Advance Course on Trademark Law

Written Class Report

I. Topic: Elimination of Graphical Representation for Trademark and

non-traditional/unconventional trademarks

II. Details:

Day of lecture: February. 22, 2024

Day of Report: February. 28, 2024
Name of Reporter: Harish B

III. Outline of the topics discussed in the session:

- Discussion on removal of graphical representation necessity for trademark in the EU

jurisdiction
- Discussion on various forms of new, unconventional trademarks that are steadily
emerging
- Discussion of position in Indian jurisdiction and America
- Asked to find out whether sound marks registerable in EU

IV. Detailed Summary of Lecture:

We started off with an elaborate discussion on Graphical Representation of non-conventional
trademarks.

In today’s business economy, companies are eager to be equipped with the best possible
advantages so that they can compete in today’s overly-competitive market, one of these
advantages are non-traditional trademarks that stand-out when compared to conventional
trademarks.

Non-traditional trademarks are usually used by newer market entrants who are eager to
capture a large audience as quickly as possible and they do so by having a unique trademark.
Such usage is largely due to the fact that companies have started viewing trademarks as a
form of advertisement.
Indian Definition:

Sec 2(1)(zb) of the act; ―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;

The definition of trademark, has been observed to have three distinct elements —

1. that it should be a mark,

2. capable of being represented graphically and
3. should be capable of being distinguished.

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.

The requirement of graphical representation in India is elaborated through the Trade Mark
Rules, 2017 wherein 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.

We then discussed on the Elimination of Graphical Representation in EU:

On October, 2017, a regulation titled European Union (EU) Regulation (Regulation (EU)
1001 of 2017 came into force, it eliminated graphical representations requirement for
Trademarks in the European Union.

Before this notification, the "graphical representation" requirement was held as an obstacle to
the registration of non-traditional trademarks. After its elimination from the EUTM
Regulation several types of non-traditional trademarks as motion and sound witnessed a
doubling in application and that of audiovisual trademarks grew more than 30 times. This
change rather than facilitating the granting of registrations of non-traditional trademarks has
facilitated the filing of these applications, especially for sound, motion and multimedia signs,
however the granting rate, did not see significant change.

After this, moved on to look at the various types of non-traditional marks which
include:

- Smell
 - Sound
- Color
- Taste

1. Odor marks: one of the first instances of odor marks can be seen in European Unions
where a person attempted to register a smell which was described as “balsamically fruity
with a slight hint of cinnamon”, the court rejected this application in the famous case of
Sieckmann v DPMA, it further laid the important ‘sieckmann test’ where in a list of
specific requirements must be fulfilled such as the mark must be clear, precise,
self-contained, easily accessible, intelligible, durable and objective. 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. To answer yesterday’s assignment about whether smell marks are accepted
in the US jurisdiction, it is usually accepted in accordance with the functionality doctrine,
which 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, so as to not adversely affect competitive markets. In one case, the
fragrance of a particular flower 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.

2. Color marks: trademarking of colors are highly controversial and debated, the European
Court of Justice 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. The court held that trademarks should not be unduly restricting the
availability of trademarks, especially as only a limited number of colors are available.

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 might be available for
registration. However, the protection of colour as a field is still evolving, and the
functionality doctrine is not applied uniformly on occasion.
3. Sound Marks: sound marks have been readily accepted into various jurisdictions such as
Canda and US, their characteristics must be so distinctive that they are readily accepted
for registration. (This answers the questions posed to us on whether sound marks are
trademarkable in EU and if yes, how?)

In the case of Shield Mark BV v Joost Kist, ECJ C-283/01 (2003), the ECJ interpreted
Article 2 of the Trade Mark Directives and 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 laws do not prevent sound marks per se.

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. Here, India has more or less
followed the stance taken by the ECJ in Shield Mark.

Countries are Leaning towards a more non-conventional trademark friendly

environment:

Similar to the EU regulation, in America, graphical representability is dealt with in a more

flexible manner — in the case of Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 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’ 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. This has allowed for a wide interpretation of marks and
the registration of increasingly unconditional trademarks has been easier in US jurisdictions.

Discussion on registrability of odor marks:

There isn’t much advancements with respect to odor marks, but with the increasing number
of computerized registration of trademarks, a lot more avenues have opened up for the
recording of marks. 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.

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.

In conclusion:

We can thus say that there needs to be further accommodations in Indian law for
non-conventional trademarks, especially considering 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.

V. Learning Outcomes:

1. Learned in detail about the process which led to the removal of graphical representation
requirement in the EU jurisdiction, which further allows the students to understand the
advantages of removing a requirement such as this and the manner in which it has
allowed for a rise in the number of trademark registration and granting, further the
manner in which it promotes effective competition and business, allowing newer entrants
into the market to maneuver the barriers.
2. Learned in detail about the various types of non-traditional marks that have arisen in the
world, the acceptance of such marks in various jurisdiction such as America, India and
EU, the importance and relevance of sound mark and odor mark. Learned about the
controversy regarding color marks and odor marks.
3. The importance of non-traditional marks to the economy and market entry.