles may helpful in assessing the
cleanliness of the goods.
52
Wall-Mart Stores, Inc. v. Samara Bros, Inc U.S. 205 (2000) 165 F.3d 120
33
After the existence of colour trademarks there are number of practical and
policy issues have been emerged. In the earlier times, trade mark protection
was not available to colours, so to this regard the registrants in fear of using
the colours by others they would reduce the available colours.
Advocates argued in this regard that courts wouldnt able to know actually
who the real owner of various shades of colours is. These issues first were
decided in the Supreme Courts Qualitex Co. v. Jacobson Prods. Co, Inc, 53 in
which the court said that the legal system is able of measuring similarities
and differences among colours and there is rare chance for registrants of
depleting all available colours. It is unfortunate that, whilst the Supreme
Court has already said in the above paragraph that legal system is efficient to
resolve the issues concerning to shades of colours but the courts opinion in
this matter may not be the authentic. In lawsuit, the basis of test is
whether a sensible person would be likely to be confused between the
parties those who uses two similar colours. Suppose if a registrant wants to
register a shade of yellow for one of his goods, and on the other hand,
another registrant uses a bit different shade of yellow for a similar product,
Indeed, there is no matter of shade of yellow another registrant consists,
because the latter registrant by using the shadow would likely creating
confusion in the minds of the consumers, so it would infringe the mark of
anothers party.
In view of that, the person who is the original registrant is having a

monopoly over the colour yellow for its products or services. On the other
hand, it is essential to note that this monopoly may be unlikely extended to
53
Qualitex Co. v. Jacobson Prods. Co, Inc 514 U.S. 159 (1995)
34
accessories, which are colour coordinated for matching a trademark owners

mark.
The complexity in enforcing colours cannot be end by using the fact finders
assessment in regards to the likelihood of confusion. Even though the
previous rulings are also unable to enforce until the courts verify the
Suitable limits for the partys use of unlike shades of colour. Now days this is
become a huge problem because some courts still include or using the
scientific colour detection techniques, like the Pantone Matching System for
enacting injunctions. Whenever any party wants to register their colours then
they should have kept in mind the issues which have been discussed above. 54
3.3
Sound Marks:
Among non-traditional trademarks, probably sound marks are most

memorable; a memory bank consists of hundreds songs, melodies and
combinations of tone. These must be cable of identifying and distinguishing
goods and be able to register if the consumers intended correlate them with
the source of goods.55They can include musical tones, or sung words, spoken
animal noises or any other sound. It is surprising that more are not
registered.
Martens,L.,Garcia,A.(2009).Shapes,Sounds and Smells,Non-traditional mark

explored.Avialable[Online]. http://www.fr.com/files/News/4df146c1-5a9e-4180-a322044249844e1c/Presentation/NewsAttachment/22dc19eb-0c31-47f1-a07c0446a3d32a88/Martens%20Garcia%20TM%20World%20Shapes%20Sounds%20and%20Smells%20%20Non-traditional%20trademarks%20explored%20November.pdf
55
TMEP 1202.15.
54
35
Sound is emotionally direct, as Lindstrom notes. 56 Consumers can be

affected by Music in restaurants and stores, such as the pipedin sound in
Disney World can change or improve the mood of visitors.
The first registered as a service mark for radio just after passage of
the Lanham Act and later re-registered for television, the well-known mark is
a sequence of chime-like musical notes which are in the key of C and sound
the notes G, E, C, the G being the one just below middle C, the E the one
just above middle C, and the C being middle
C. . . .57
During the twenty-first century, there are various logos such Intel audio logo
for computer software and hardware, integrated circuits, microprocessors
and semiconductor devices have become widely popular and registered.
Following is merely just an example of other sound marks registered under
USPTO:
For notifying consumers of weather alerts, there is a software series

of five chirps similar to the chirping sound of a cricket (Reg. No.
2827972)
For Medicated transversal patches, plasters, pads, gels and sprays for
the temporary relief of the aches of rheumatoid arthritis, the word
HISAMITSU sung over the sound of four musical tones, e, a, e, and f
sharp. The first three notes being quarter notes and the final note
being a tied quarter and half note (Reg. No. 2814082)
56
Reg. No. 0916522. See also Reg. No. 0523616 (registered April 4, 1950)
Reg. No. 2315261 (The mark consists of a five tone audio progression of the notes
D FLAT, D FLAT, G, D FLAT and A FLAT.).
57
36
For watches, non-metal key chains, cookie jars and Christmas tree
ornaments and dolls, the sound of a childlike human giggle which
represents the Pillsbury Doughboy giggle (Reg. No. 2692077)

For canned and frozen vegetables, the sound of a deep, male,
human-like voice saying Ho-Ho-Ho in even intervals with each Ho
dropping in pitch (Reg. No. 2519203)

For automatic produce misting units for delivering a timed water mist
to fruits and vegetables in display cases, the sounds of thunder and
rain (Reg. No. 2203470)

For insurance underwriting services, the sound of a duck quacking the
word AFLAC (Reg. No. 2607415)
For beer, the sound of a howling wolf (Reg. No. 2207874).the graphic
representation is as follows:
58
For Commercial and residential building construction; building repair;

installation of siding, the sound of a kiss made when, for example,
one is blowing a kiss to another person, as exemplified in the sound
recording included with this application (Reg. No. 2524758)

EU registered the nokia signature. The graphic symbol of the tone is as
follows:
58
IITRADE(2008).Image.[online].Available: www.iitrade.ac.inlast [accessed on 12 Mrch2012
37
59
There is no database in the UPSTO except few, so Clearing sound

marks, will be challenging because mostly are in used but their owners didnt
attempt to register them and there is no common law for database of sound
marks.60So, sound marks may be the most complex non-traditional, even
though the most identifiable, marks to clear.
Before registering any sound one must have Search the USPTO TESS
database for sound or melody or music or musical or noise or
audio according to the marks description for confirming that these marks
have been registered or applied for. Outside that database, however,
clearance of a particular melody or sound is not an easy task. For registration
and enforcement songs and melodies are good candidature. 61 For instance,
Sweet
Georgia
accompanying
Brown,
the
Harlem
Globetrotters
theme
song,
by whistling and finger-snapping, is being registered for
entertainment services for basketball exhibitions140 and is been connected

with stars of yore such as Sweetwater Clifton, Curly Neal and the famous
barnstorming team for years. And part of George Gershwins masterpiece
59
60
61
Ibid
Cf. II.C. for more on clearing non-traditional trademarks and using the USPTOs TESS database.
Oliveira v. Frito-Lay, Inc., 251 F.3d 56, 61, 58 U.S.P.Q.2d 1767 (2d Cir. 2001)
38
Rhapsody in Blue is become, by substantial and consistent advertising from

long ago, closely linked with United Air Lines.
A different or unique Sound marks may be registered on the main
Register without showing the evidence of distinctiveness, but sounds that
shows any resemblances or imitation commonplace sounds or those to
which listeners have already been exposed under different conditions must,
in respect to be register, be comply with evidence that consumer or future
consumers distinguish the sound and correlate it with a distinct source. 62
3.4
Smell Marks:
For the first time in 1990 the United States Patent and Trademark
Office, and Appeal Board decided In re Clarke, ordering the Patent and
Trademark
Office
for
issuing
the
trademark
registration
for
fragrance.63 While the Supreme Court increases the concept of trade dress
protection or trade mark, but there are small number of applicants who want
to apply for registration of scent marks. May be there is misconception in the
minds of the manufacturers that, fragrance marks are unrealistic in their
application, or may be that the manufactures intentionally ignoring the
benefits of fragrance marks, so fragrance marks are underutilized. Indeed,
scent marks that courts considered functional are currently not openly
protected under the Clarke ruling or trademark law, the liberal nature of
modern trade dress law provided that the courts have to accept wider range
62
63
In re General Electric Broadcasting Co., Inc., 199 U.S.P.Q. 560 (T.T.A.B. 1978
17 U.S.P.Q.2d (BNA) 1238 (T.T.A.B. 1990)
39
of these registrations, particularly in respect of the colour mark case,

Qualitex. Co. v. Jacobson Products Co.64
3.5
Taste or Flavour Marks:

Unlike sound and colour marks, flavour marks are not familiar or
popular still in the marketing community. Lindstrom admits that it is quiet

typical task to incorporating the sense of taste into a brand which itself is
tricky but the brands that itself incorporate taste may be undoubtedly
create a quiet strong platform for a brand. 65 Some people may be able to
identify the distinctiveness of the flavours of juicy fruit gum, Coca-Cola or
Gatorade, but the manufacturers are not willing or rushing for registering
those flavours.
To clear the mark there is need of searching the USPTOs database,
then, but it will not give important results in this respect; so for that one
must has to explore the industry to decide whether similar or identical
products are flavoured. To this regard, a flavour application is presently
pending before the USPTO, which was filed on November 18, 2002, for
seeking registration for antidepressants in quick-dissolving tablets where
the mark is an orange flavour. 66 In that case, it was happened that
registration was denied by final Office Action on June 6, 2004, explaining
that the mark was a standard quality of the goods that cannot be supposed as
Qualitex. Co. v. Jacobson Products Co. 514 U.S. 159 (1995)
Ser. No. 76467774
66
Clarke(1993).Issues in the Federal Registration of Flavors as Trademarks for Pharmaceutical
Products, U. Ill. L. Rev. p.105
64
65
40
a source indicator and also that the mark was functional one because it
covers the medicinal taste of the pharmaceutical product.
3.7
Shape or 3-Dimensional Marks:

Under the Lanham Act67 the product which is having three-
dimensional shapes and product packaging are protected as trade dress,

which means the whole image of a service, or even a product. Trade dress
encompasses product description such as size, design, colour, shape, labels or
graphics, or service character such as architectural features, retail dcor,
menu and layout.68 Enforcement and Protection of trade dress presently
completely acknowledged by the courts and trade dress is quickly becoming
less of a non-traditional trademark. But, in case where trade dress is
functional, it could not be protected.
3.8
Touch or Feel or Tactile Marks:

The sense of touch can be relaxing, healing or stimulating. For a
brand, the textures and feeling of a product may play with a consumers
emotions and can also relate straight to his or her observation of quality. 69
Till date, in the United States there is no such known enforcement or
application activities happened for tactile marks. Interestingly, some of the
innovative marketers willingly endeavour to defeat the problem of
functionality and want to register the impression of bubble wrap for a soft
drink, the feeling of fur for a perfume or the sense of sandpaper for a
computer printer.
Lanham Act, 1946

Gilson & LaLonde, 2 Trademark Protection and Practice, 7.02[7]
69
Lindstrom at 26-28, 86-88.
67
68
41
3.9
Conclusion:
Non-traditional trademarks create not only challenges but also
opportunities. The Qualitex70 anything goes doctrine has had an enormous

impact on the USPTO, which has generally interpreted the Supreme Courts
message and granted numerous registrations for types of trademarks that are
not always initially recognized as marks. As a means of strengthening their
intellectual property rights and enlarging their trademark portfolios,
businesses would do well to scour their products, services and advertising and
marketing programs for non-traditional marks to be registered. Nontraditional marks can stir the imagination, and many (like marching ducks,
duck calls and scented exhaust fumes) are just plain funny. If consumers in
fact see these as trademarks they are registrable and protectable, although
future courts and the Trademark Trial and Appeal Board will have to agree.
Such marks can be or can become strong, memorable and long-lasting.
70
Qualitex. Co. v. Jacobson Products Co. 514 U.S. 159 (1995)
42
Chapter-4
Protection of Non- Conventional trademarks in EU
4.1 Introduction
Due to globlization and unfications of law trade may become very easy but
dififficulties arises when national laws conflicts to each other.But it is very
possitive to europe that European Court of Justice has power or apex
terroritorial jurdiction of European Union. The law of registered trade marks
was the subject of som unsatisfactory and difficult in the Uk , in particular
the TradeMarks Act,1938 which now repealed and replaced by Trade Marks
Act,1994. Anothoer intreseting thing is that Act of 1994 was harmonosing of
interppretatation to Directive, and have toether generetaed and impressive
body of case law.71 There are different trademark standards might also
obstruct functiontioning of common arcade.European Union has created to
71
Bainbridge,D.I(2009).Intellectual Property.7 th ed.Harlow:Pearson Longman,p.625
43
laws on trademarks protection the First Council Dircective(Directive) and

Community Trade Mark Regulation. 72The Directive needs European Member
States to adpat harmonize their respective trademark law to comply with
Directives provosions.The directive defines what may be registered a
trademark, 73 the grounds for refsing or invalidating a trademark,
74
and the
rghts conferred by trademark.The Regulation instittuted a unitary trademark

sytem in which a single registeration of Community Trade Mark garnts
exclusive and rights to the protection holder simontensouly all European
Countries.
The European Court Of Justice takes both ultimate appeals and refrences on
points of European Law from National Courts, nd and also ultimate appeals
from the European trademarks offices after these have passed throug an
intermediate court.
4.1.1 Basic Legal Frame work for TradesProtection:
The TRIPS has defined, any combination of signs, or any sign may be
registered as trademark while a condition may be imposed that mark be
Visually perceptible. 75There are certain conditions has imposed to qualify
for registeration which has been given below:
1. Sign must be capable of being represented graphically. 76
72
European Union(2012). Countries.Available [Online].http://www.europa.eu.int/abc/index_en.htm#

73
A trademark may be any sign capable of being represented graphically, particularly words, including
personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such
signs are capable of distinguishing the goods or services of one undertaking from those of other
undertakings.art. 2.
74
Such grounds include: signs which cannot constitute a trade mark, non-distinctive marks,
descriptive marks, marks designating geographic origin, generic marks, marks contrary to public policy,
and deceptive marks.
75
TRIPS, art. 15.1.
76
EC Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member
States relating to trade marks, art. 2 ("Trademark Directive"); EC Council Regulation No. 40/94 of 20
December 1993 on the Community Trade Mark, art. 4 ("Trademark Regulation").
44
2. Must be clear, precise, self- contained, easily accessible, intelligible,

durable and objective. 77
3. Be, distinctive i.e., guarantee to consumers the identity of one
4. product source from others; 78
5. Not deprive the trade or the public of signs that the directive or
Regulation implies should be free to all.79
So it is clear that EU has strong recommendations regarding protection

of Trademarks though may not sure about non-conventional
Trademarks.
So further want to discuss different type f non- conventional trademarks
with EU judicial pronouncements. Any mark, including a sound, scent,
or color mark, is register able, as long as it is capable of graphic
representation and distinguishes the good or services of one undertaking
from the goods or services of another.80 In the European Union
Graphical Representation is not only a technical requirement for
registration but it embodies the principle of precision. 81NonConventional
trademarks
register
ration
depends
on
graphical
representation, which ensures that the scope and nature of the mark
are clearly outlined.
77
C-283/01 Shield Mark BV v. Kist [2004] Ch. 97 at 55 (ECJ).

Case C-206/01 Arsenal Football Club plc v. Reed, [2002] (ECJ).
79
C108&109/97 Windsurfing Chemise [1999] E.T.M.R. 585 (ECJ).
80
[2004] E.T.M.R.33
81
[2004] E.T.M.R. 99
78
45
4.1.2 Directive and Regulation regarding the Community Trademark:

The member states of the Europea Union Should be in accordance with the
principles of European law whether it may adoption,interpretation and
application
of
the
national
laws.82
Alongwith
European
Community
law,principally the regulation of trademarks is governed by first, Directive

89/104/EEC of the council, to approximatelly
The laws o the Member States Realating to Trade Marks 83, Council
Regulation Number 40/94 on the Trademark of Community. 84Both of law
very basic source and apply as to European Union Trdae Marks. Furhermoe,
national trade marks ar controlled mainly by these marvelous nationational
judgments and subordinate by national legislation.According to article 2 of
the European Directive has defined, Trdaemark as those symbols or signs
that can be an piece of graphic representation,such as
word,phrases,drawings,letters or numbers,as long as such signs meet
condition that they distinct the product or services of a trader from those of
other trader.85
4.1.3 What are the observations of European Court Of Justice?
Time to time the European Court of Justice has developed its own
perceptions and given suggestion.But question when arise, a controversy
regarding the protection of color has been become subject of debate.The
well known judgment Libertex Group v Benelux Merkenbureau
82
86
In this
Jaume Pellisd Capell & Maria Teresa Solanelles Battle, La Protecci6n del Color (nico como Marca en
el Derecho Comunitario, REVISTA DE DERECHO MERCANTIL 1101,1123-1124 (1998).
83
Council Directive 89/104/EEC of 1989
84
Council Regulation (EC) No. 40/94 of 20 December 1993
85
Art.2 European Directive
86
Case C-104101, Libertel Groep BV v. Benelux - Merkenbureau [2003 ].ECJ
46
case the Court of Justice was held that Colours d not have the integral
ability to interconnect exact such as the the origin or the source of the
product or services. 87
(A) Graphical Representation:

One of the important case regarding graphical isuues, Heidelberger
Bauchemie Gmbh88 ,European Court of Justice and held that cmbination of
color could not be regestered until the graphic representation portrayard the
colours in proper way and sytemetic arrrangement associating, and shoul d be
in preexist and identical way.Another side Court of law has also warned that
if applicant may register to protect his/her color comninations an random or
unstipulated way89 consumer has to unable to identifiy indicating color so
such type of registration could not protect competitors and authorties with
the precision or uniformity needed to determine the scope of the trade
maark holders rights.90It is concusive way that acolour combination not
87
id
Case C-49/02 Heidelberger Bauchemie GmbH [2004] E.T.M.R. 99. (ECJ).
89
The E.C.J. noted that [t]he mere juxtaposition of two or more colours, without shape or
contours, or a reference to two or more colours in every conceivable form, . . . does not
exhibit the qualities of precision and uniformity required by Art. 2 of the Directive . . . .
90
The E.C.J. stated: Such representations would allow numerous different combinations,
which would not permit the consumer to perceive and recall a particular combination,
thereby enabling him to repeat with certainty the experience of a purchase, any more than
88
47
posed in sytemetic way could not establish a trademark under Article2 of

TMD. In the Case of Sieckmann v Deutsches Patent-und Markenamt91, the
ECJ has given landmark decision on graphical representation of nonconventional trademarks.Fact of the case as an application filed for sign
described that was Balsamically fruity with a slight hint of cinnamon was
based on chemical Methyl Cinnamate.This application was simple convoyed
with an odour sample and chemical formula of smell.92
Further the court of law ruled that there is no criteria or satsicatory to
requirement of graphical representation and it is not way by scientific
formula,deposting a sample of odour, desription writtent in words or any
combination these methods.
5.3
Sound Trade Marks
Whilist it is now the position that the use of conventional musical notattion
is appropriate for rpresenting music used as trade mark,confirmed by the
court of justice in Case Shield Mark BV v Joost Kist93 how other sounds may
be represented grapphical ramains unclear.In Shield Mark, a whole range of
sound marks were in issue,including a musical stave including the first nine
notes of Fur Elise, by ludwig van Beethoven,descriptions of music using E,
D#,E,B,D,C,A one with refrence to being played on a piano,another was
they would allow the competent authorities and economic operators to know the scope of
the protection afforded to the proprietor of the trade mark.
91
Case C-273/00 Sieckmann v Deutsches Patent-und Markenamt [2002].ECJ
92
Butler, A. (2008) The smell of ripe strawberries: Representing non-visual Trademarks
Intellectual
Asset
Management
.Available[Online].
http://www.iammagazine.com/issues/article.ashx?g=4339d6d7-b7f6-4d57-9823-d4c55de588ff
93
C-283/01 Shield Mark BV v Joost Kist [2005] 1 C.M.L.R. 41
48
denomonation Kukelekuuuuuuuu and finally, sound mark consisting of

cookrow94.
5.4
Scent Marks:
Scent or all factory marks also encounters practical dificulties curving out
of monoploy and they are unlikely to be registrable in the foceable future. In
the case of Sieckmann95 where an application for the community trade mark
describe the structural formula of a pure chemical for a particular scent and
stated that samples of the scient might be obtained from the local
laboratries. Scient was also described verbally as (balsamically fruty with the
slight hint of cinnamon). But same time the german patent office has
disapproved the application on appeal the german patent qoute brought an
action that scents could, from an abstratct point of view contitute an
appropriate means of distingushing wether an olfactory mark was capable of
being graphically represented it refered the question to the european court
of justice. The ECJ was asked to decide wether they requirement for
graphical representation could be satisfied by the chemical formula, a
description, a deposit or combination of these elements.96 Any trademark to
register need to fulfil requirement as capability of being represented
graphically97 Tardemark 1994 defines, a sign shall not be registered if it
consists exclusively of the shape which result from the nature of the goods
themselves98 A description of origin purpose of a trademark
94

p.644
95
Case C-273/00, Sieckmann v. Deutsches Patent- und Markenamt[2003] E.T.M.R. 37(ECJ).
96
Denoncourt, J. (2012). Intellectual Property Law.3rd ed. London: Routledge, p.146
97
Art. 2 Directive 89/104/EEC
98
Section 1(1)
49
reimbursements customers by dropping the exploration prices that a

customer ought to be devote in result a preferred goods and services99.
4.5 Graphical Representation
Generally, olfactory marks may allow registering in European Union. But a
strict graphic representation requirement very compulsory impedes their
registration. 100 In the Case of Sieckmann v Deutsches Patent-und
Markenamt101the court was held that neither representation by a chemical
formula, a written description, a scent sample,nor a combination of these
methods satisfied graphic representation requirement.102
4.6 Cases: Example on Registration of Scent Marks

31st October 1994,the UK Trademark Act was enforced with a UK register
office. In Europe there are many office recognized e.g the Uniform Benelux
Register Office, the OHIM had covenant with requests on olfactory
trademarks in the topical past. But only few requests have been efficacious
so far.
The Chanel: The most important example regarding non-conventional
trademark is Chanel type of perfume, which was registered as Chanel No-5
as olfactory trademark in 1994. 103 It is described its perfume as a scent of
99
Lionel Bentley, Brad Sherman. (2009). Intellectual Property Law. (Third Edition).
New York: Oxford University Press.
100
Case C-273/00, Sieckmann v. Deutsches Patent- und Markenamt[2003] E.T.M.R. 37(ECJ).
101
[2003] E.T.M.R. 37
102
Case C-273/00 [2003] E.T.M.R.37(ECJ).
103
Schaal,C.(2003).The Registraion of Smell Trademarks in Europe:another EU Harmonisation
Challenge.Available[Online].http://www.inter-lawyer.com/lex-e-scripta/articles/trademarksregistration-smell-EU.htm [Accessed on 27/04/2012]
50
aldehydic-floral fragrance product with an aldehydic top note from

aldehydes,bergamont,lemon an nerolo an legent floral middle note, from
jasmine.
Rose,lilly of the valley,orris and ylang-ylang and sensual feminine note
from sandal,cedar,vanilla,amber,civet and musk.So it is also being known
by the written name No.5.
104
But Chanel application failed because of
the above said second requirement that the shape of the product shall
not result from the nature of the good itself. 105
(a) Vennootschap
The case of Vennootschap onder Firma Senta Aromatic Marketing led to a
much more contentious argument regarding the registration of smell
trademarks. A firm pertained to register the smell of fresh cut grass for
tennis balls and it was primarily disallowed by the inspector on the basis
that such explanation was not a graphical symbol in means of Art. 4 of the
olfactory mark.106
The candidate pleased to the Second Board of Appeal of the OHIM
contending that the Community Trade Mark Regulation does not eliminate
olfactory marks from registration. Therefore, the question that arises
whether a third party was assumed clear sufficient evidence that it would
comprehend and have an unequivocal awareness of what was being
appealed.107
104
id
Id, pg- 51
106
CTMR
107
105
51
On February 11th 1999 the Board of the OHIM cancelled the challenged
pronouncement, dispatched it to the superintendent and held that The
smell of freshly cut grass is a different smell which everyone directly admits
from knowledge. The scent or fragrance of freshly cut grass repeats them of
spring, or summer, manicured lawns or playing fields, or other such
enjoyable understandings.108 The Board is pleased that the report
delivered for the olfactory mark required to be itemized for tennis balls is
suitable and conforms with the graphical symbol obligation of Article 4
CTMR.109
This decision flashed a shrill debate regarding the graphical symbol as it
was suspected that the Second Board of Appeal did not stretch ample held
to its consequence.110 The presence of a smell to somebody is continuously
a particular substance the smell of fresh cut grass can seem inversely to
inhabitants than to a agriculturalist throughout crop. Consequently, the
explanation of a smell only in texts is that ample personal, that it couldnt
be adequate for an detached symbol conferring to Art. 2 of the Directive,
Art.4 CTMR, Sec.1 (1) of the Trade Marks Act or Art. 8 (1) of the German
MarkenG.
Moreover, there is a difficult of the linguistic. Whilst telling a smell,
persons frequently mention to an item: a different scent odours
similar somewhat (an object); therefore, persons do not pronounce the
smell, but the item wherever the smell arises from. That is because there is
108
OHIM-Decision of the Second Board of Appeal, February 11th, 1999, 30 (3) I.I.C. 1999, p. 309, para.
Ibid, para-14
110
id
109
52
no strong and autonomous terminology that could be expended for the

explanation of scents.
This OHIM ruling was thus not recognized in the nonfiction. The
assumption that shadowed is that a smell couldnt be adequately existence
defined lone in arguments meanwhile that is too particular. 111
(b) John Lewis of Hungerford plc.
A contemporary example is that from 2000 of John Lewis of Hungerford
plc., in which the firm pertained to catalogue a mark in class 20 for
equipment and portions and furnishings so which contained of the smell,
aroma or essence of cinnamon. Judge A. James rejected the request and
held that he wished not to keep on the Seconds Board reasoning from
the Vennootschap onder Firma Senta Aromatic Marketing case. In any
happening, he contended that the smell of cinnamon was not as identifiable
or distinct as that of newly cut grass and that the explanation of the smell
of cinnamon can diverge extensively.
Above decision displays that in the recent past the benches have been
more unenthusiastic to catalogue a smell trade mark that is only being
signified in arguments.
4.4.3
Criticism on Approach for Graphical Representation by ECJ:
There are fairly a rare speeches or voices in the works that do respect the
Graphical representation of a smell as being imaginable numerous
tremendously erudite approaches of footage smells, furthermost notable is
the
111
gas
chromatography
or
id
53
high-performance
liquid
chromatography.112These methods can examine the volatiles assumed off by

the smell and the mechanical connection of the chromatographically parted
vigorous constituents could be more talented by influential approaches alike
mass spectrometry, nuclear magnetic resonance or infra-red and ultraviolet
spectroscopy.113 The coupled GC-MS method e.g. could provide both, the
attentiveness and biochemical affinity of the vigorous apparatuses of an
unidentified combination.114
A best key is viewed to be a mixture of the gas chromatography, a
depiction of the olfactory mark in texts and a orientation to the industrial
progression.115
An alternative method is the symbol of the operational method of
unpolluted materials. According to the Law of Definite Proportions a
composite continuously entails of the similar essences with the similar massproportions. Thus, a clean biochemical ingredient could be recognized
precisely agreeing to its basic method and is reproducible at any time.
A comprehensive basic method of clean constituents is so adequate
for the prerequisite of graphical symbol under the Directive. 116
The finding of the European Court of Justice, presiding that a
biochemical method in not adequately exact and strong, must consequently
be condemned the previous approaches accomplish the condition of
graphical representation. The question, whether as to a usual person would
112

113
id
114
ibid
115
Challenge.Available[Online].http://www.inter-lawyer.com/lex-e-scripta/articles/trademarks-registrationsmell-EU.htm [Accessed on 27/04/2012
116
Article 2
54
comprehend the method and have an awareness of the smell, has nothing to
do with the overall probability of a representation in means of a graphic. 117
Furthermore, there are numerous lawful questions that could not be
clearly assumed by usual people. Nonetheless, common directness is
nevertheless decided similar if the guidance of a solicitor wants to be
required. A concerned person may appropriately inquire a patent
representative for the sector of a chemical method.
Moreover, the latest trademark procedures and particularly olfactory
trademarks tolerate a great latent of pioneering goods and services. So, a
growing European Union Internal Marketplace also desires an pioneering
explanation of the law. Henceforth, the graphical representation of smells
must sequence place inside the aforementioned approaches and Art. 3 (1.e.)
of the Directive ought be understood wider and not pertain to fragrances.
To accomplish, merely a insufficient olfactory trademarks have been
recorded meanwhile the new requirements that were executed giving to the
Directive 89/104 EEC appeared into force. Apart from the perfume cases
that cannot be listed because of the prerequisite that the smell shall not
result from the kind of the goods itself, the graphical representation of the
smell still provides the most difficulties.118
4.5
Flavour or Taste Marks:

For some jurisdictions, only a musical notation on a stave may be
considered to adequately represent the mark. It was held that the seven
Sieckmann requirements were satisfied by musical notation if it is
117
118
id
Id
55
represented by a stave divided into measures and showing, in particular, a

clef, musical notes and rests whose form indicates the relative values and,
where necessary, accidentals (sharps, flat, natural). It is thus clear that,
unlike smells, sounds can be represented graphically and are regarded as
trademarks worth being protected. Taste marks (Gustatory) The SCT reports
that the graphic representation requirement was satisfied by using a
written description of the taste and an indication that it concerns a taste
mark but the hurdle of distinctiveness is even harder to overcome as are
assertions concerning functionality.
In the case of Eli Lilly, an application was made for the taste of
strawberries for pharmaceuticals, and was represented using a verbal
description..it was rejected by the OHIM stating that Any manufacturer is
entitled to add the flavour of artificial strawberries to those products for the
purpose of disguising any unpleasant taste that they might otherwise have or
simply for the purpose of making them pleasant to taste Moreover, the taste
is unlikely to be perceived by consumers as a trademark; they are far more
likely to assume that it is intended to disguise the unpleasant taste of the
product119 It was held that not only did the mark lack distinctive character,
but the verbal description was not sufficiently precise and did not satisfy the
Sieckmann requirements.
The application was predominantly refused on the grounds that a
gustatory mark cannot satisfy the criteria for graphic representation as
provided by Article 7 (1) (a). The reasoning applied in the now infamous case
119
Diwan,S.(2009)Emerging trends in intellectual property law: non-conventional trademarks ,

Available[Online] http://www.slideshare.net/shradha29/nonconventional-trademarks
56
of Sieckmann was once again adopted and thus a description in written words
of the mark does not suffice as graphic representation.
Furthermore the registration was refused on grounds of public interest
under Article 7 (1) (b) on the basis that the mark should be left available for
any trader wishing to make legitimate of it.
The application was further rejected as it was held that adding the
taste of strawberry to products, does not facilitate the function of
distinguishing the pharmaceutical preparations of one undertaking, from
those of another undertaking.
In the Benelux countries there have been a few taste marks such as
the taste of liquorice applied to the paper goods and printed matter. This
was represented using a written description. However, in light of Sieckmann,
it seems highly unlikely that a taste mark will be registered in the future.120
Flavour marks are generally problematic because consumers expect a
flavour when they orally ingest a product, whether intentionally added by
the drug maker or not. As such, flavour is an inherently weak source
identifier for orally administered pharmaceuticals or any other orally
ingested product.121
4.6
Motion Marks:
However, registration of taste marks seems highly unlikely in the
future if seen from the perspective of the Sieckmann criteria. Moving images,
holograms and gestures: The moving image can be a film clip, video, moving
120
121
ibid
Matheson,Anne,J. Justus,R.M (2009. Trade Dress Protection: Eye Candy.Available[Online].
http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=6f96c9cf-3975-4729a04d-2e8f2d271a75
57
logo for TV shows, etc. The UK has registered a moving mark for Kraft Foods
UK Ltd. The mark has a description which says: "The mark consists of the
three- dimensional shape breaking apart, as shown in the sequence of still
pictures attached to the form of application".
122
Kraft Foods UK Ltd. registered this moving image trademark (UK 228003)
for chocolate and chocolate confectionery.
The Lamborghinis doors are registered with the EU on the following
description: "The trademark refers to a typical and characteristic
arrangement of the doors of a vehicle, for opening the doors are "turned
upwardly", namely around a swivelling axis which is essentially arranged
horizontal and transverse to the driving direction.
122
Diwan,S.(2009)Emerging trends in intellectual property law: non-conventional trademarks ,

Available[Online] http://www.slideshare.net/shradha29/nonconventional-trademarks
58
The EU registered (CTM 1400092) the Lamborghini moving image trademark

for car doors opening and turning upward.123
One example of a registered hologram is CTM 2117034, which has the
explanation: The letter VF in white on blue spheres, the name VIDEO
FUTUR in blue on a black background". Mars BV has a registration in the
Benelux Trademark Register for a gesture of two cutting fingers. This gesture
is recognized as the commercial origin for TWIX chocolate. BX No. 520574.
124
4.7
Shape or 3-D Marks:

Three-dimensional marks, as far as the possibilty of registration goes,
are new form of trademarks in most European countries.They were

introduced only about ten years ago by the Trademark Harmonization
Directive for the Common Market.125
123
WIPO(2009).Smell,Sound and Taste-Getting a Sense of Non-Traditional Marks

http://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html
124
id
125
Pagenberg,J.(2004). Trade Dress and Three-Dimensional Marks. International Review of
Intellectual Property and Competition Law.7/2004.Vol.36, p.831
59
Article 4 of the Community Trade Mark Regulation defines signs of which a

Community trade mark may consist in a very wide manner, expressly
including the shape of goods or of their packaging. However, with regard to
such shapes, the Regulation in its Article 7(1)(e) introduces a, in comparison
with other signs, additional ground for refusal that has to be overcome when
seeking registration.126
This provision states that signs which consist exclusively of:
i.
the shape which results from the nature of the goods themselves;
ii.
the shape of goods which is necessary to obtain a technical result;
iii.
the shape which gives substantial value to the goods shall not be
registered.
Besides the fact that Article 7(1)(e) only applies to shape marks and
not to other signs seeking registration, Article 7(3) states that, contrary to
7(1)(b), (c) and (d), this specific ground for refusal cannot be overcome by
showing that the sign at stake has become distinctive. 127This clearly shows
that the grounds for refusal stated in Article 7(1)(e) are not concerned with
the question of distinctiveness. Shapes that fall under this provision must
rather be seen as not qualifying as trade marks at all. This follows from the
fact that such a sign cannot be registered, even if it fulfils the essential
function of trademarks, namely to guarantee the identity of the origin of the
trade-marked product to the consumer or ultimate user.128
126
Schulyok,F.(2010).The exclusion from protection of functional shapes under the trade mark
law
of
the
EU.Available[Online].
http://oami.europa.eu/ows/rw/resource/documents/QPLUS/network/universities/felix_sch
ulyok-lund_university_2010.pdf
127
Sandri,S and Rizzo,s.(2003)Non-conventional Trade Marks and Community Law. Marques,
Thurmaston, p. 3.
128
Case 102/77 Hoffmann-La Roche [1978] ECR 1139, para. 7.
60
4.7.1 Functionality and Distinctiveness:

According to the Court in Philips, Article 7(1) (e) in general and,
thus, also its second intend, concerns certain shapes which are not such as
to constitute trademarks and that this Article must be regarded as a
preliminary
obstacle
to
registration.129
It
follows
from
this
that
functionality and distinctiveness are two separate issues. 130 Hence, Article
7(1) (e) (ii), being a preliminary obstacle to registration, is not concerned
with distinctiveness at all. It is submitted that it is important to bear this in
mind when conducting a logically structured assessment of shape marks.
Under such an assessment it must first be established whether a shape
seeking registration falls under the ground for refusal of Article 7(1) (e) (ii)
and the question of distinctiveness only comes into play if this is not the
case. If, however, it is established that a shape falls under Article 7(1) (e)
(ii), it is unnecessary to investigate its distinctiveness as even highly
distinctive shapes cannot be registered if they do not overcome this
preliminary obstacle.
This clearly confirms the Court's holding that this provision must be
seen as a preliminary obstacle to registration and must, as already stated
above, be kept in mind when analyzing the registrability of a shape under
trade mark law.
It should be noted that, although the Court clarified that Article 7(1)
(e) (ii) is a preliminary obstacle to registration, this is not consistently
applied by the OHIM. This can, for example, be seen in the decision in
129
C-299/99 Philips [2002] ECR I-5475, para. 76.

J. Ch. Troussel and P. Van den Broecke.(2003)"Is European Community Trademark law getting in
good shape?. The Trademark Reporter. pp. 1066 -71.
130
61
Roxtec, in which the Board of Appeal investigated, first, whether the shape
in question fell under Article 7(1)(b) and then, holding that it did, stated
that it follows that it is not necessary to consider whether Article 7(1)(e)(ii)
is applicable as well.131
Examples of non-conventional trademarks would also include a shape
trademark recognized in Europe is the protection granted to Toblerone, a
company which manufactures chocolate bars with a distinctive triangular
shape.
In September 2010 the European Court of Justice ruled that the shape of the
Lego toy brick could not be protected by trademark registration. The shape
of the brick is as follows:
Article 7(1)(e)(ii) of the Council Regulation (EC) No. 207/2009 prohibits

the registration of signs which consist exclusively of the shape of the goods
which is necessary to obtain a technical result.
131
OHIM Board of Appeal, 15.9.2006, in Case R 554/2006-2 Roxtec, para. 33.
62
The European court ruled that the word necessary in article 7(1)
(e) (ii) still applies if it is possible to achieve the same technical result with
another shape.132
The court also ruled that the word exclusively refers to the essential
characteristics of the shape. Lego had claimed that their brick consisted of
other elements than the studs required for joining the blocks and did
therefore not consist exclusively of shape which is necessary to obtain a
technical result. The court ruled that the addition of non-essential
characteristics did not prevent refusal of the mark on the basis of 7(1) (e)
(ii).
This decision seems to end all discussion on the protection of the
shape under trademark law. It does not, however, mean that competitors are
entirely at liberty to copy the shape, as many countries also have common
law or tort remedies which might be applicable to such copying. The Court's
observed that Article 7(1) (e) (ii) is a preliminary obstacle to registration
should, therefore, be taken seriously. It follows that the question whether a
shape falls under that ground for refusal must always be addressed,
preferably and most logically as a first step, as assessing whether the shape is
distinctive is not necessary if it is held to be functional.133
4.8
Touch or Tactile Marks:
In the consumer packaged goods world, though, three main legal

challenges can prevent brands from trade marking tactile elementsand all
three must be cleared before touch mark status can be granted. A touch
Council Regulation (EC) No. 207/2009
D. T. Keeling, (2003). "About kinetic watches, easy banking and nappies that keep a baby dry: a
review of recent European case law on absolute grounds for refusal to register trade marks", 2, I.P.Q. , p.
131 at p. 137.
132
133
63
mark must: 1) not be functional; 2) be distinctive; and, 3) be perceived as an

actual trademark, not mere decoration or ornamentation. 134
A Touch is not Functional:
The requirement that a touch mark be non-functional prevents a brand

from acquiring trademark protection for a utilitarian product or packaging
feature. If the tactile quality of a package is essential to its use or function,
as in the case of an ergonomic handle on an orange juice container, it can
never be protected as a touch mark.
A Touch Mark is Distinctive:
To protect the tactile elements of its packaging, a brand must also prove
they are distinctive. They must either be instantly, inherently distinct, or
they must prove they have acquired distinctiveness over time. Something
would be considered inherently distinct if it can be said that consumers
automatically and immediately associate the feature with the company or
brand that put the product out.
135
A Touch Mark is More Than Decorative:
Merely decorative and ornamental tactile elements that are not as basic
and necessary as to be functional can be protected as trademarks, provided
they are not purely decorative and further provided they have acquired
distinctiveness. To obtain protection, the bottom line for decorative and
ornamental features are they must stand out and be perceived and function
134
ibid
Stephen,R., Baird, Esq.(2009).Strategies for owning and protecting touch marks. How often do you
consider the di stinctive tactile elements of your brand? [online].Available: Westlaw Library[accessed
on 10 April 2012]
135
64
as trademarks, something that can only be associated with a single

brand.136
4.9
Conclusion:
In principle OHIM accepts registration of non-traditional trademarks,
provided that they meet the requirement of distinctiveness. The number of

registrations for such marks is rather limited compared to the number of
word marks and figurative marks.
The outcome of the examination for such marks, however, will depend
on the circumstances of the case and also of the type of the non-traditional
mark.
OHIM accepts sound marks that are represented graphically by music
notations and also the combination of sonograms and sound files. A colour per
se can be a trademark but this requires acquired distinctiveness. A
combination of colours can be registered at OHIM. However, also in this case
there need to be proof of distinctiveness. Registration of a smell seems not
yet possible since the sign cannot yet be represented graphically. A
registration for a 3-D mark will be accepted when the shape differs
significantly from the norm of what is common in the relevant market and
therefore is capable of indicating the origin of the product.In the end we can
say that since 1996 when the OHIM commenced,there are number problems
arise and bad faith chapter has began.137
136
ibid
Dawson,N.M.(2011). Bad Faith in European Trade Mark Law. Intellectual Property
Quarterly, Issue 3,p.232
137
65
CHAPTER-5
PROTECTION OF NON-CONVENTIONAL TRADEMARKS IN INDIA
5.1
Introduction:
Intellectual Property Rights allows people to assert ownership rights
on the outcomes of their creativity and innovative activity in the same way
that they can own physical property138. Intellectual Property is a result of
human labour and therefore it is bound by a number of changes. The four
main types of Intellectual Property are Patents, Trademarks, Designs and
Copyrights.
5.1.1 Trademarks:
A trademark is any sign that individualizes the goods of a given
enterprise and distinguishes them from goods of its competitors. 139
Marketing of a particular product by the producer or of some service
rendered by a service provider is much better off as by trademark because
recognition becomes easier and quality is assured. The owner of the mark can
prevent the use of similar or identical signs by competitors if such marks can
lead to confusion.140 By this way similar low quality substitutes are
prevented from being confused with good quality ones.
The Trade Mark Act, 1999 defines well Known Trade mark as a "mark
in relation to any goods and services which has become so to the substantial
segment which uses such goods or receives such services that the use of such
138
1.Rao, A and Rao, B (2004). Intellectual Property-A Primer 1st ed. Allahabad: Eastern Book Company),pg 1
139
140
Unknown (1997) Introduction to Intellectual Property-theory and practice p.184

Trade Related Aspects on Intellectual Property Rights (TRIPS) Article 16
66
mark in relation to other goods or services would be likely to be taken as

indicating a connection in course of trade or rendering of services between
those goods or services and a person using the mark in relation to the first
mentioned goods or services.141 Trademark is one of the types of intellectual
property and it serves the purpose of protecting the mark of the product or
that of a service. Hence a trademark is defined as a mark capable of being
represented graphically and one, which distinguishes the goods and services
of one person from those of others. Trademarks may include shape of goods,
their packaging and combination of colors; they include a device, brand,
heading, label ticket, name, signature, word, letter, numeral, shape of
goods, packaging or combination of colors or any combination thereof.
Registration of trademark is not mandatory but in the present scenario there
are a number of cases of infringement, which are witnessed, and a lot of
cases are challenged so it is highly advisable to get Trademarks registered.
There is also a need for trademarks to be globally protected. This is
necessary because most have regional or local brand names and most
constantly push these weak names while struggling to get global clearance.
A trademark can thus be called a device that gives distinctiveness and
a mode of identification to a particular product or service. An increasing
number of countries also allow for the registration of less traditional forms of
trademarks such as single colors, three dimensional signs (shapes of product
packaging), audible signs (sounds) or olfactory signs (smell) 142
It is said that a trademark is a valuable business asset and a
marketing tool which could help in financing of the business in a way. A brand
is always a trademark but a trademark is not always a brand. 143 This is
quoted because confusion often arises between trademarks and brands, a
brand is simply a name, logo or symbol whereas a trademark is a distinctively
signifies or indicates some kind of product of a particular business
organization, because of this trademarks have a much wider connotation than
brands. A trademark may also function to symbolize or guarantee the quality
141
Vasudeva, PK.(2005) World Trade Organization: Implications for Indian Economy(Pearson Education,2005)pg 169
Making a Mark: An Introduction to Trademarks for Small and Medium-sized Enterprises by

WIPO ,2003 edition page 3
143
Ronald Hildret, Siegrun Kane Trademark Law(4th edition,Practising Law Institute,2002)pg2
142
67
of goods which bear the trademark.144 People are often induced to buy a
particular product due to its distinctive trademark that denotes quality.
Trademark symbolizes the value or goodwill associated with the goods and
which can be assessed by the extent to its perception in the public mind with
regards to its quality and specific source.145
Different goods and services have been classified by the International
(Nice) Classification of Goods and Services into 45 Trademark Classes (1 to 34
cover goods, and 35 to 45 services). The idea of this system is to specify and
limit the extension of the intellectual property right by determining which
goods or services are covered by the mark, and to unify classification systems
around the world. Trademarks are of many kinds they may be logos, moving
image marks, pictorial marks, slogans etc.
5.1.2 TYPES OF TRADEMARKS
There are basically four types of trademarks they are
Service Mark
Collective Mark
Certification Mark
Trade Dress
SERVICE MARKS:
A Service Mark is any word, name, symbol, device, or any combination used
or intended to be used in commerce to identify and distinguish the services
of one provider by others and to indicate the source of services. 146 These are
basically useful in distinguishing one service provider from the other. Service
Marks do not cover physical goods but only the provision of services that are
rendered. Service marks are used to identify a service, as Trademarks are
used for identification and protection of goods.
Carl W Battle, Legal Forms for Everyone(5th edition,Allworth Communications
Inc,2006)pg143
145
Vinod Sople, Managing Intellectual Property(PHI Learning Pvt Ltd,2006) pg 104
146
USPTO(n.d) United States Patent and Trademarks Office.[online].Available:
http://www.uspto.gov/faq/trademarks.jsp
[accessed on2 February 2012]
144
68
Service Marks are used in a number of day to day services, some examples of
them are: -
Management and investment services

housing development services
Advertising Promotional services
sponsorship
speed reading instruction
Hotel and motel services
Entertainment services rendered by individual, group or theatre.147
COLLECTIVE MARK:
A collective Mark is one used by members of a cooperative
association, union or other collective group or other group or organization to
identify source the of goods or services. 148A collective mark means a mark
which is utilized for goods and services with same characteristics which are
to be traded by one or more person acting jointly or legal entity for
differentiation with other goods or services of same kind.149
There are two types of Collective Marks or legal entities, which are
used for differentiating among the goods or services of same kind. They are:1. Collective Membership Mark
These marks are not used to indicate source of goods or services but they
indicate that the seller is part of a defined group.
2. Collective Trademarks and collective Service marks
Shilling,D.(2002).Essentials of trademark and unfair practices, Delhi: John Willey and Sons
p. 22
148
Rorke, M , Asolfi,E ,Bernad I(1993).Licensing in the Federal Laboratory :Diana
Publishing,p13
149
Sriro, A.Sriros(2006). Desk reference of Indonesian Law: Equinox Publishing,p.367
147
69
These are used to indicate the source of goods or services. Such collective
marks are used by a group to indicate that the goods or services offered by
each individual member of the group are sourced from the collective group.
CERTIFICATION MARK:
A certificate is evidence or probative matter providing assurance
that some act has or has not been done or some event occurred or some legal
formality has been complied with.150 A certification Mark is a mark which
indicates that certain qualities of goods or services in connection with which
the mark are used is certified. A certification mark is thus defined in the
Trademarks Act 1994, Section 50 as a mark indicating that the goods or
services in connection with which it is used are certified by the proprietor of
the mark in respect of origin, material, and mode of manufacture of goods or
performance of services, quality, accuracy, or other characteristics.151
TRADE DRESS:
Trade dress refers to combination of elements that make up the
look, feel, or environment of a product or business; the term can refer to
individual elements of a product or business image as well as to the image
the combination of those elements creates as a whole. 152 Trade Dress is a
non-functional physical detail. Trade Dress may include a few important
features like: Packaging
Size
Shape
Colour
Colour Combination
Texture
Campbell ,H. Black(1968) Blacks Law Dictionary,4th ed. Paul West Publishing Co.p.285
Provision of 1994 act subject to section 1 and 2
152
Ruper Barkoff ,Andrew C Selden Fundamentals of Franchaising(American Bar Association ,
2005)pg 17-f
150
151
70
Graphics
Design
Placement of words and decorations on a product
Particular Sale Technique
Trade Dress can be mere coloring, surface ornamentation or a general
appearance, a design patentable invention has to be a shape or appearance
of a specific article which is more than a surface appearance, which relates
to the overall appearance of the article and which is different enough to be
considered unobvious.153 Trade Dress may be protected under Lanham Act. It
is highly advisable for every manufacturer to protect his trade dress as it can
be easily copied.
5.1.3 Definition of Trademark

A trade mark is defined in section 2 (1) (zb) 154 as follows: trade mark
means 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. A
mark is further defined in section 2(1)(m): 155 mark includes a device,
brand, heading, label, ticket, name, signature, word, letter, numeral, shape
of goods, packaging or combination of colours or any combination thereof.
It is an opportune moment to reflect on such marks, because the Trade
Mark Registry is currently revising its Manual for Trade Mark Practice and
Procedure. Several sections of the Manual consider possibility of new types of
marks, since the Trade Marks Act of 1998 and the Trade Marks Rules of 2002
specifically refer to non-conventional subject matter, in contrast to the Trade
and Merchandise Marks Act of 1958.
David Pressman, Patent it yourself (13th edition,Nolo,2008)pg 29
Indian Trademarks Act, 1999
155
Ibid.
153
154
71
While the definition given under S. 2(1) (m) is an all-inclusive

definition, the Draft Manual clarifies those certain categories of marks, such
as shapes, colors, sounds and smells, will require special consideration
Under the Trade Marks Act, 1999, goods and services rendered are
classified according to the International Classification of goods and services.
Schedule IV of the Act provides a summary list of such goods and services that
fall in different classes: but this list is merely indicative. The Registrar is the
final authority while determining the class in which a particular good or
service falls. The different types of trademarks that are available for
adoption are:
Any name (including personal or surname of the applicant or
predecessor in business or the signature of the person), which is not
unusual for trade to adopt as a mark.
An invented word or any arbitrary dictionary word or words, not being
directly descriptive of the character or quality of the goods/service
Letters or numerals or any combination thereof
The right to proprietorship of a trademark may be acquired by either
registration under the Act or by use in relation to particular goods or
service
Devices, including fancy devices or symbols
Monograms
Combination of colours or even a single colour in combination with a
word or device
Shape of goods or their packaging
Marks constituting a 3- dimensional sign
Sound marks when represented in conventional notation or described
in words by being graphically represented.
The Trade Marks Act, 1999 replaced the Trade and Merchandise Marks
Act 1958; the new Act comprehensively amends and consolidates the laws
related to trade marks in India. The new Act was considered a necessity in
view of the emerging developments in trading and commercial practices,
ever increasing globalization of trade and industry, the need to encourage
investment flows and transfer of technology, the need for simplification and
72
harmonization of trade mark management systems and to give effect to some

important judicial decisions.
5.1.4 Salient Features of New Indian Trade Marks Act 1999

1. Definition of Trade Mark was broadened to include goods and services.
Shape of goods, their packaging and combination of colours was also
included. Earlier Trade Marks were registriblity only in relations to goods.
2. Service marks were also made registriblity.
3. Well Known Trade Marks were specifically defined for strong protection.
Dilution concept was recognized. Moreover a provision was made for refusal
of registration if the mark is a reproduction or imitation of a well-known
mark, even in respect of different goods or services.
4. No provision was made for smell or sound marks
5. Term of registration of Trade Mark was made 10 years with a provision for
renewal. Earlier it was 7 years, with provision for renewal.
6. Scope of infringement of registered trademark was broadened. Phonetic
and Visual similarity and similarity in Meaning were recognized as cases of
infringement.
7. Comparative advertisement was permitted
8. Procedure for filing of suit for infringement was simplified.
73
9. Non-registered Licensing of registered Trade Mark was permittedPermitted User.

10. Assignment of unregistered trademark without goodwill of business was
made possible.
11. Provision for registration as Registered User was simplified
12. Intellectual Property Boards were formed to hear appeals from the
decisions of Registrar of Trademarks (or Controller of Patents). This is similar
to TTAB and BPAI in USA
13. Scope of Infringing Activities was widened. Stringent Measures for
enforcement of trademark rights e.g. enhanced punishment, increased
imprisonment term, increased fine, direct complaint before police officer,
and seizure by police, restraining infringer from disposing of his Assets.
14. A provision was made for a single application of same mark for multiple
classes; earlier separate applications were to be submitted for each mark and
for each class.
15. Registration of Collective Marks for AOP.
16. Criteria for registriblity of Trademark was simplified.
17. Marks not registriblity were elaborated.
5.2
Status of Non-Traditional Trademarks:

Non-conventional trademarks like combination of colours per se,
three-dimensional marks, smells, sounds, and taste, were not capable of

being registered under the Act of 1958.
74
The new Act specifically provides for the registration of the shape of
goods, their packaging and combination of colours as trademarks. Although
smells, sounds, taste and holograms are not specifically mentioned, the
predominant legal opinion seems to suggest that the newly amended
definition of trade mark is wide enough to include these non-conventional
marks within its ambit. Since the definition of mark is inclusive in as much as
it states specifically includes a device etc., it is submitted that the mark
would also include smells, sounds, moving images and holograms.156
The
Draft
Manual
devoted
several
pages
to
the
graphical
representation requirements for colour, sound, scent, hologram and shape

marks. It specified that the graphical representation should be independently
sufficient to identify the applicants mark; the representation should stand in
place of the mark; and it should enable those inspecting the register to
understand what the mark is.
5.2.1 Color:With respect to colors, the definitions of trade mark and mark only
refer to a combination of colors. The difficulty arises when an applicant
chooses to make an application for a single colour only. However, the
definition of mark and trade mark does not exclude a single color.
The Draft Manual adopted a curiously worded and quite ambiguous
approach for representing single colors. It acknowledged the UK position
permitting color codes, then stated that the law or practice in India does
not provide for such interpretation. It went on to refer to a case 157 where
the applicant used extremely technical terminology to describe a color and
thereby failed the graphical representation requirement, as the basis for
Indian law, without specifying what will satisfy graphical representation
criteria for colors marks. Since the Manual also referred to the distinctiveness
test for single colour marks in the same section, one presumes these marks
can be represented but there is an explanatory gap here as to how this
should happen. An emerging international consensus suggests that single
156
157
Bansal,K.A(2001) Law of Trademarks in India. Kolkata: Commercial Law Publishers p. 21

Ty Nant Spring Water Ltds Application, [2000] R.P.C. 55.
75
colours can be graphically represented through a combination of a sample

(e.g. coloured sheet of paper), the common name of the colour, reference to
an international colour code and a written description including details
regarding how the single colour will be used on specific goods or services.158
5.2.2 Shape
Differentiation of one product from another ensures that the
customer doesnt get confused by similar products. M Porter has said that
differentiation is the key to competitiveness in todays dynamic customer
driven market.159 The shape of a product maybe registered as a trademark
as long as shape is not functional. The shape of a product is considered
functional if it affects the products use or performance.
Sub Rules (3) and (4) of Rule 29160 provide that where the mark is a
three-dimensional mark, the reproduction of the mark must consist of a two
dimensional graphic or photographic reproduction as follows, namely:
The reproduction furnished must consist of three different views of the
trademark.
Where, the Registrar considers that the reproduction of the mark
furnished by the applicant does not sufficiently show the particulars of
the three dimensional mark, he may call upon the applicant to furnish
up to five further different views of the mark and a description by
words of the mark.
If the Registrar is still not satisfied, he may call upon the applicant to
furnish a specimen of the trademark.
Where the application for the registration of a trade mark consists of
the shape of goods or its packaging, the reproduction furnished must
consist of at least five different views of the trade mark and a
description by word of the mark. If the registrar considers that these
views do not sufficiently show the particulars of the shape of goods or
Soplay,V.(2006)Managing Intellectual Property. New Delhi: PHI Learning Pvt. Ltd, p.106
Vinod Soplay, Managing Intellectual Property(PHI Learning Pvt Ltd,2006)pg106
160
Trade Marks Rules, 2002
158
159
76
its packaging, he may call upon the applicant to furnish a specimen of

the goods or packaging as the case may be.161
Zippo Manufacturing Company, the world-famous manufacturer of
windproof lighters that shot to popularity in World War II and have been
iconized in Hollywood ever since, was awarded a shape mark registration in
India for the unique shape of their lighters. This registration, under No.
714368 in Class 34 comes close on the heels of an earlier USPTO registration
for the same shape granted in 2002, which is yet to test the waters in a court
of law. The image of the lighter is as follows:
162
163
5.2.3 Sound:
Every state follows various provisions for registration of sound marks. A
sound mark is a sign that is not itself capable of being perceived visually, the
sound must be represented graphically by means of clear and objective
images, lines or characters, rather than a mere written description of the
sound. This requires that the sound is represented by notes.
161
EBC(2011).Practical Lawyer.[online].Available:http://www.ebc-india.com/practicallawyer
[accessed 10 March 2012]
162
[online].Available:
http://www.kaboodle.com/reviews/zippo-lighter--small-airforce,
[accessed on 2 March2012]
163
[online].Available:http://www.happygoodies.com/boutique_us/fiche_produit.cfm?
ref=zippo-marilyn-monroe-visage&type=12&code_lg=lg_us [accessed on 2 March2012]
77
There is nothing to prevent sounds from being registered as

trademarks as well, even though sounds have not been specifically mentioned
in the definitions of mark or trade mark. These sounds must be capable of
graphical representation. A musical notation for instance, would be
acceptable as graphical description of a sound mark. If the sound emanates
from
musical
instrument,
then
this
should
also
be
mentioned.
Onomatopoeic words, sonograms or spectrograms may also be accepted as

graphical representations.164
For registration of sound marks in India, the Draft Manual seems to
follow the teachings of Shield Mark insofar as detailed musical notation is
required, but the Manual does not differentiate between musical and nonmusical sounds. The registration of Yahoo in India is a helpful case study. If
the mark is identical to the one filed in the US, then it has both a verbal and
a musical component. This verbalized component (a human voice yodeling
Yahoo) cannot be adequately represented by musical notes alone. If it is
represented as a written description, this leads to ambiguity. There are a
number of ways of vocalizing Yahoo. If Yahoo can be yelled or yodeled
with considerable variation, then words are an imprecise technique by which
to represent this sound mark. A news report suggests that a digital sample of
the Yahoo sound was submitted along with musical notation and this is in
keeping with international trends.165 The graphical representation of the
yahoo yodel is as follows:
Private sector major ICICI Bank limited has registered its jingle (din
chik din chik) as its trademark. The registrar of Trademarks has registered
the notes forming the jingle. This recent development definitely points
towards a new chapter in the area of non-conventional trademarks.
Srinivasan,S.(2009). Evolution of Trademark Laws in India.
[Online].
Available:
http://www.ipfrontline.com/depts/article.aspx?id=23589&deptid=4
[Accessed on 14 January2012].
165
Vaish(2008).Indian intellectual property and information technology law,vol.-2nd, issue-1,
October -2008
164
78
Whenever a Sound trademark, is registered there is a definite

certainty that the uniqueness of the particular sound has to be distinct and
distinguishable from others in every possible way.
5.2.4 Other Non-Traditional Trademarks:

Although holograms or moving images are not specifically included in
the definition of trade mark. However, there appears to be no reason why
they may not be registered as trademarks. A portion of the sequence
comprising the entire moving image, such as the first or last frame could be
provided as long as the description of the mark clearly references the entire
sequence. A single image may not enough to represent the mark, and it may
be preferable to juxtapose several representative frames, to give a better
sense of the overall sequence.166
5.3
Existing Position:
There is nothing to show in the Act or Rules there under to treat nonconventional trademarks different from traditional trademarks. In fact, the
inclusion of shape of goods, packaging, or combination of colours in the
definitions of mark and trademark seems to show that there is no different
treatment to accord to non-conventional trademarks. The test of registriblity
of the trademarks is whether the mark indicates a source or origin. Tests for
deciding whether a trademark is inherently distinctive have been laid down
in India and U.K. would be applicable on a case-to-case basis.
167
Available
[Online].www.singhania.net.in/registration-of-unconventional- trademarks-inindia/
-[Accessed on 23/3/2012].
167
Ravi (2008). Registration of Unconventional Trademarks in India.
Available[Online].http://www.articlesbase.com/intellectual-property-articles/registrationof-unconventional-trademarks-in-india-571957.html
166
79
It has been widely reported that the Indian trademark registry recently
registered a sound mark for Yahoo, 168 followed by another for Allianz
Aktiengesellschaft,169 while the Delhi High Court has responded favorably to a
trade mark infringement claim to protect the shape of Zippo lighters.170
5.4 PROTECTION OF NON-CONVENTIONAL TRADEMARKS IN INDIA
(1) Distinctiveness
(2) Non-functionality
(3) Registration Standards
Distinctiveness: Just like in the case of unregistered trademarks, an

unregistered trade dress is entitled to protection if it is distinctive, either
inherently or through an acquired distinctiveness (or secondary meaning).
If an unregistered trade dress is inherently distinctive, there is no need to
prove that the dress has a secondary meaning. If the dress is descriptive,
it is protectable upon showing of a secondary meaning. And if it is
generic, it is not entitled to protection.
Non-functionality:
In addition to being distinctive, in order to be
entitled to protection, the trade dress cannot be functional. In the

context of trade dress, to be functional, a feature must be one that "is
essential to the use or purpose of the article or that affects the cost or
quality of the article." In the case of wood Laboratories, Inc. v. Ives
Laboratories, Inc.171 "A design feature of a particular article is 'essential'
only if the feature is dictated by the function to be performed; a feature
168
Manoj,P.(2008).Yahoo Awarded Indias First Sound Mark; Nokia in Queue LIVE MINT.
Available[Online].http://www.livemint.com/2008/08/22002259/Yahoo-awarded-India8217sfi.html
169
Singh,S.(2009).Yet Another Sound Mark Granted.
Available[Online].http://spicyipindia.blogspot.in/2009/07/yet-another-sound-markgranted.html
170
Gangjee,D.Saif.(2010).Non-Conventional Trade Marks in India.
Available[Online].http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1555807
171
456 U.S. 844 (1982).
80
that merely accommodates a useful function is not enough." In Warner

Brothers, Inc. v. Gay Toys, Inc.172 "The fact that a design feature performs
a function does not make it essential to the performance of that function;
it is instead the absence of alternative constructions performing the same
function that renders the feature functional. Depending upon the circuit
in which a trade dress dispute is litigated, non-functionality of a trade
dress may be part of the plaintiff's prima facie case.
Registration Standards: The statutory requirements for registration of a

trade dress are the same as the requirements for registration of
traditional word or logo marks. As a practical matter, practitioners should
expect rejections on the basis of descriptiveness of all applications for
trade dress registration. Rejections on the basis of functionality are also
common. The costs associated with overcoming these rejections, by
proving secondary meaning (for a principal register registration) and nonfunctionality (typically by evidencing alternative designs), can be
significant and therefore, must be weighed against the benefits of
obtaining the required registration.
5.5 Conclusion:
Finally, there are two concluding points of interest that may be listed
when it comes to the procedural requirements for non conventional marks.
The first of these points concerns the flagging up of non conventional marks
on the application form, so that special rules can be applied. The Trade Marks
Rules and Manual are very clear that in certain cases the application forms
must clearly indicate the manner in which a particular mark is nonconventional. A drawing of a 3D mark should not be treated as a simple
device mark at the time of registration, since this allows an applicant to
escape the stricter scrutiny applicable to shape marks. However, given the
open ended definition of a trade mark, not all categories of non conventional
marks are mentioned in the Rules, so this leads to the second point of
interest. Trade Mark examiners are entitled to ask for further and better
172
724 F.2d 327, 331 (2d Cir. 1983)
81
particulars, including a written, detailed description of the trade mark

being applied for.
While the written description requirement is not compulsory, for
suspected non-conventional marks this provision should be liberally used to
request additional information from the applicant so the sign being applied
for can be defined appropriately.
Under the new trademarks regime, the Indian Registry and judiciary
retain the flexibility to adopt the US approach instead of the UK/EU one.
Careful thought should be given to this choice and it is submitted that the
preferred approach is to always ask applicants to demonstrate acquired
distinctiveness in the marketplace before granting registration. The Registry
should firmly close the door to the possibility of inherent distinctiveness. As
far as acquired distinctiveness for colours is concerned, the Manual is clear:
Wherever the exclusive right to colour is sought, weighty evidence should be
necessary to overcome objection under Section 9(1) (a) of the Act. Here
again, it is important to note that there must be evidence that consumers
recognize the colour and use it as a trade mark for specific goods and
services, not that they merely associate the colour with the producer.
Intellectual Property is not an alien concept in fact it is a concept
which is seen in everyday life whether a book, electrical gadgets, plant
variety, cosmetics, food item, movie, softwares etc. It has become a concept
of wide prevalence in everyday life. People have also started celebrating
World Intellectual Property Day on 26th April every year.
Intellectual Property Protection is very important and there should be a
movement towards Global Intellectual Property Order, if there is no IPR
protection, it can be argued that inventive activity will cease.The rationale
for Intellectual Property protection is that it can stimulate creativity and
innovation and encourage the exploitation of inventions for the good of the
society. Public policy here aims at maintaining an intellectual Property
system which encourages innovation through proactive protection initiatives,
while at the same time ensuring that this is not at the cost of societal
interests. In this context, the challenge for World Intellectual Property
82
Organisation would be to incorporate public policy issues in programs carried

out with developing countries, such as raising awareness of flexibilities in
existing international intellectual property treaties.173
Many conventions and treaties have taken place in the field of Intellectual
Property particularly Patents and Trade Marks. If Indias international
affiliations are to be talked about India is an active member of the
International body WIPO (World Intellectual Property Organisation).It is also
part of two treaties namely Paris Convention 1883 where Industrial Property
is protected and Berne Convention 1886 where Literary and Artistic Works are
protected. India adheres to TRIPS and has modified its Trademark laws to
conform according to it. The purpose of all this is to protect individuality of
the manufacture, prevent infringement and improper usage of signs.
Rao A. and V, Rao,(nd) .Intellectual Property Rights-A Primer,1st edition, Allahabd: Eastern
Book Company)pg154
173
83
CHAPTER-6
COMAPRETIVE ANALYSIS, CONCLUSION AND SUGESTIONS
6.1
Comparative Analysis of the Different Countries:

The advent of untraditional marks has been rather belated in India.
While countries such as the United States recognized the use of

unconventional marks in the early 1970s itself, only recently has India
granted registration to Yahoo!s yodel. An analysis of the laws in different
countries to device a balanced approach is the need of the hour to match the
fast progressing technological developments and rights of people who may be
split into two categories, competitors and consumers.
6.1.1 Comparison on the Basis of Graphical Representation Requirement:
The Trademark Act,1946 encompasses unconventional trademarks by
not excluding them. Thus, granting protection to untraditional trademarks
has been significantly easy in the US where TMs have been defined broadly
and there exists no prerequisite of a graphical representation. In other
words, marks which consist only of a sound, a scent, or other completely
non-visual matter, which would only require a detailed verbal description,
84
are equally capable of protection under the US laws. But the situation in
other countries is different from USA. When we look at EU, requirement of
graphical representation is mandatory which make the registration of some of
the non-conventional marks very difficult as in marks like flavour, smell etc.
its very difficult to give the graphical representation. In contrast with the US
law, not only is graphical representation mandatory, but the ECJ and the
Board of Appeals have further elaborated upon the nature of the
representation required. Thus, a trade mark may consist of a sign which is
not in itself capable of being perceived visually, provided that it can be
represented graphically, particularly by means of images, lines or characters,
and that its representation is clear, precise, self-contained, easily accessible,
intelligible, durable and objective.
It can safely be asserted that graphical representation is a sine qua
non for TM Registration in India when we read the definition of the trade
mark in India. The 2002 Rules also emphasize on the need for graphical
representation.
6.1.2 Comparison on the Basis of Colour Trademarks Protection:
In present time, colour marks are we can say that no longer nontraditional. They are getting protection all over the world. If we talk about
the differences in colour marks protection it is relating to the registration
process, requirements which are to some extent different in different
countries. In most of the countries exclusive protection to the single marks is
not given easily. But in USA as we see the protection is more liberal than the
other countries. In USA single colour can be registered if it acquired
distinctiveness and is not functional. But in EU the situation is a bit different
85
as, the requirement of graphical representation is stricter then the courtiers.

In Australia now colour marks are now even included in the definition of
trade marks. But the full description of the mark in precise is must. But when
we compare this situation to the Asian countries where the IPR laws are now
developing .and now most of the countries, countries colour marks are
protected. But a single colour cannot be monopolised here.
6.1.3 Comparison on the Basis of Sound Trademarks Protection:
In USA, where graphical representation is not the main requirement, drawing
of the mark can be given but the audio cassettes are also accepted. But in EU
even though audio clip can be given to make the mark more clear but
graphical representation is must. But the situation in Asian countries is very
different, as in most of the countries sound marks because of their strict
requirements cannot be protected. But in India sound marks are now getting
protection as we accepted the TRIPS agreement. So we can say that Indian
situation is very much better than other Asian countries.
6.1.4 Comparison on the Basis of Scent Trademarks Protection:
A fragrance, which acquired secondary meaning and has a unique
relationship with the product, can be registered in USA. But in EU the
registration of the scent marks, is very difficult because of the requirement
of the graphical requirement. Very few scent marks are protected in EU. But
in Asian countries scent cannot registered.
6.1.5 Comparison on the basis of other Non-conventional Trademarks
Protection:
In case of taste marks, it can be registered in USA, if the mark is nonfunctional when they are added to the products. But in EU the graphic
86
representation requirement makes it like impossible to register And in Asian

countries it cannot be registered.
Motion marks can be registered in USA, EU but not in Asian countries with the
exaction of India. But there is difference in the requirements of registration,
as in USA, a video clip can be given and in EU the drawing must be given.
Touch marks are protected in USA, EU and is not same in India. But in
USA also not many marks are protected as touch marks.
6.2
Conclusion:
First of all, researcher comes on the conclusion by his research that
recent years have witnessed a dynamic evolution in the jurisprudence of

87
trademark protection laws on account of unprecedented technological

progression which allowed producers across the globe to participate in
extreme branding aimed at making the public at large recognize their
product with the help of sound, packaging shape, colour and smell, among
others aids. Such other aids, that are not restricted to two dimensional
representations, constitute unconventional trademarks. Trademark laws,
which earlier only took cognizance of words, symbols, letters, devices and
colour combinations, now give similar treatment to unconventional TMs.
Secondly, the researcher comes on the conclusion that in USA, the law
for the protection of the non-conventional marks is very well developed and
liberal too. Because when we look at the requirements of registration, we
will find that there is no requirements of graphical representation and in
some cases like of sound marks, motion marks even the audio or the video
cassette is also acceptable. Because of this liberal attitude only, there are so
many registered in USA, which could never be registered in other jurisdiction
like EU. Even the Supreme Court is also giving the decisions in favour of nonconventional marks. The Qualitex anything goes doctrine has had an
enormous impact on the USPTO, which has broadly interpreted the Supreme
Courts message and granted numerous registrations for types of trademarks
that are not always initially recognized as marks.
Thirdly, the researcher concludes that, in EU the law is developed on
equal parlance to USA now. But as we see that because of the strict
requirements
of
graphical
representation,
the
registration
of
non-
conventional marks is not easy there. Some of the marks like smell marks,
touch marks and scent marks have become like impossible to get registered
88
in EU. But the courts are playing good role in broadly interpreting these
requirements to facilitate the registration for these kinds of marks.
Fourthly, in developing Asian countries, cost prohibitive nature of
granting registration to untraditional trademarks is higher. Access to the
registered trademark database would be more expensive and often third
parties may not have the means of interpreting graphical representations of
sound marks, or have the required equipment for experiencing/listening to
the registered mark. In these circumstances granting registerability status
upon
unconventional
marks,
graphical
representation
of
which
is
inadequately provided, and if provided, opportunities for access are

restricted, would amount to opening of a Pandoras Box.
Lastly The Indian system has definitely garnered a lot from the
experiences of the European Union,United Kingdom and the United States,
and while its decision to not grant trademark-ability status to olfactory and
gustatory marks is based on practical impediments of today, the same may be
subject to change, considering the growing commercial and advertising
trends coupled with the leaps that technology is taking.
6.3. Suggestions:
In the highly competitive global market, trademark owners are constantly
looking for new and innovative ways to distinguish their brands from others
through creation of new types of marks. This constant evolution of marks has
resulted in many countries revising their trademark statues so that they
provide as broad a scope of protection as possible so that the law does not
become quickly obsolete and require constant updating. My suggestion for
89
the registration and protection of these non-conventional trademarks is as

follows:
A mark should be register able if it is visually perceptible or capable of

being depicted or described by written notation, diagram or other
visual means. This includes alphanumeric marks, colour marks, marks
for packaging and for the form or configuration of a product and marks
which are three dimensional. It also includes sound, smell, taste, or
touch marks where these satisfy the above criteria.

Marks should be properly represented within a registry and the
application for these non-traditional marks should be properly
examined. That register must be available to the public so that they
can see the registered and pending marks there.

In flavor marks representation should consist of a written description
that convey the identity of the flavor clearly and unambiguously and
permits its differentiae from other flavor.

In touch marks should consist of a written description that conveys the
identity of the scent clearly and unambiguously and permits its
differentiation from other scents. Additional representation might
include i sample of the scent or the chemical formula of the compound
that creates the scent. However these should not be the substitute of
the written description.

Trade dress should be adequately described in the application for
registration
Some countries are concerned about the technological limitations and

challenges that new types of trademarks can present to an IP office, but we
can learn from USPTO and OHIM that how they managed to create dynamic
90
and technologically advanced systems to register and store information for

trademarks.
To summarize, carving out an exception on the lines of US Trademark
Act would leave loose ends and harm more than it would protect. If availed
with caution, an approach based on EU and UK Laws, as we have today, with
assistance of latest technologies would definitely benefit the cause of private
parties and the public. Even with regard to sound marks, cumulative
representation in notational and digital form should be made mandatory. The
use of an electronic nose to detect smells could possibly provide some buffer
against indiscriminate TM infringement suits, but this should be allowed only
in the event technology is developed to ensure that the mark is
adequately available for experiencing by competing third parties who may
wish to generate goodwill through smell marks.
Greater scrutiny needs to be made of the prevailing systems in other
countries, and the possible roadblocks in our own, before registration of
unconventional marks is allowed. With emerging economies such as India, the
need to protect intellectual property is higher and no effort to do ensure
equilibrium and clear demarcation between rights held in common and by
private parties should be left undone.
91
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Master of Laws (L.L.

A BRIEF STUDY- PROTECTION OF NON-CONVENTIONAL TRADEMARKS IN

Tutor: Mr. Mark Wing

TTAB ..................................The Trademark Trial and Appeal Board

TABLE OF STATUTES AND CONVENTIONS

NON-CONVENTIOANAL TRADEMARKS- DEFINING THE SCOPE

2.3.1 Color Depletion Theory

2.4.1 Problems with Registering Sound Mark:

PROTECTION OF NON-CONVENTIONAL TRADE MARKS IN USA

Colour Marks Protection:

Taste or Flavour Marks

Shape or 3-Dimensional Marks:

Touch or Feel or Tactile Marks:

PROTECTION OF NON-CONVENTIONAL TRADEMARKS IN EU

4.1.1 Basic Legal Framework for Trademarks Protection:

4.3.1 Graphic Representation:

4.4.1 Graphical Representation:

Criticism on Approach for Graphical Representation by ECJ:

Flavour or Taste Marks:

Shape or 3-D Marks:

4.7.1 Functionality and Distinctiveness:

Touch or Tactile Marks:

A Touch is not Functional:

PROTECTION OF NON-CONVENTIONAL TRADEMARKS IN INDIA

Status of Non-Traditional Trademarks:

5.4 PROTECTION OF NON-CONVENTIONAL TRADEMARKS IN INDIA

COMAPRETIVE ANALYSIS, CONCLUSION AND SUGESTIONS

Comparative Analysis of the Different Countries:

6.1.1 Comparison on the Basis of Graphical Representation Requirement:

A BRIEF STUDY- PROTECTION OF NON-CONVENTIONAL TRADEMARKS IN

them.They are all examples of products having identity of non-conventional

Gilson, J.,andGilson , A (2005) Protecting Nontraditional Trademarks.

Johnson, D (n.d.) Trade Mark, A History of a billion dollar business.

Kenneth,L. Port (n.d.) On Nontraditional Trademarks.

endevours.It shall be capable of consistuting of trademark.

very dsitinctive goods and

services one to others business.But must not forgotten that it

graphical repersentation and along with must be involved to goods or services

passing of where there a trade or business has been going without

sources.International Treaties, European Legislation, Convention and Treaties

trademark is more liberal than EU/India.There is no doubt EU has very strong

1.6 Research Questionnaire

unconventional trademarks.The range of non-conventional trade marks

include sign such as slogans,three-dimensionel(3-D),shapes,colours,sensory

Denoncourt, J. (2012). Intellectual Property Law.3rd ed. London: Routledge, p.144

Above symbols are recognised as world wide. There is no hegitation to say

representation.In the recent years there have been great difficulties to

difficulties to register of non-conventional trademarks because of the strict

2.2 Problems in Registering Non-Conventional Trademarks

2.2.1 Are Non-Conventional Trademarks Distinctive?

Gilson, J and Gilson, A (2005) . Protecting Nontraditional Trademarks.

2.3 Color Marks

Marsoof,A(2007).The Registrability of Unconventional Trademarks in India and Srilanka: A

China.33It is true that it will not do simply to desribe a color vaguely by

2.3.1 Color Depletion Theory

Bainbridge, D.I (2009). Intellectual Property.7 th ed. Harlow: Pearson Longman,

which also had delivered by U.S court of law, if

such colours increasing obiviously the list of colurs soon out.

2.3.2 Shade Confusion Theory

(Example for Shade Confusion theory)

2.4 Sound Marks

Moorhead (1988) Trademark Law Revision Act of 1988. [Online] Available:

brands such as Yahoo! , Nokia, Intel and Deutsch Telkom, there is no