NON CONVENTIONAL USE OF TRADE MARKS

RESEARCH PROJECT

SUBMITTED BY: SUBMITTED TO:

ANUJ SARWESH Dr. M.R.S. MURTHY

SEMESTER: VI (B) ASSISTANT PROFESSOR

ROLL No: 559 NUSRL, RANCHI

NATIONAL UNIVERSITY OF STUDY AND RESEARCH IN LAW, RANCHI

HISTORICAL DEVELOPMENT OF THE TRADEMARK

Intellectual Property Rights are the legal rights which govern the usage of creations done by
mankind. Intellectual property refers to creation of mind, i.e, inventions, industrial designs,
for article, literary and artistic work, symbols, etc., used in commerce. The term “Intellectual
Property” has been used for almost more than one hundred and fifty years, which refers to the
general area of law that includes copyrights, patents, designs and trade mark and the related
rights. The intellectual property law regulates the creation, use and exploitation of mental or
creative labour. There are number of forms and important differences between the various
forms of intellectual property. They overlap in various domains for protection over tangible
things such as inventions, signs ideas, information etc.

Intellectual property is divided into two categories: industrial property, which includes
inventions (patents), trademarks, industrial designs and Copyright, which includes literary
and artistic works such as publications, cinematography etc. According to the TRIPS
Agreement, the intellectual property has been classified into Patents, Industrial Designs,
Trade Marks, Copyright, Geographical Indications, Layout Designs of Integrated Circuits,
and Protection of Undisclosed Information/Trade Secrets. The protection provided by
different IP Rights varies as we move from one intellectual property to another.

The question is why legal protection is provided to intellectual property? The general
justification for the protection of Intellectual property rights is that the intellectual property
induces or encourages desirable behaviour. For example, patent system is sometime justified
on the basis that it provides inventor with an incentive to disclose valuable technical
information to the public, which would have otherwise remain secret. Similarly, the trade
mark system is even as a result of it encourages traders to manufacture and sell top quality
merchandise. It prevents third parties from becoming unjustly enriched by “reaping where
they have not sown” and it also encourages them to provide information to the public about
those attributes. The ethical and moral arguments justify intellectual property rights because
the law recognises an author’s natural rights over the product of their labour.

The international character of intellectual property is recognised in various international

conventions. The need for protection of intellectual property is increasing very fast because
the role of technology and science in all the field of human activities are developing day by
day. The globalisation of trade and commerce has made a tremendous impact on the
expansion of the regime of intellectual property. Following International Conventions are
directly concerned with intellectual property:-

i. The Paris Convention for the Protection of Industrial Property, 1967.

ii. The Berne Convention for the Protection of Literary and Artistic Works, 1971.
iii. The Rome Convention for the Protection of Performers, Producers, of Phonograms,
and Broadcasting Organisations, 1961.
iv. The Treaty on Intellectual Property in Respect of Integrated Circuits done at
Washington DC, on May 26, 1989.
v. Geneva Convention on Protection of New Plant Varieties.
vi. GATT and WTO Agreement including TRIPS Agreement.
vii. Convention establishing World Intellectual Property Organisation (WIPO).
viii. Patent Cooperation Treaty (PCT).
ix. Budapest Treaty.

India is a member of almost all the important International Conventions. All these
Conventions define the scope and width of intellectual property rights in different fields. The
obligation of member States arising out of the Conventions can be enforced on the basis of
reciprocity only. No right or obligation is enforceable unilaterally. Therefore, it is the interest
of every country to implement the Conventions by enacting suitably their own laws on
intellectual property.

WHAT IS TRADEMARK?

The trade mark is a visual symbol or sign in the form of a word or a label. It is used for the
identification of the goods or services readily distinguishable from similar goods and services
supplied by the others. The sign may consists of one or more distinctive words, letters,
numbers, drawings, pictures, emblems, colours or the form of the other special presentation
of containers or packages for the product. A trade mark is a commercial asset intended to be
used commercially by businessman. It is considered to be a type of intellectual property
because the owner gets a perpetual right to its exclusive use in relation to his goods and
services. When a person gets his trade mark registered under law, he acquires valuable rights
by reason of such registration. Registration of the trade mark gives him an exclusive right to
the use of trade mark in connection with the goods in respect of which it is registered and if
there is any invasion of this right by any other person by a mark which is the same or
deceptive similar to his trade mark, he can protect his trade mark by an action or infringement
in which he can obtain injunction, damages or an account of profit made by the other person.

In India before independence the statutory protection to the trade mark was accorded by the
Trade Marks Act, 1940. This Act was based on the Trade Marks Act, 1938 of England. Since
1940 significant development took place in the field of business and trade. After
independence, to meet with these requirements and to give the effect to recommendation
made by Mr. Justice A.N. Rajgopala Aiyangar, the Trade and Merchandise Marks Act was
passed in 1958. But since then again there had been considerable changes in the trading and
commercial practices due to the globalisation of trade and industry to keep place with the
changing trend of investment flow and technology transfer at international level, a
comprehensive law was required, therefore, the Trade Marks Act was passed in 1999, which
came into force with effect from 15 th September, 2003. This Act has repealed the Trade and
Merchandise Act, 1958.

The object of Trade Mark Law is to provide for the registration; better protection of trade
marks for goods or services and the prevention of the use of fraudulent marks on goods and
services. In Laxmikant V. Patel v. Chentanbhai Shah1 the Supreme Court explained the
objective of Trade Mark Law as follows:-

“The law does not permit anyone to carry on his business in such a way as would persuade
the customers or clients in believing that the goods or services belonging to someone else are
his or are associated therewith. The reasons are two, firstly, honestly and fair play are, and
ought to be, the basic policies in the world of business. Secondly, when a person adopts or
intends to adopt a name in connection with his business or services which already belong to
someone else, it results in confusion and has probability of diverting the customers and
clients of someone else to himself and thereby resulting in injury.”

In case of the infringement of registered trade mark or passing of a registered or unregistered

trade mark, the trade mark law provide to the proprietor of the trade mark relief in the form of
(a) injunction (b) damages and (c) account of profits. The Act protects the exclusive right of
proprietor of trade mark over its trade mark. This Act also provides for the penalties in the
form of (a) imprisonment and (b) fines for the offence of falsification of trade mark and has
false application of trade mark.

1
AIR 2002 SC 275: (2002) 3 SCC 65: (2002) 24 P.T.C. 1 (SC)
Article 15(1) of TRIPS2 acknowledges that any "sign, or any combination of signs, capable of
distinguishing the goods or services of one undertaking from those of other undertakings,
shall be capable of constituting a trade mark".

S. 2(1)(zb) of Trade Marks Act, 1999 defines trade mark as "trade mark" means a mark
capable of being represented graphically and which is capable of distinguishing the goods or
services of one person from choose of others and may include shape of goods, their
packaging and combination of colours , and

(i) in relation to Chapter XII (other than section 107), a registered trade mark or mark used in
relation to goods or services for the purpose of indicating or so as to indicate a connection in
the course of trade between the goods or services, as the case may be, and some person
having the right as proprietor to use the mark, and

(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation
to goods or services for the purpose of indicating or so to indicate to a connection in the
course of trade between the goods or services, as the case may be, and some person having
the right, either as proprietor or by way of permitted user, to use the mark whether with or
without any indication of the identity of that person, and includes a certification trade mark or
collective mark.

The definition of ‘trade mark’ has also been enlarged to mean a mark capable of being
represented graphically and to include shape of goods, their packaging and combination of
colours and covers both goods and services. It is essential for a mark to have used exclusively
by one person during long period of time without anyone else attempting to use said trade
mark, in order to infer acquired distinctiveness/secondary meaning.3

National laws and international treaties refer to an open ended definition of a trade mark.
Article 15(1) of TRIPS4 acknowledges that any “sign, or any combination of signs, capable of
distinguishing the goods or services of one undertaking from those of other undertakings,
shall be capable of constituting a trade mark”. US statutory language takes a similar form, it
states a trademark is a designation which includes, “any word, name, symbol, or device, or
any combination thereof which serves to identify and distinguish the mark owner’s goods
2
Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh; Agreement
Establishing the World Trade Organization, Annex 1C (1994) 33 I.L.M. 1197.
3
Gillette India Limited, Rajasthan v Harbans Lal Malhotra and Sons Private Limited, Kolkata and another, 2013
Indlaw IPAB 67
4
Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh; Agreement
Establishing the World Trade Organization, Annex 1C (1994) 33 I.L.M. 1197
from those manufactured or sold by others and to indicate the source of the goods, even if
that source is unknown.”5 As the US Supreme Court observed, since “human beings might
use as a “symbol” or “device” almost anything at all that is capable of carrying meaning, the
statutory definition read literally, is not restrictive”.6 The ECJ has joined this chorus on a
harmonious note in Sieckmann7 and subsequent decisions which also interpret the equivalent
definition in Article 2 of the EU Trade Marks Directive. 8 All these provisions emphasise the
communicative ability that a candidate must possess. The sign should have the potential to be
distinctive; it must indicate origin and thereby distinguish or differentiate the goods or
services upon which it is used from others on the marketplace.9

Moreover, the law recognises that brand owners can educate the relevant public that a sign is
being used as a trade mark, through the doctrine of acquired distinctiveness or secondary
meaning.10 This open ended approach to subject matter is also evident in the Act of 1999. A
trade mark is defined in section 2(1)(zb) 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): “’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.” While this is an inclusive definition, the
Draft Manual clarifies that certain categories of marks, such as shapes, colours, sounds and
smells, “will require special consideration”.11 This ‘special consideration’ can be analysed

5
15 USC 1127 (Lanham Act 45).
6
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995).
7
Sieckmann v. Deutsches Patent - und Markenamt, (C-273/00) [2003] E.T.M.R. 37, 4345 (European Court of
Justice) [hereinafter "Sieckmann"].
8
First Council Directive 89/104/EEC of Dec. 21, 1988 to Approximate the Laws of theMember States relating
to Trade Marks OJ 1989 L40/1. The substantive provisionsunder consideration remain unmodified in its
successor, Directive 2008/95/EEC ofOct. 22, 2008 OJ 2008 L299/25.
9
Indian statutory language draws on U.K. law, which in turn is derived from E.U. trade marks legislation.
According to consistent E.C.J. case law, for a trade mark to possess distinctive character, it must serve to
identify the product in respect ofwhich registration is applied for as originating from a particular undertaking,
andthus to distinguish that product from those of other undertakings. See, Procter & Gamble v. OHIM,
(C-473/01 P and C-474/01 P) [2004] E.C.R. I5173, 32 (EuropeanCourt of Justice). This ability to distinguish
based on origin is also referred to asthe essential function of a trade mark. See generally, Simon, supra
note 16.
10
Proviso to 9(1), Act of 1999. ("Provided that a trade mark shall not be refused registration if before the
date of application for registration it has acquired a distinctivecharacter as a result of the use made of it or
is a well-known trade mark"). For acquireddistinctiveness, see generally, Mahendra & Mahendra Paper
Mills Ltd v. Mahindra & Mahindra Ltd., (2002) 2 S.C.C. 147 (Supreme Court of India).
11
Draft Manual Ch II, at 3.1.
along the lines of certain overarching themes, cutting across all categories of non
conventional subject matter. These arise in response to two general questions: (1) to what
extent can the principles applicable to conventional trademarks accommodate unconventional
subject matter?12 (2) Where gaps exist in existing rules, what should be the form and content
of new supplementary rules? In the following paragraphs, let’s focus on two of these
overarching themes - one concerning procedure and the other concerning the substantive
exclusion of certain types of marks. At the initial stages of applying for registration,
procedural requirements pose a challenge for certain types of marks. Additionally, as a
question of principle or policy, should we permit the registration of certain shapes, colours or
other signs which also perform a technical function? Here we encounter the danger of
combining rights over a mark with rights over a thing itself, or a commercially significant
property of a thing.

TRANSITION FROM CONVENTIONAL TO NON-CONVENTIONAL

TRADEMARK.

The trade mark originated with a concept of protecting the words, visual representation or the
amalgamation of the two. Nowadays applications for trade mark are made for outline, figures,
odour, sense of taste, colour, animated characters, etc. Although there is no hard and fast rule
for registration of trade mark but it is limited to certain kind of words and figure. The trade
mark is moving towards its unconventional use because of its composite and abstract nature.

The “diversity of signs which enterprises seek to develop as trademarks and to use in the
marketplace... shows that trade mark law is subject to a dynamic process from which new
types of marks may constantly evolve”. In response, the World Intellectual Property
Organisation (WIPO) has prepared a series of documents on non traditional marks, based on
a detailed survey of national registration practices.13

Nowadays smell marks, sound marks, taste marks, name mark, colour mark, shape mark, etc
are also became a part of trade mark. Their details and recognition are given below-

Smell Marks
12
WIPO 'Relation of Established Trade Mark Principles to New Types of Marks' (SCT 17/3)
Mar. 30, 2007.
13
WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications
(SCT), Sessions 16-21. Documents at: http://www.wipo.int/ sct/en/meetings/
To obtain registration of a smell mark applicants must be able to visually represent the
product’s scent and must show it is distinctive from the product itself. Smell must not result
from the nature of goods itself. However, some smell mark descriptions have met the
distinctiveness test and been successfully registered, such as Dutch company’s tennis ball
with the scent of newly mown grass; and UK registrations for tires with “a floral
fragnance/smell reminiscent of roses” and darts with “the strong smell of bitter beer”14

Sound Marks

A sound mark is a non-conventional trademark.15 In sound marks, alternative methods have

emerged for their visual representation such as depictions of oscillogram, spectrum,
spectrogram and sonogram are now being accepted. Lately the non-traditional marks have
flourished in its usage, representation and description, the WIPO Standing committee on the
Law of Trade Marks, Industrial Designs and Geographical Indications (SCT) agreed that
“Offices may require that the representation of sound marks consist of a musical notation on
a stave, a description of the sound constituting the mark, or an analog or digital recording of
that sound – or of any combination thereof.16

In India, the first sound mark has been registered on August 18, 2009. The mark was
registered in favour of California-based Internet firm Yahoo Inc.’s for its three-note yahoo
yodel.17 It has been widely reported that the Indian trade mark registry recently registered a
sound mark for Yahoo,18 followed by another for Allianz Aktiengesellschaft,19 while the
Delhi High Court has responded favourably to a trade mark infringement claim to protect the
shape of Zippo lighters20

14
WIPO Mgazine, Non- traditional marks : Smell Sound and Taste, Februaury 2009 at p. 5.
15
Registering Sound Marks in India- Trade Mark Rules 2017 available at
https://www.intepat.com/blog/trademark/registering-sound-marks-india/
16
Ibid
17
https://www.livemint.com/Home-Page/5z2B1NQUy3YyPkpRDp789M/Yahoo-awarded-India8217s-first-
sound-mark-Nokia-in-queue.html
18
P. Manoj, Yahoo Awarded India's First Sound Mark; Nokia in Queue LIVE MINT, Aug. 22, 2008; Yahoo!
Yodels into India's Trade Mark Registry MANAGING INTELLECTUAL PROPERTY WEEKLY NEWS, Sep.
1, 2008.
19
Yet Another Sound Mark Granted, available at http://spicyipindia.blogspot.com/2009/
07/yet-another-sound-mark-granted.html.
20
Zippo, IA 7356/2006, (High Court of Delhi) (13 July 2006) (H.R. Malhotra, J). The decision is of symbolic
importance but very limited precedential value since it concerns an ex parte ad interim injunction order,
based on a prima facie case of infringement. There is no detailed analysis applying the infringement test to
shapes and the validity of the shape mark was not challenged.
Taste Marks

For the representation of taste mark graphically, the WIPO Standing Committee on the Law
of Trade Marks, Industrial Designs and Geographical Indications (SCT) reports that “the
graphic representation requirement was satisfied by using a written description of the taste
and an indication that it concerns a a taste mark”. However, the test of distinctiveness is
harder to satisfy.

In its decision in case R 120/2001-2, the Office for Harmonization in the Internal Market
(OHIM) rejected the pharmaceutical company Eli Lilly’s attempt to register the taste of
artificial strawberries noting “any manufacturer … is entitled to add the flavor of 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 unpleasant to taste … Moreover the taste is
unlikely to be perceived by consumers as a trade mark; they are far more likely to assume
that it is intended to disguise the unpleasant taste of the product…”

In re N.V. Organon, the USPTO rejected the attempt by N.V. Organon to register an orange
flavor for pharmaceuticals on June 14, 2006. 21 Here it was “necessary to establish that in the
context in which they are used colours or combinations of colours which it is sought to
register in fact represent a sign”

Colour Mark

Colour or colours in different context regarded as a sign and nowadays it gained the status of
trade mark. Every color must be applied in a particular way to gain uniqueness and so as to
be called as trade mark. A particular color if so applied that it formed a unique texture then it
may enter into the trade mark domain. In Heidelberger22 the court considered the related issue
of a combination of two pure colours.23 Therefore, to satisfy graphical representation, a mere
statement such as “Blue and Red” would not be sufficient. For an application concerning
“two or more colours, designated in the abstract and without contours, these must be
systematically arranged by associating the colours concerned in a predetermined and uniform
way.”24

21
WIPO Magazine, Non-traditional Marks: Smell, Sound and Taste, February 2009 at p. 6.
22
Heidelberger Bauchemie, (C-49/02) [2004] E.T.M.R. 99 (European Court of Justice).
23
Heidelberger Bauchemie, (C-49/02) [2004] E.T.M.R. 99 at 24 (European Court of Justice)
24
Heidelberger Bauchemie, (C-49/02) [2004] E.T.M.R. 99 at 33 (European Court of Justice)
Adopting this reasoning, the Draft Manual also suggests that unless “the colours are used... in
a special or particular pattern or arrangement, it is likely to be more difficult to prove that in
such cases colour would lend distinctiveness as a badge of origin”,25 i.e. the colours may be
considered generally decorative or a mere property of things, and not sufficiently distinctive
as a trade mark. On the issue of distinctiveness, a more controversial question is whether
colours will ever be able to satisfy the inherent distinctiveness requirement. For colours, we
should not presume too readily that such signs operate as trademarks, since “there is a public
interest in not limiting the availability of colours for other traders”.26

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. Here
again, it is important to note that there must be evidence that consumers recognise the colour
and use it as a trade mark for specific goods and services, not that they merely associate the
colour with the producer. Loose associations are not sufficient to satisfy distinctiveness, no
matter how long the usage has been for.

Shape Mark
When it comes to shapes, from a comparative perspective two main clusters of issues can be
observed. The first cluster concerns establishing distinctiveness for shapes, while the second
concerns functionality based objections to the registration of certain types of shapes.
Beginning with distinctiveness, the Indian Registry has adopted the EU's position that the
same distinctiveness criteria as required by section 9(1) - should apply for all types of
trademarks, including shapes.27 Here establishing acquired distinctiveness for shape or 3D
marks, under the proviso to section 9(1), is relatively straightforward. 28 The Manual adopts
the Windsurfing factors29 to help structure the evidence required: the applicant's market share
under that mark, the intensity and geographically widespread usage, investment in promoting
the mark, evidence of consumer recognition of the sign as a mark and evidence from the trade
that the sign is considered to function as a mark. However, one of the fundamental
25
Draft Manual Ch II, at 5.2.1.
26
Draft Manual Ch II, at 5.2.2.
27
Draft Manual Ch II, at 5.2.5.3.
28
have come to operate as a guarantee of origin. For that to be so consumers must rely on it as a means of
returning to the same undertaking if their experience of its products is positive, or to avoid that undertaking.
29
Windsurfing Chiemsee GmbH v. Boots- und Walter Huber, (C-108/97) [1999] E.T.M.R. 585 (European
Court of Justice).
requirements is that the shape must have been used as a trade mark;30 it is not sufficient to
claim a shape mark based on evidence of general advertising containing pictures of the
product shape and consumer recognition of the associated word mark. If the applicant
submits general evidence of advertising expenditure, it could relate to their word mark
instead and that is no good. What is needed is evidence that relates precisely to the 3D sign
applied for.31 The evidence must specifically show that the relevant public trusts the shape to
indicate commercial origin in the same way that they would trust a word mark. 32 Ultimately,
through evidence of acquired distinctiveness, the shape must be able to stand alone as a trade
mark.33 Turning to inherent distinctiveness, matters are more complicated. It is possible to file
for registration on the basis that a shape has inherent distinctiveness, since there is no
differentiation between the various categories of marks and the same standards are applied.
By adopting this understanding of consumer perception regarding shapes, the Manual echs
the findings in the ECJ's Henkel decision.34 As a practical matter, it is therefore difficult for
shape marks to establish inherent distinctiveness. Yet according to the ECJ, such
distinctiveness is still attainable for a sign “which departs significantly from the norm or
customs of the sector and thereby fulfils its essential function of indicating origin”.35 The
Manual also adopts this position.36 There is an obvious danger here. The trade mark registry
will no doubt be approached by applicants with novel, well designed or highly stylised
products claiming that they also function as trademarks. However a shape which is simply
different or varies from that of competing products is not inevitably a trade mark. Trade mark
law is not to be confused with the law of Design protection. The requirement that the shape

30
‘ Mark must have been used distinctively - as a trade mark’, Draft Manual Ch II, at 5.1.3.1.
31
BIC SA v. OHIM, (T-262/04) [2005] E.C.R. II-5959 (Ct. of First Instance (Third Chamber)) (3D disposable
lighter shape application where much of the evidence was only relevant for advertising the word mark 'Bic').
32
The Draft Manual refers to the ECJ's decision in Philips Electronics v. Remington Consumer Products,
(C-299/99) [2002] E.T.M.R. 81 (European Court of Justice).
33
Nestlé v. Mars, (C-353/03) [2005] E.C.R. I-6135, 26 (European Court of Justice) ("In regard to acquisition
of distinctive character through use, the identification... of the product or service as originating from a given
undertaking must be as a result of the use of the mark as a trade mark"); August Storck KG v. OHIM
(Storck I), (C-24/05 P) [2006] E.C.R. I5677, 61- 62 (European Court of Justice) (Where the applicant
sought to register the shape of a sweet, a picture of the sweet on the external packaging was considered
use to describe the contents of the packet and not use of the shape as a trade mark.).
34
Henkel v. OHIM, (C-456/01 P & C-457/01 P) [2004] ECR I-5089, 38 (European Court of Justice). This was
further endorsed in Mag Instrument Inc v. OHIM, (C-136/02 P) [2005] E.T.M.R. 46 (European Court of
Justice) (The application was for stylised torch shapes and the ECJ held that while in theory they could
have inherent distinctiveness, it was unlikely in practice for this reason).
35
The authorities cited in Deutsche SiSi-Werke v. OHIM, (C173/04 P) [2006] E.T.M.R. 41,
31 (European Court of Justice).
36
Draft Manual Ch II, at 5.2.5.4 (“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”).
departs significantly from the norm and thereby fulfils its origin indicating function needs to
be taken seriously.
In the EU, unsuccessful arguments to lower this inherent distinctiveness threshold have
included suggestions that (a) the 3D sign is simply a variant (or an aesthetically striking or
attractive variant) of a common shape and therefore perceptibly different; 37 (b) the
distinctiveness threshold is crossed if a 3D sign is simply novel (never been done before); 38
(c) if its components such as geometric shape and color, albeit individually commonplace,
combine in non-obvious ways.

Name Mark

Recently Argentine football legend Lionel Messi had registered his name “MESSI” as his
trade mark.39 A Spanish bicycle goods company was carrying its business from 1998 with
“MASSI” as its trademark. When Lionel Messi applied for registration of its name “MESSI”
as his trademark then the Spanish co. objected. The court said although there is likelihood of
confusion and both names are phonetically similar but Lionel Messi is a public figure and
even one who had apathy for football knows Lionel Messi. Earlier to this Spainish football
legend Christiano Ronaldo and Jamaican Sprinter Usain Bolt registered their trademark.40

Domain Name

Disputes over ownership of domain names have arisen for a number of reasons. A domain
name has been considered as akin to a trade mark. Therefore those who own the mark for the
non-internet business will wish to use the same name on the internet: it is seen as a valuable
addition to the branding of goods and services, or of the business as a whole. However trade
mark law is territorial whereas the internet is global. Therefore different businesses trading
under the same name mark in various parts of the world may have what they considered to be
as the same legitimate claim to a particular domain name. As no two domain names can be
identical, only one business can have a particular name. Prince plc registered the domain
37
Mag Instrument Inc v. OHIM, (C-136/02 P) [2005] E.T.M.R. 46 (European Court of Justice).
38
Procter & Gamble v. OHIM, (C-468/01 P to C-472/01 P) [2004] E.C.R. I-5141(ECJ); [2004] E.T.M.R. 88
(European Court of Justice).
39
https://economictimes.indiatimes.com/news/sports/lionel-messi-scores-in-eu-court-battle-to-trademark-
name/articleshow/63924673.cms
40
https://www.lexology.com/library/detail.aspx?g=23638806-354d-4d22-962f-d6310a25a0e5
name first and was challenged by Prince Sports Inc. 41 The name remained with Prince plc.
This type of dispute might be viewed as ‘domain name envy’.

Disputes have also arisen where internet users, with a degree of entrepreneurial spirit,have
registered domain names which are the same as or very similar to the trading name or
registered trade name of a company that is well known or famous, or which has a reputation.
Generally the intent has been to do one of two things. One option might be to offer it to the
owner of the registered trade mark or trading company in return of some payment.
Alternatively if it is a name that is similar to well-known name, such as porschegirls.com, the
intention might be to use the domain name in an effort, not necessarily to confuse, but to
draw people to the site. Also there are the disputes where the owners of trademarks who have
aggressively pursued policies to prevent other internet participants from using any rendition
of a name that includes or alludes to their registered trade mark, in some cases quite
unjustifiably. This is sometimes termed reverse domain name hijackings.

JUDICIAL APPROACH

In Imperial Tobacco Co. of India Limited v Registrar of Trade Marks and Another 42 the
appellant applied for the registration of the trade mark “Simla.” The question of law was
whether geographical name 'Simla' had acquired distinctiveness and applicants mark had
become distinctive. The court said 'Simla' is neither an invented word nor is it a word having
a dictionary meaning. Geographical name can be registered as trade mark on evidence of
distinctiveness. When application in this case was first made, it was a mark which was not in
use at all, but which mark was only 'proposed' to be used. So 'Simla' trademark is not
inherently distinctive of appellant's goods. Hence Calcutta High Court dismisses the appeal.

Recently a Chinese court ruled that three domestic companies namely New Boom, New
Barlun, and New Bunren infringed U.S. based Shoe manufacturing company New Balance’s
signature slanted “N” logo and owe the U.S. shoe company $1.5 million in damages and legal
costs. The case is registered as the largest trademark infringement award ever granted to a
foreign business in China.43
41
Prince plc v. Prince Sports Group Inc [1998] FSR 21.
42
AIR 1968 Cal 582
43
https://www.nytimes.com/2017/08/22/business/china-new-balance-trademark.html?rref=collection
%2Fsectioncollection
In Yahoo Inc. v. Akash Arora and Another44 where the question of law was whether
defendants by adopting of name 'Yahooindia' passed off services and goods of defendants as
that of plaintiff's trade mark Yahoo!. Here Delhi High Court said that on considering domain
names of parties, it was crystal clear that two names were almost identical in nature. There
was every possibility of Internet user being confused and deceived in believing that both
domain names belonged to one common source. The defendant’s plea that Internet users were
sophisticated users and were able to ascertain actual Internet site that they intend to visit, was
of no force. The court said as even one who was sophisticated user of Internet, might be
unsophisticated consumer of information. Such person might find his way to defendant
Internet site which provided almost similar type of information as that of plaintiff. The court
granted interim injunction and restrained the defendant from dealing under that trade
mark/domain.

CONCLUSION

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. Here
again, it is important to note that there must be evidence that consumers recognise the colour
and use it as a trade mark for specific goods and services, not that they merely associate the
colour with the producer. Loose associations are not sufficient to satisfy distinctiveness, no
matter how long the usage has been for.
Two further issues need to be considered with an eye to future litigation. The first is the
question of whether colours can also be considered functional. Take the example of the
colour pink used on surgical wound dressings, which closely resembles the colour of human
skin,45 or the use of fluorescent yellow on safety clothing. The US has a general doctrine of
functionality which includes colour marks, but as we see in the following Section of this
paper - Indian legislation only explicitly refers to functionality based objections for shapes in
section 9(3). It is open to the IPAB or the courts to adopt this general doctrine of functionality

%2Fbusiness&action=click&contentCollection=business&region=rank&module=package&version=highlights
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44
1999 (19) PTC 201
45
In Re Ferris Corporation, 59 U.S.P.Q. 2d 1587 (T.T.A.B. 2000).
used defensively to prevent the registration of marks or revoke them - and apply it to all types
of non conventional marks. One can imagine not only functional colours and shapes but also
functional scents46 or tastes47. The second issue considers the possibility of litigation over
whether one colour infringes another. Here interpreting the scope of the rights narrowly under
sections 28 and 29 will be important, as will defences like descriptive fair use under section
30 (2) (a).48 Certain colours, such as Green for environmental goods and services, should
never be registered49 and even if they are, others should be allowed to continue using them
descriptively. Litigation concerning the use of colour marks has already commenced. BP has
litigated on the basis of its registration for a particular shade of green for its service stations, 50
while Cadbury's has been involved in extensive litigation in Australia over the use of purple
for chocolates.51 Once such marks are registered, applying the principles of comparison
developed for words or images under infringement provisions will also have to be adapted for
colours, shapes and sounds.
There are number of puzzles and anti-competitive concerns that such subject matter raises.
By raising these issues, this article seeks to introduce some balance to the discussion.
Registries and court around the world are adopting a cautious approach to such subject
matter. The Draft Manual picks up on several of these issues and provides a robust structure
within which to allow the gradual evolution of principles in this area. It should prove to be a
valuable and flexible resource. The thought of a single manufacturer claiming exclusive
rights to a colour across a wide range of goods and services is an unwelcome one. Such
marks should therefore be given a cautious reception.
Registration of trade mark should be limited to certain field. In other words the ambit of
registration should be narrowed down. It should not be so that if every other thing acquires
distinctiveness then it gets registered. There should be some parameter enlisted within which
46
Either with technical functionality such as the smell of Odomos, All Out or Good Knight mosquito repellents;
or with aesthetic functionality such as the pleasing fragrance of perfumes. Any feature which adds
non-trade mark value to a product and is not protected by another IP right should be free to be imitated.
This is what ensures a competitive marketplace.
47
In re Organon, NV 79 U.S.P.Q. 2d 1639 (T.T.A.B. 2006) (The sign applied for was the flavour orange. The
T.T.A.B. held that exclusive rights over a pleasant orange taste would be an important advantage over
conventional antidepressant tablets. These pills were designed to dissolve on a patient's tongue;
consequently, there is a practical need for the medicine to have an appealing taste).
48
The use is non-infringing under 30(2)(a) if “the use in relation to goods or services indicates the kind,
quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of
rendering of services or other characteristics of goods or services.”
49
As noted in the Draft Manual Ch II, at 5.2.1.2.
50
BP Amoco Plc v. John Kelly, [2001] F.S.R. 21 (High Court of Justice in Northern Ireland); BP Amoco Plc v.
John Kelly, [2002] F.S.R. 5 (Court of Appeal in Northern Ireland) (on appeal).
51
Cadbury Schweppes Pty Ltd v. Darrell Lea Chocolate Shops, [2006] F.C.A. 446 (Federal Court of
Australia); Cadbury v. Darrell Lea, [2007] F.C.A.F.C. 70 (Federal Court of Australia); Cadbury v. Darrell
Lea, [2008] F.C.A. 470 (Federal Court of Australia).
if anything falls then only it should be granted as trade mark. Otherwise that day is not far
when everything which we see or perceive will get trade mark status because it is distinct
even to its own species in slightest form. That condition would be pathetic, so better we don’t
let that world come and discourage such practise.