Contents

INTRODUCTION ..................................................................................................................... 2
PURPOSE OF THE STUDY ..................................................................................................... 3
OBJECTIVES OF THE STUDY ............................................................................................... 3
MEANING OF THE NON TRADITIONAL TRADEMARKS ............................................... 4
Non-Traditional Trademarks .................................................................................................. 4
Various Types of Non Traditional Trademarks: .................................................................... 5
Requirements to register a non-traditional trademark. ........................................................... 7
Importance of Registering non-traditional trademarks. ......................................................... 8
Indian position on non-traditional trademarks ....................................................................... 9
RESEARCH METHODOLOGY............................................................................................. 10
SCHEME OF STUDY ............................................................................................................. 10
LITERATURE REVIEW ........................................................................................................ 11
INTRODUCTION

In the knowledge economy society, the value of trademark get promoted and become the

most important intangible assets of enterprises. Along with the business diversification, new

types of trademarks turn up. Color mark、motion mark、sound mark and scent mark are

accepted and widely used. With the development of non-traditional trademarks, international

organizations and the developed countries are trying to expand the protection of trademarks,

form static to dynamic, visual to non-visible. After new international treaties signed,

countries’ trademark laws modified and important cases discussed, the system of non-

traditional trademark protection gradually established. Study on the matters above can

provides theoretical basis and practical experience to our third-time trademark modifying that

considering of bringing non-traditional marks in. The non-traditional marks can only be

registered by having the constitutive requirements of trademarks. First, marks are able to

distinguish the goods or service by distinctiveness. Second, different from the regular marks’

"inherent distinctiveness", non-traditional marks usually obtain the secondary meaning to

reveal the distinctiveness. Third, the non-traditional marks can be demonstrated that not

related to the function of the goods or service. In addition to non-traditional marks complying

with the substantial requirements, the procedure of applying for registration is another

problem. Traditional trademark applications only require a drawing or a written description,

which is not proper for non-traditional marks, for not clearly and accurately expressing the

mark content, so the digital media or other express forms are needed nowadays. This paper

uses three main methods, including the literature review, comparative analysis and case-law

study. To achieve the research purposes by collecting and analyzing the existing relevant

literature including works, magazines and journals. Compare foreign countries’ legislations

and theories as the reference in China. According to exemplify International, EU, US and
Taiwan district legislations, this paper will discuss their similarities and differences of non-

traditional trademark protection. The legislation and the practice is closely related to the

development with non-traditional legislation. And this article is divided into four parts, from

the general introduction to the specific non-traditional trademarks study, such as color mark,

motion mark, sound mark and smell trademark. It ends to summarize the legislation

suggestions.

PURPOSE OF THE STUDY

The aim is to assess, among other things, whether the appetite for non-traditional marks

differs across jurisdictions and what impact, if any, differing regulatory regimes have on

filing and registration activity. The study further aims to canvass the micro-trends emerging

from these data in order to test, at a high level, prevailing assumptions about non-traditional

marks. The policy implications of these findings will also be touched upon and

contextualized against growing concerns about trademark depletion, which have to date

focused on the diminishing number of available words and colors as trademarks, but may

well extend to non-traditional marks more generally.

OBJECTIVES OF THE STUDY

The other objective of the study are to examine, find and indentify the following

aspects :

a) Different types of non-traditional marks.

b) the requirements to register a non-traditional trademark.

c) Importance of registering non-traditional trademark.

 d) Indian position on non-traditional trademark.

MEANING OF THE NON TRADITIONAL TRADEMARKS

Non-Traditional Trademarks

Traditionally, trademarks have consisted of a word, a logo or a combination of both. The

mark may consist of word or words that are invented or that do not describe the goods or

services that are the subject of the trademark application. A mark may also include letters,

numerals or combinations of both. A logo may be an abstract design, a stylization or a simple

reproduction of everyday objects or images. Over time, other elements besides words, logos

and graphic designs have come to serve as identifiers of the source of goods or services, thus

serving the function of marks. These are called non-traditional marks. The level of protection

such marks receive varies among jurisdictions; what is considered a protectable “non-

traditional” mark in one jurisdiction may not be granted any protection in another. A non-

conventional trademark, also known as a non-traditional trademark, is a new type of

trademark which does not belong to a pre-existing, conventional category of trade mark, and

which is often difficult to register, but which may nevertheless fulfill the essential trademark

function of uniquely identifying the commercial origin of products or services. Non-

conventional trademarks may therefore be visible signs (e.g. colors, shapes, moving images,

holograms, positions), or non-visible signs (e.g. sounds, scents, tastes, textures).

Various Types of Non Traditional Trademarks:

The following are the main types of Non Traditional Trademarks

 Appearance: Depending on the jurisdiction, this type of mark may include the color

or combination of colors applied to the products themselves or to the packaging in

which they are sold. In the case of services, it could include the visual appearance,

externally or internally, of a store or restaurant or, for instance, the design of a menu.

The appearance of products, packaging or services is frequently referred to as trade

dress.

 Moving images, holograms and gestures: This type of mark includes moving

images, which can combine colors, sounds and aspects of product designs. In certain

jurisdictions, the motion of the “Lamborghini car door” has been given protections as

a motion trademark, because of the unique movement of the door as it is opened or

closed.

 Shape: This type of mark may be a three-dimensional representation of the product

itself; the container for the product; or the architectural design of a store or signpost,

such as McDonald’s Golden Arches. It may be the shape of a label or tag rather than

simply the words or colors appearing thereon.

 Sound: This type of mark may be a jingle or a piece of music or other sound, such as

the “roar of the MGM lion” or the “Tarzan yell.” It may be a short extract from a

composition or an entire musical piece. In some cases, it may be a reproduction of an

everyday sound, perhaps in an unusual circumstance.

 Smell: Although specific smells may be associated with particular goods or services,

not all of them are protectable as trademarks, because they are functional. For
 example, the scent of perfume is considered functional. In other cases, a scent is

applied or added to a product, and it is not the natural smell of the product itself and

does not serve a functional purpose. Elsewhere, registrations have been granted for a

eucalyptus scent, for golf tees (Australia); “the strong smell of bitter beer,” for flights

for darts (United Kingdom); and different fruit fragrances, for containers (Argentina).

Scent marks are also referred to as olfactory marks.

 Taste: Some jurisdictions permit the registration of taste as a mark, but they often

require that the taste be represented graphically and, of course, that it serve the

purpose of a trademark. In many cases it will be difficult to distinguish between the

natural flavor of a product and the recipe adopted by a manufacturer to distinguish its

goods from those of competitors. Even when the taste is not protected by a trademark

registration, such recipes often are closely guarded trade secrets. Taste marks are also

referred to as gustatory marks.

 Touch: It is possible for products to be manufactured in such a way that the product

itself or its packaging may have a particular sensation to the touch, which can

distinguish it from those of competitors. For example, the distinctive texture of certain

bags and luggage sold under the LOUIS VUITTON brand may be entitled to

protection in some jurisdictions as a touch trademark. Touch marks are also referred

to as tactile marks.

 Three-dimensional: The product shape and packaging qualify for the registration

under the category three-dimensional trademarks. In order to register a 3D trademark,

it is mandatory to qualify the distinctiveness test. In India, shape of goods and their

packaging have been included in the definition of trademarks for the first time by the

trademarks act, 1999, which came into force in 2003.

Requirements to register a non-traditional trademark.

Trademarks in general must meet certain requirements in order to be considered eligible for

protection and registration. These requirements vary from country to country depending on

the specifics of local legislation, even though there are several regional or multilateral

initiatives and treaties that seek to achieve some degree of standardization (e.g., Paris

Convention, Madrid System, Trademark Law Treaty).

In the case of non-traditional trademarks, such standardization initiatives do not normally

apply, and specific treaties or legislation are either very limited or non-existent. As an

example, the United States has begun to incorporate into free trade agreements miscellaneous

provisions concerning registration of sound marks and olfactory marks. Also, Benelux and

Community registrations in the European Union for non-traditional trademarks have been

awarded different degrees of protection by national courts.

It is usually more difficult to obtain the registration of non-traditional trademarks than of

traditional trademarks. Given that non-traditional marks must be considered trademarks in

each jurisdiction in which they are to be protected, generally they have to comply with the

basic local requirements. In many cases, this means that non-traditional trademarks are

required to consist of a distinctive sign that is capable of serving as a source identifier and

that can be graphically represented. However, these basic requirements can be complicated

when related to certain non-traditional marks (sound, smell or taste marks, for example), and

the requirements can be applied differently based on local practice. For example, a smell that

may be considered a trademark in the United States may not be considered a trademark in

Sweden, or a graphical representation of a sound mark that is acceptable in Chile may not

suffice in Croatia. For these reasons, it is advisable, when seeking registration of a non-
traditional mark, to obtain the assistance of qualified local counsel. Many jurisdictions

provide some form of protection to non-traditional marks. Most commonly protected are

product designs, packaging and product configuration, which are collectively referred to as

trade dress. By contrast, the registrability of color, sound, scent, taste and touch is not

uniformly recognized around the world.

Importance of Registering non-traditional trademarks.

In this synopsis it is suggested to consider registering non-traditional trademarks such as

smells, sounds and colours as well as traditional trademarks such as words or images. To

date, registration of colours has proved to be difficult due to their inherent low level of

distinctiveness. The colour must be capable of distinguishing one person’s goods from those

of another and must not be a colour which other traders might ordinarily use for their goods

or services. However, through use, consumers may come to regard the colour as indicating

particular traders goods or services and the colour may then acquire the required

distinctiveness.

Examples of sound marks currently registered in New Zealand are Sunlight Detergent’s

“squeak” produced by the “friction of thumb or forefinger on dishware”, and the Warehouse

jingle. Registration of smell marks has also proved difficult due to the graphical

representation requirement. However, experience overseas has shown that registration of

smell marks is highly sought after in the pharmaceutical and fast moving consumer goods

industries to provide a competitive advantage over other traders. An example of a smell mark

is the “smell of fresh cut grass” for tennis balls. As branding strategies are becoming

increasingly international, businesses with a strong local reputation must take action to

register their trademarks to protect their rights in a brand name. It may infringe against a

trademark that may later prevent the new business’s ongoing operation.
Indian position on non-traditional trademarks

As per section 18 of Indian trademarks act, any application for representation of a trademark

should be in compliance with the rules. According to rule 25(12)(b) of trademarks rules 2002,

the application for registration for goods and services has to be such that it can be depicted

graphically. Further, rule 28 makes it clear that the trademark should be such that it be able to

represent on a paper. Rule 30 further makes the specification to the effect that the graphical

representation made should be durable and satisfactory. In addition to this, what needs to be

remembered is that rule 29(3) makes it explicit that three-dimensional marks can also be

registered and so can a combination of colours.

In the light of all the provisions one may say that while it is possible to include a lot of non-

traditional marks within this definition, the requirement of graphically represent ability seems

to be an impediment. It is likely that Indian courts in future might adopt

the sieckmann approach and hence under such circumstances, registrability of trademark will

be contingent on several factors including the graphically representability of a non-traditional

trademark and whether it is durable or satisfactory.

The Indian courts first time dealt in depth with a trade dress case in William Grant & Sons

Ltd. vs Mcdowell & Compay Ltd., 1 This case dealt with an action of passing off and for the

first time recognized the importance of trade dress vis-à-vis a trans border reputation. With

regard to shape the settled position of law is that trade dress needs to be distinct and must

have acquired secondary significance. The Indian courts have also addressed the issue of use

of a single colour and have categorically stated that a single colour cannot be inherently

distinctive. Recently, Cadbury tried to trademark it purple colour but it was refused.

However, with regard to combination of colours, the position is clarified by the statue and the

1
William Grant & Sons Ltd. vs Mcdowell & Compay Ltd., 1994 IIIAD Delhi 65.
requirement of colours having acquired secondary significance like that of white and red in

case of colgate dental products along with inscription of colgate in certain manner seems

controversial. With regard to other non-traditional trademarks such as smell and taste marks,

there seems to be no case law whatsoever and this issue seems to be fairly unexplored. With

regard to sound marks, there however exists a possibility of registration under trademark law

as visual perceptibility is not a criterion and there are methods of representing sound marks in

a durable and satisfactory manner. However, this area also remains unexplored.

RESEARCH METHODOLOGY

The Research Methodology adopted will be doctrinal in nature. Keeping in view of

the set objectives, this research type was adopted for greater accuracy and to facilitate

deeper analysis of the topic. There is adequate field based study on the subject matter

and sufficient material on the nature the scope of the applicability of laws especially in

the context of India and this issue has been debated on while deciding several

matters.Primary sources like the legislations have been referred along with secondary

sources such as articles, books, and websites, minutes of the meeting have been used.

SCHEME OF STUDY

CHAPTER I: INTRODUCTION

This chapter introduces the concept of the non-traditional trademark and its various types.

The necessity of non-traditional trademark protection and International countries ’legislation

reflects that the non-traditional trademark protection is the world trend.

CHAPTER II: LITERATURE REVIEW

This chapter would provide all the review of literature that the author has referred to

through in the course of this research. The various articles collected and referred to by

the author, help in explaining the standpoint of the author and justify the concept of

Non Traditional Trademarks.

CHAPTER III: REGISTRATION OF NON TRADITIONAL TRADEMARK.

This chapter analyses the condition precedent for the registration of non traditional

Trademark. This part analyses a standard to measure whether a non-traditional mark can be a

registered trademark.

CHAPTER IV: INTERNATIONAL ASPECT OF NON TRADITIONAL

TRADEMARK AND A COMPARATIVE STUDY

This chapter analysises four typical non-traditional trademarks’ substantial requirements and

formal requirements. Including color mark, motion mark, sound mark and smell mark.

Combining with censorship standards of Europe and the United States to break through the

registered problems

CHAPTER V: CONCLUSION AND SUGGESTION

This chapter will contain proposals to non-traditional trademark protection And how the

legislature is modifying the domestic legislation, perfecting the registration and censorship

standards and participating in the international discussing.

LITERATURE REVIEW

Article :
 1. Keneth L Pori, On Non Traditional Trademark, 38 N. Ky. L. Rev. 1 (2011)

This article talks about the Non Traditional trademark. It exposes the perceived broad

protection od non-traditional trademarks or the great deception that it is. Part 2 of this ativle

describes the setting of non traditional trademark jurisprudence in US. Part 3 traces the

etymology of the words “symbol” and “device”, the precise staturoy terms upon which the

protection on non-traditional trademark rests. Part 4 addresses the types od non-traditional

trademark.

2. Anubhuti Rastogi, Non Traditional Trademarks

This article explains the concept of the Non Traditional Trademarks and its various type. It
also tries to explain the position prevalent in India with various case laws and examples.

Case Laws :

1. Eli Lilly’s case2

In this case where a company tried to register artificial strawberry flavor as a gustatory
trademark for pharmaceutical products.33 In that case, the Court implicitly recognized
that taste marks could be registered as trademarks. However, particular trademark
application was not allowed as it was found that most pharmaceutical companies added
artificial flavors to their medicines to disguise the unpleasant taste and therefore, granting
exclusive right to the appellant to use this ‘sign’ would unduly interfere with the freedom
of appellant’s customers. The other important issue was that most customers would not
recognize the strawberry taste as a trademark for a product but only regard it as a method
of disguising the unpleasant taste of the medicine.

2. Shield Mark case3

This case dealt with the registration of sound marks. The Court held that sound marks
were registrable but the requirement of graphical representation along with distinctiveness

2
ICSID Case No. UNCT/14/2, 16 March 2017
3
Shield Mark BV v Joost Kist h o d n Memex, Case No. C- 283/01.
 of sound had to be met with. It further stated that written description of a sound,
onomatopoeia and musical notes were not enough. In the given case, however, the Court
did not lay down appropriate mode of representation for the sound of a cockcrow or any
other sound, leaving it to a particular country to decide on its particular requirements.
However, the Court indicated that whatever be the mode of representation, it should be
clear, precise, self contained, easily accessible, intelligible, durable and objective.

3. Re Celia Clarke4

In this case the Court recognized that smell marks can also be registered as trademarks
when it accepted an application for registration of ‘a high impact, fresh floral fragrance
reminiscent of Plumeria blossoms’ for sewing thread and embroidery yarn. Here the
Court made a distinction between a fragrance that is used which is not an inherent
attribute of the product and fragrances for products like perfumes, cologne etc. where the
smell is an essential ingredient of the product. The argument was premised on scents
being comparable to colors and hence being registrable.

4. R v John Lewis5,

In this case the the court refused an application for ‘the smell, aroma or essence of
cinnamon’ as a trademark for furniture as the verbal description of a smell was not
enough to make a graphical representation. But the case would have been different if this
had been done with reference to certain standards.

4
USPQ 2d 1238(1990) (TTAB).
5
[2001] RPC 28.