Graphical Representation and Indian Trademark Law

By Atish Chakraborty

1. Introduction

The history of business, distinctive marks have been used by producers, sellers and the like to differentiate their goods and services from those of their competitors. As market economies and the differentiation of goods and services grew, the need for distinctive marks correspondingly increased,¹ and these came to be known as trademarks. In a complex modern market, with a long chain of intermediaries, a trademark acts as both an advertisement, as well as a signifier of the source, quality of the goods and the goodwill of the producer itself.

The predominant focus of this article will be on Indian law. We look at the Trade Marks Act, 1999 (hereinafter “the act”) for this, defining 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.² A mark capable of being graphically represented is of seminal importance for the registration of any trademark — in fact, graphical representation of a mark is of consequential legal importance. However, as products and technology diversify, the nature of marks that are sought to be registered are also changing — these are termed usually as non-conventional trademarks,³ including marks such as smell, sound etc.

2. Graphical Representability of Marks — Legal Scenario

The definition of a trademark under the Indian regime is inclusive and illustrates different sorts of marks that fall within the scope of this act. It may include other things which may fall within the general and plain meaning of the definition⁴ — it is to be noted that the word ‘mark’, in its statutory definition, is apt only to describe something which distinguishes the goods, rather the goods themselves.⁵

An interesting observation may be made here. The definition of ‘mark’, after the 1999 amendment contains three words — ‘shape of goods’, ‘packaging’ and ‘combination of colours’ that weren’t there in the previous act.⁶ Several developments in trademark law post-1959 necessitated the insertion of these three characteristics and these have been described as non-conventional trademarks.⁷

The essence of a trademark is that it is some distinctive thing which points out that the goods are the goods of a certain origin.⁸ The definition of trademark, inter alia, was observed to have three distinct elements — that it should be a mark, capable of being represented graphically and should be capable of distinguishing the goods or services of one person from those of others.⁹

A trademark, by definition, requires that the mark sought to be registered for that purpose ought to be reducible to a paper form. A trademark registration without the same being reduced to paper graphically.¹⁰ The requirement includes — firstly, to enable traders to identify what other traders have applied for registration as a trademark and secondly, to enable the public to determine the subject matter of registration¹¹. The court said that the first question that usually arises when infringement of a trademark is in issue, is whether or not the alleged infringement is identical to the one registered. Graphical representation thus becomes important in determining the subject of the registration.¹²

The requirement of graphical representation in India is elaborated through the Trade Mark Rules, 2017 (hereinafter “Trademark rules”), which superseded the old Trade Mark Rules, 2002, and graphical representation is defined as representation of a trademark for goods or services represented or capable of being represented in paper form and has been expanded to include representation in digitized forms.¹³ The said rule is to be read in tandem with the definition given in Section 2(1) (zb) of the act, and a reading of the same would suggest that, in any case, any representation of a trademark has to be done so that it can be reducible to a paper format, in accordance with the form prescribed for registration.¹⁴

3. Non-Conventional Trademarks — India and Abroad

The definition for a mark was expanded in India in 2002 to include marks that are considered ‘non-conventional’. The reason for this being termed non-conventional is that these marks are protected as trademarks only in some jurisdictions. They include three-dimensional marks such as shape of goods, motion marks, colours and colour combinations, odours and sounds among other forms.¹⁵ Graphical representation of the same has posed a significant challenge to registrations, as many of these marks do not satisfy the criteria that have been previously discussed. However, Indian laws have attempted to make some accommodations for the same.

1. Odour Marks

Odour marks are one instance of a non-conventional trademark. One of the most celebrated cases in this regard arises from the EU, where a trademark application was made for a smell described as “balsamically fruity with a slight hint of cinnamon”.¹⁶ In rejecting the application, the court laid down specific requirements to fulfil the element of graphical representation, and held that a sign must be presented in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective.¹⁷ The mark for the odour was provided by the applicant in the form of a chemical formula and samples of the smell itself. However, since the same were not accessible and self-contained, the mark was rejected. In US jurisdiction, smell marks have sometimes been accepted as a trademark. This is in light of the functionality doctrine, that is a widely applied test in the US — the doctrine states that functional features (features essential to the use or purpose of the product or that affects the cost or quality of the project) cannot be protected under trademark law,¹⁸ so as to not adversely affect competitive markets. In one case, the fragrance of plumeria blossoms could be registered for sewing thread and embroidery yarn, as the same is not a functional feature of the yarn and was easily distinguishable in the market.¹⁹

In India, however, no odour marks have been registered as a trademark till day. The new 2017 rules also do not specify them and require that the mark be reducible to paper or digitized form, making it difficult to register them.

2. Colour Marks

Colour marks for instance, are now accepted as ‘mark’ since the 2002 amendment of the act, in tandem with similar developments abroad. In EU law, colours and combinations of colours can be protected and registered as trademarks. However, the ECJ pointed out that consumers do not usually look at colour to distinguish a product, and that a colour on its own is not capable of distinguishing a good as being of a particular undertaking.²⁰ The court held that trademarks should not be unduly restricting the availability of trademarks, especially as only a limited number of colours are available.²¹

The functionality doctrine has also come into application with regard to colour marks. The colour, if it does not have a functional purpose, or has been shown to have acquired distinctiveness through high level of consumer recognition.²² However, the protection of colour as a field is still evolving, and the functionality doctrine is not applied uniformly on occasion.²³

In India, the Form TM-A of the trademark rules specifies the requirements for a colour mark, when claimed in distinctiveness of combination of colours, with or without a device. Combinations of colours have also been recognized in the act as a valid mark. Section 10 of the trademark act holds that a trademark may be limited wholly or in part to any combination of colours.

The Delhi High Court held that the word ‘limitation’ in the section refers to the limitation to, and not of, that particular colour.²⁴ The court observed that a colour combination is a ‘trademark’ as per the act, as there is no exclusion per se and even a single colour is thus entitled to protection of the law. However, the court made a diametrically opposite observation that a single colour or a colour combination will not be sufficient for an application.²⁵ While the 2017 rules clearly accept colour marks for registration, the position of the law is not clear due to varying judgments by different courts, and various inter-party disputes in this regard are yet to be tested.

3. Sound Marks

Sound marks have been more readily adapted into the Indian legal framework when compared to other non-conventional marks.

The ECJ, in interpreting Article 2 of the Trade Mark Directives, laid down that Article 2 of the Directive must be interpreted to mean that sounds can constitute a trademark, on the condition that they can be represented graphically and that the directive doesn’t preclude sound marks per se.²⁶ Sound marks have been routinely registered in several jurisdictions such as the USA, Canada etc, where the sound is so inherently different or distinctive that it is readily recognizable.²⁷

As regards India, sound marks have been accepted when the representation has been made in the form of musical notes, and submitted in MP3 format to the registry at the time of registration, and recorded on media which allow for easy and clearly audible replaying accompanied with a musical notation on paper.²⁸ Here, India has more or less followed the stance taken by the ECJ in Shield Mark.

India has made several accommodations for the graphical representation of non-conventional trademarks such as sound and colour marks, but several inconsistencies remain to be resolved.

However, several new developments have come into force with effect across the European Union, with amendments being brought to the European Union Trade Mark Regulation (EUTMR) with effect from October 1, 2017. It is pertinent to note these developments, since India has actually imitated the position of the EU law in certain respects, especially in registration of sound marks.²⁹

Regulation (EU) 2017/1001, being the amended EUTMR, in a surprising development has completely done away with the requirement for graphical representation for the registration of a trademark. The words “…capable of being represented graphically…”³⁰ were removed completely from the article, thus removing the graphical representability requirement for a trademark. A reading of the above article shows a definition of trademark that effectively reduces the complications that have hitherto plagued non-conventional trademarks. The mark, may consist simply of the requirements given, provided they can be represented in the register so that the competent authority and the public can determine the subject matter — this in fact directly harks to the judgment in SwizzelsMatlow.

The law in the USA, as regulated by the Lanham Act as well. In the USA, graphical representability is dealt with in a more flexible manner — in the judgment in Qualitex Co. v. Jacobson Products Co.,³¹ the language of the Lanham Act was that trademarks “…include any word, name, symbol, or device, or any combination thereof…”. The words ‘symbol’ and ‘combination thereof’ herein are of key import — they can be interpreted as widely as possible, and any mark that satisfies the conditions that the mark is in use and has a distinctive character.³² This has allowed for a wide interpretation of marks and the registration of increasingly unconditional trademarks has been easier in US jurisdictions.

We have observed that there is no clarity on how graphical representation might work with odour and colour marks — in Indian law, there is no clarity as to whether an odour mark might be registered under the trademark law and rules.

The US requirements leave a lot to the discretion of the registrar of trademarks, the EU regulation has simply loosened the requirements to an extent. By removing the requirement for graphical representation, the regulation significantly eases the filing for application as the applicant can submit anything that enables the competent authority to make the decision. Previously excluded marks such as odour and taste marks might have taken the first step towards being registered as trademarks in the EU as the biggest obstacle has now been comprehensively removed.³³

With the advent of computerized registration of trademarks, a lot more avenues have opened up for the recording of marks.³⁴ For instance, colours are mostly represented in HTML/CSS using hex codes that assign each exact shade with a six-figure alphanumeric value that enables precise recognition of a colour or shade. Many companies, universities etc. regularly use hex code colour schemes, and filing of trademark applications has become easier due to this. With further technological developments, there may be more innovations which offer precise unmistakable determination of odour mark by the authorities and the public.³⁵

The removal of the graphical representation requirement provides a clue as to what course may be taken with regard to it in India. With technological advances, sound marks have been accepted in MP3 format. If further technical advances can be accommodated in India, there is an incentive to remove the graphical representation requirement. The ambiguity in the law with regards to colour and odour marks in India can be resolved through the removal of the requirement, or at least continually accommodating the technological changes, to ensure the registration of a wider variety of trademarks.

The requirement in the rules regarding the reducibility of a mark to paper form seems particularly onerous in light of the various technical advances being made in the registration of trademarks. As long as the mark is perceptible to the registering authority and the public, there is no need for necessary reduction of all trademarks to a paper form. Thus, it has drastically impacted the definition of a trademark in India.

4. Conclusion

Indian Trademark law has by far congruently followed the EU position on graphical representation. The Trade Mark Act, 1999 read with the Trade Mark Rules, 2017 as well stipulated that any mark will have to be reducible to paper form in order to be considered as graphically representable. The requirement in that sense is quite stringent, even with the strides made in accommodating colour, shape and sound marks.

Non-conventional trademarks also are capable of distinguishing the goods or services of a particular concern,³⁶ especially in light of the applicability of the functionality doctrine. This doctrine is already traceable in India in light of shape marks,³⁷ and there is no reason why the same can’t be extended to other marks if and when the need arises. However, the main question is whether it is possible for a mark to be a trademark despite the lack of graphical representability, while it’s clearly seen that in India the graphical representation is a sine qua nonof sorts for the registration of any trademark.

We can thus say that there needs to be further accommodations in Indian law for non-conventional trademarks, especially in light of the fast-changing technological conditions in trademark registration. Difficulty in being reducible to paper should not be a fatal obstacle to marks that can successfully distinguish a particular good or service. While there is no immediate need to remove the requirement altogether at present, it is suggested that the law should make adjustments as and when the technical advances are made, to accommodate more non-conventional trademarks as they arise in the future.

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[1] Annette Kur et. al., European Intellectual Property Law: Text, Cases & Materials, 156 (1st Ed. 2013).

[2] The Trade Marks Act 1999, №47, Acts of Parliament, 1999 Sec. 2(1)(zb) (India).

[3] Arka Majumdar et. al., ‘The Requirement of Graphical Representability for Non-Conventional Trademarks’, 11, 313, Journal of Intellectual Property Rights (JIPR) (2006).

[4] The Trade Marks Act 1999, №47, Acts of Parliament, 1999 Sec. 2(1)(m) (India).

[5] K.C. Kailasram, Venkateswaran on Trade Marks & Passing-Off, 72, 75 (6th Ed., 2015).

[6] The Trade & Merchandise Marks Act, 1958 , №47, Acts of Parliament, 1958 ,s 2(1)(j) (India).

[7] Majumdar et. al. Supra Note 3.

[8] Kailasram, Supra Note 5, at 104.

[9] Laxmikant V. Patel v Chetanbhat Shah &Anr. A.I.R. 2002 S.C. 275 (India).

[10] Swizzels Matlow Ltd.’s Appl (1998) RPC 244 (United Kingdom).

[11] Majumdar et. al. Supra Note 3 at 314.

[12] Kailasram, Supra Note 5, at 105.

[13] The Trade Mark Rules 2017, r 2(1)(k) (India).

[14] Form TM-A, Application for registration of trademark.

[15] V. K. Ahuja, Law Relating to Intellectual Property Rights, 281 (3rd Ed., 2017).

[16] Sieckmann v DPMA [2007] ECR I-00687 (European Union).

[17] Ibid.

[18] Deborah Bouchoux, Intellectual Property: The Law of Trademarks, Copyrights, Patents and Trade Secrets, 237 (4th Ed.,2013).

[19] In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990) (United States of America).

[20] Libertel v Benelux Merkenbureau [2003] ECR I-3793 (European Union).

[21] Ibid.

[22] Qualitex Co. v Jacobson Products Co., 514 US 159 (1995) (United States).

[23] Bouchoux, Supra Note 18 at 31.

[24] Ibid.

[25] Cipla v MK Pharma MIPR 2007 (3) 170 (Delhi).

[26] Shield Mark BV v Joost Kist ,ECJ C-283/01 (2003) (Netherlands).

[27] Bouchoux, Supra Note 18.

[28] The Trade Mark Rules 2017, r 26(5) (India).

[29] Roberto Carapeto, ‘A Reflection About the Introduction of Non-Traditional Trademarks’, 34, Waseda Bulletin of Comparative Law (2016).

[30] EU Trade Mark Regulation (EU) 2017/1001, Art 4 (European Union).

[31] Qualitex Co. v Jacobson Products Co. 514 U.S. 159 (1995) (United States).

[32] Carapeto, Supra Note 29 at 34–36.

[33] Jacob Bolte, ‘The Removal of The Requirement for Graphical Representation of EU Trade Marks: The Impact of The Amending Trade Mark Regulation’, Diva Portal (Apr. 28,2020, 11:24 PM), https://www.diva-portal.org/smash/get/diva2:1072679/FULLTEXT01.pdf.

[34] Althaf Marsoof, ‘The Registrability Of Unconventional Trademarks in India And Sri Lanka: A Comparative Analysis’, 12, 498, Journal of Intellectual Property Rights (JIPR) (2017).

[35] Majumdar et. al., Supra Note 3.

[36] Qualitex Co. v Jacobson Products Co. 514 U.S. 159 (1995) (United States).

[37] The Trade Marks Act 1999, №47, Acts of Parliament, 1999 Sec. 9 (India).

The author is a Year V student at Amity Law School, Kolkata.

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