04/IND/SPECIAL_REPORT

Protection of Non-Traditional Trademarks

I. Background for Discussion

Due to the recent development of our digital environment and the diversification of brand
marketing means, companies all over the world are actively conducting their business by
using new types of trademarks other than traditional word marks or devices, and practically,
such new trademarks are functioning as a source identifier. Accordingly, each country is
newly introducing, or is actively discussing the introduction of, a system for various types of
trademarks, such as non-traditional trademarks that can be visually recognized, and non-
visual trademarks such as sound marks and scent marks. In light of the above, we would like
to review the protection and the practical application of non-traditional trademarks in each
recognized group of the APAA Trademark Committee.

II. Questions per Theme

1. Protection of Non-Traditional Trademarks

First of all, we would like to review the types of non-traditional trademarks that are
protected or are under discussion to be introduced in your country, and also the realistic
evaluation on the introduction of non-traditional trademarks.

(1) Introduction of Protection by Registration of Non-Traditional Marks

Please check whether each type of the non-traditional trademarks below are
recognized as registrable trademarks, or under discussion for protection in your
country.

*Colo Other
Type
3D r per Moveme Positio Textu s
Hologra Sound Scent Taste
mark se nt n re Shape
Classificatio m marks marks marks marks
s mark marks marks marks Mark
n
s s
Recognized
Unrecognize

d
Under
discussion
* Color per se mark refers to single color marks not spatially delineated.
1
 04/IND/SPECIAL_REPORT
* Samples of the above non-traditional marks is attached as a separate file for
your reference.

2
 (2) Basis of the Protection

We would like to know whether non-traditional trademarks are protected under your
Trademark Act, etc., or protected through precedents or examination practice?

Please check the basis for recognizing each of the non-traditional trademarks
below that are protected in your country.
Type Color Others-
3D Hologram Movement Position Sound Scent Taste Texture
per se Shape
marks marks marks marks marks marks marks marks
Ground marks Marks
Trademark Act
Precedent
Trademark
Examination N/A N/A N/A N/A
Guidelines/Practice
Actual business
circumstances
Others

(3) Status of Application for/Registration

Please state the number of application for/registration of non-traditional

trademarks that have been filed or granted in your country in the table below.

Color
Type 3D Hologram Movement Position Sound Scent Taste Texture
per se Others
Statistics marks marks marks marks marks marks marks marks
marks
No. of marks
filed/registered

Please list up the representative non-traditional trademarks registered in your

country.

(4) Discussions on the Introduction

 Please describe the current discussions regarding the introduction of non-
traditional trademarks in future.
The Indian Trademark Law and Practice has expanded its purview to
accommodate protection of various and different types of non- traditional
 trademarks in India. Recent developments witnessed in the regime of
unconventional marks in India is the registration of sound mark by Yahoo for
Yodel, followed by registration of sound mark by German Company Allianz
Aktiengesellschaft.
Section 2(1) (zb) of the Trademark Act, 1999 defines a trademark as 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. Thus, the definition of
trademark under the Indian Trademark Act is an inclusive one and covers within
its ambit anything that is capable of being graphically represented and
distinguishing any product.
Further in this regard the Draft Trademark Manual for Practice and
Procedure (hereinafter referred to as the Draft Manual) specifically
mentions that the word "mark" under the Trademark Law is intended to be
interpreted broadly and no type of sign is automatically excluded from
registration.
In India the Draft Manual elaborately discusses the protection of
unconventional marks like:
- Colour trademarks

- Sound trademarks

- Smell Trademarks

- Shape of goods

- Holograms
Colour Trademarks- According to the Draft Trademark Manual for Practice and
Procedure, single colour marks may be registrable as a trade mark if it is very
unusual and peculiar in a trade and is recognized by traders and consumers alike that
it serves as a badge of origin for that class of goods and will only in exceptional
circumstances be capable of denoting the origin of a product or service. The Draft
Manual further emphasizes that the examination of single colour marks requires
careful analysis, because there is a public interest in not limiting the availability of
colours for other traders. Each case must be assessed individually.
Thus, the Indian Law requires adducing of strong evidence for demonstrating
factual distinctiveness for registrability of colour marks in India.
Sound Trademarks- Sound trademarks are being granted registration by the Indian
Registry and the registered sound marks of Yahoo and Allianz are testimony to the
same. Moreover, entities like Nokia and ICICI have also approached the Indian
Registry for registration of their sound marks.
Smell Trademarks- The Draft Manual provides that the registration of Smell
Trademarks in India faces certain statutory impediments.
As mentioned above according to Section Section 2(1) (zb) of the Trademark Act,
1999 a trademark is 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.
In this regard Rule 2 (1) (k) of the Trademark Rules, 2002 enunciates that a
"graphical representation" means the representation of a trade mark for goods
or services in paper form.
Shape of Goods/ Shape Marks- Shape marks are entitled to protection under the
Indian Trademark Law and trademark protection was extended to shape marks for the
first time by Delhi High Court wherein the shape mark of Zippo Manufacturing
Company was granted protection and in the said case the Court while according
protection to shape marks observed that Like other trademarks it would be
sufficient for a shape mark to enable the public concerned to distinguish the
product from others which have another commercial origin, and to conclude that
all the goods bearing it have originated under the control of the proprietor of the
shape mark to whom responsibility for their quality can be attributed.
Holograms- None of the provisions under the Indian Trademark Law acts as an
embargo to the protection of holograms. The Draft Manual of Trademarks
provides that in principle there is nothing to prevent holograms from operating as
trademarks, provided they are capable of distinguishing the goods or services of one
undertaking from those of other undertakings and are capable of being represented
graphically.
What is the perception in your country on the introduction of new non-traditional
trademarks? Is it positive or negative? What are the grounds or reasons for such
perception?
At present the Indian Trademark regime is experiencing a huge transformation
wherein new non-conventional marks are being filed more frequently.
The basic considerations for according trademark protection in India is that the mark
must be capable of:
i. Being graphically represented; and

ii. Distinguishing any product

 Thus, the perception in India on the introduction of new non- traditional trademarks
can primarily be remarked as positive subject to the statutory laws prevailing in India.

2. Actual Status of the System for Protecting Non-traditional Trademarks

In relation to the protection system of non-traditional trademarks in operation in your

country, we would like to review the application/registration system, the practical mar

(1) Application, Public Announcement, and Registration

If an application/registration system for non-traditional trademarks exists in your

country, we would like to review how an application is filed, how an application is
published and how registration is granted.

How are non-traditional trademarks specified and applied for registration? In

particular, in case of a non-visual trademark, is the writing of a visual
representation required for the specification of the mark?

Three dimensional marks- The Trademark Rules embody specific regulations to be

followed while applying for a three- dimensional mark. Rule 25 (12) and 29(3) of
the Trademark Rules, 2002 entails provisions regarding filing of a three dimensional
mark in India and provides that:

Rule 25(12) (c) - An application for the registration of a trade mark for goods or
services shall be considered as a three dimensional trade mark only if the
application contains a statement to that effect;

Rule 29 (3) in this regard further elaborates that where the application contains a
statement to the effect that the trade mark is a three dimensional mark, the
reproduction of the mark shall consist of a two dimensional graphic or photographic
reproduction as follows, namely:-

(i) The reproduction furnished shall consist of three different views of the
trademark;

(ii) Where, however, the Registrar considers that the reproduction of the mark
furnished by the applicants does not sufficiently show the particulars of the
three dimensional mark, he may call upon the applicant to furnish within two
months upto five further different views of the mark and a description by
words of the mark;
(iii) Where the Registrar considers the different views and/or description of the
mark referred to in clause (ii), but still does not sufficiently show the
 particulars of the three dimensional mark, he may call upon the applicant to
furnish a specimen of the trade mark

Colour per se marks- In India, there exists an ambiguity with respect to the
procedure to be followed while filing for a single colour mark.

Though the Draft Manual acknowledges the UK Practice of allowing marks

consisting of colour alone to be graphically represented if they are filed in the form
of a written description of the colours(s)(eg dark blue) and are accompanied by the
relevant code(s) from an internationally recognised colour identification system, the
law or practice in India does not provide for such interpretation.

In this context reference can be made to Cadburys trademark PURPLE COLOUR

(#900189) wherein Cadbury had filed series trademark for the below mark, however
the trademark application for the same was not accompanied by any colour code.

Shape Marks

Rule 29 (4) (i) of the Trademark Rules, 2002 provides that where an application for
the registration of a trade mark consists of shape of goods or its packaging, the
reproduction furnished shall consist of at least five different views of the trade
mark and a description by word of the mark.

Sound Marks- The Draft Manual entails the following provisions relating to the
requirements to be fulfilled while filing a sound mark:

1. Applications for sound marks must clearly state that they are sound marks.
Otherwise the application will be examined as if it were a word and/or device
mark (e.g. in the case of musical notation); and
2. Graphic representation requirements are met by representation of the sign by a
musical stave divided into measures and showing, in particular, a clef,
musical notes and rests indicating relative value and sharps, flats and
 naturals (accidentals).

Holograms- With respect to holograms, the Draft Manual of Trademarks

Practice and Procedure provides for the filing requirements. It entails that for
multiple feature hologram marks, to meet the graphical representation requirements
under the Trademark Law, it will be necessary for the application form to contain
representations of each of the various views depicted in the hologram.

Non- Visual Marks- As stated above, in India the basic requirement for a trademark
is that the mark should be able of being graphically represented i.e. there should be
a visual representation for the specification of mark.

Thus, non- visual marks in India face the legal impairment of not being represented
graphically and accordingly the protection of non- visual trademarks in India is not
possible unless and until changes are incorporated in the existing law.

Please describe if there are any unique methods in applying for a non-traditional
trademark, and sample requirements, if any.

Colour per se Marks- The Indian Law and Practice does not suggest any specific/
special method while applying for a single colour mark. Thus, there is an ambiguity
with respect to the procedure to be followed while filing a single colour mark.

In this regard we can make reference to Cadburys mark (image applied for is pasted
below) filed as PURPLE COLOUR (#900189). The status of said mark at present
has been opposed by Mars Incorporated.
Shape Marks
The trademark application for the ZIPPO shape mark demonstrated its shape in the
application as under:

Sound Marks

The Draft Manual entails the following provisions relating to the requirements to be
fulfilled while filing a sound mark:

1. Applications for sound marks must clearly state that they are sound
marks. Otherwise the application will be examined as if it were a word
and/or device mark (e.g. in the case of musical notation); and

2. Graphic representation requirements are met by representation of the

sign by a musical stave divided into measures and showing, in
particular, a clef, musical notes and rests indicating relative value and
sharps, flats and naturals (accidentals).

Registration No. 1365393

 Registration No. 1365394

How is a non-traditional trademark application publicly announced in your

country?

A non- traditional trademark application in India is publicly announced through the

Trademark Journal i.e. when the mark is accepted and advertised by the Registry.

The Draft Manual with respect to three dimensional marks provides that - as and
when the mark is accepted and advertised, suitable entry to that effect will be made
below the mark in the journal publication.

Relevant matter from some non- traditional marks which have already been publicly
announced are as under:
Journal Page of NOKIAs SOUND MARK (#1365394)

1
0
Journal Page of ZIPPOs Shape Mark (#714368) which inter alia provided that the
registration of this trademark shall give no right to the exclusive use of the device of
cigarette lighter except as substantially shown.

How is a non-traditional trademark indicated in the trademark registry after being

registered?

There are no specific rules in this regard however the Draft Manual entails the
manner of indication only in case of three dimensional mark and entails that a
suitable entry to that effect will be made below the mark in the registration
certificate when the mark is registered.

In case of a non-visual trademark which it is hard to publicly announce, is there

any procedure to access the sample of the trademark applied for or registered?

11
As stated above, non- visual trademarks in India are not recognized.

12
(2) Requirements for Registration

1) Distinctiveness

What view does your country have on the inherent distinctiveness of non-
traditional trademarks?

In India, the prima facie view based on the opinions of Judiciary and the Draft
Manual is that non-traditional marks are not inherently distinctive. Distinctiveness
of a non-traditional mark is generally satisfied through the doctrine of acquired
distinctiveness or secondary meaning.

The Draft Manual provides that marks such as colour, shape of goods, sounds and
smells require special consideration i.e. a non-conventional sign must possess the
capacity or ability to distinguish goods or services of one person from those of others
before it is elevated to the status of trade mark. Thus, for registration, non-traditional
marks must possess a distinctive element.

For a three dimensional mark, the requirement of distinctiveness is provided in the

Draft Manual which states that the requirement of distinctiveness for a three
dimensional mark is the same as for other trademarks. However, besides
distinctiveness, functionality aspect as per section 9(3) will also arise in case of a
three- dimensional mark.

Section 9 (3) provides that a mark shall not be registered as a trade mark if it consists
exclusively of-

(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.

With respect to Single Colour Marks, the Draft Manual specifically provides that
Marks consisting of a single colour will usually be liable to objection under Section
9(1)(a) of the Act because they inherently lack the capacity to distinguish. (section
9(1)(a) of the Trademark Act deals with are devoid of any distinctive character. Thus,
as stated above in case of single colour marks - strong evidence is required to
demonstrate factual distinctiveness for registrability of colour marks in India.

Sound Marks- The Draft Manual provides that while assessing a sound mark it has
to be seen whether the average consumer will perceive the sound as meaning that
the goods or services are exclusively associated with one undertaking. The Draft
Manual in this regard further provides that, prima facie, no sound marks will qualify
for acceptance without evidence of factual distinctiveness and in particular, the
following will fall in this category:
 a. very simple pieces of music consisting only of only I or 2 notes;
b. songs commonly used as chimes:
c. well known popular music in respect of entertainment services, park services;
d. childrens nursery rhymes, for goods or services aimed at children;
e. music strongly associated with particular regions or countries for the type of
goods/services originating from or provided in that area.

Smell Marks- There are no regulations for assessing distinctiveness of a smell mark.

Shape Marks

With respect to the extent of distinctiveness in a shape mark, Section 9(3) of the Act
provides that the trade mark shall not be registered if it consists exclusively of
a) the shape of goods which results from the nature of goods themselves; or
b) the shape of goods which is necessary to obtain a technical result ; or
c) the shape of goods, which gives substantial value to the goods

Thus, in order to avoid an objection, a mark constituted by a shape must be

sufficiently different from a shape which is

a) characteristic of the product;

b) the norm or customary in the sector concerned

In this regard the Draft Manual further provides that the shape should not be
descriptive and must stand out from the crowd and in the case of new product
development must not be a shape likely to be taken for the product concerned.

Is a higher-level of distinctiveness required for non-traditional trademarks than

traditional trademarks? In this regard, is registration difficult if the acquisition of
secondary meaning cannot be established?

Yes, the practice followed in India and the Draft Manual suggests that a higher
level of distinctiveness is required for non- traditional trademarks as compared
to traditional trademarks.

Though the Draft Manual does not specifically mention about the difficulty in
registration of non- traditional marks if secondary meaning cannot be established,
however judicial pronouncements and Indian practice suggests that acquired
distinctiveness is an important aspect while registering a non- traditional mark.
In this context reference can be made to the case of Zippo Manufacturing Company
vs Anil Moolchandani & Ors. on 31 October, 2011 wherein Plaintiffs Zippo lighters
shape mark was registered on the basis of the view that the shape of the lighter as
well as well as the windscreen chimney are unique and have acquired a secondary
meaning to denote the plaintiffs cigarette lighters.

Thus, it can be inferred that the necessity of acquired distinctiveness or secondary

meaning is though not mandatory for registration of a non-traditional trademark but
does have a persuasive value.

To prove the acquisition of secondary meaning through usage for the registration
of a non-traditional mark, what level of proof is required?

There are no guidelines or rules specifying the level of proof required for proving
the acquisition of secondary meaning of a mark.

However, in this context we can refer to the case of Zippo Manufacturing

Company vs Anil Moolchandani & Ors. on 31 October, 2011 wherein the Court
had granted relief to Zippo and relied on the following evidence for determining
its distinctiveness:

- the plaintiff-company has been selling lighters bearing the trademark ZIPPO
and having a unique 3-dimensional shape in India through various channels
- The plaintiff-company has been selling this lighter in India through various
authorized retailers
- The plaintiff-company has also been advertising its lighters in India in
various magazines and has been incurring substantial expenditure on
advertising its product in India

2) Functionality

Does your country have regulations that exclude the registration of non-
traditional trademarks that are functional?

Yes, the Trademark Act provides for regulations that exclude the registration of non-
traditional trademarks that are functional.

The Act under Section 9(3) provides that a trade mark shall not be registered if it
consists exclusively of a) the shape of goods which results from the nature of goods
themselves; or b) the shape of goods which is necessary to obtain a technical result;
or c) the shape of goods, which gives substantial value to the goods.

The Draft Manual in this regard further enunciates that when an application for a
trade mark consisting of a shape of goods or packaging is made, the application
should be in relation to the goods only and not in respect of the container
3) Determining the Similarity
 Does your country have separate criteria for determining the similarity between
non-traditional trademarks? In particular, how does your country judge similarity
between non-visual marks such as sound marks and scent marks?

No, Indian laws do not entail any separate criteria for determining the similarity
between non- traditional trademarks.
There are few sound marks registered in India, however the examination reports of
the said sound marks do not object them on the grounds of similarity with any prior
mark.

(3) Enforcement

After registration, does a non-traditional trademark have the same scope of rights
as that of a traditional trademark? For example, for traditional trademarks, if the
scope of the registered right extends to marks similar to the registered trademark,
do non-traditional trademarks have a similar scope of rights?

The Indian Trademark Law does not differentiate between the scopes of post-
registration rights of a traditional and a non- traditional mark.

For non-traditional trademarks, are there any special regulations concerning

infringement of trademark rights?

No.

For non-traditional trademarks, are there special regulations restricting the scope
of trademark rights?

No.

After the registration of a non-traditional trademark, have regulations been

adjusted to prevent interference and overlap with previous trademark rights,
design rights, and copyrights, etc.?

No