The Trademarks Registry had so far maintained a confined approach towards Trademarks. Trademarks under Section 2(zb) Trademarks Act, 1999 are confined to “marks capable of being represented graphically”. Article 15 of TRIPS however, defines Trademarks from a wider perspective; “any sign, or any combination of signs..”
Sound marks can be registered in India, if they are capable of being represented graphically i.e, in the form of musical notes, satisfying the requirement of graphical representation under the Act. Sound marks are recognised in numerous jurisdictions across the world, including the European Union, United States and Australia. Incidentally Allianz’s sound mark was the first to be registered in Chile after Chile modified its Trademark Law
Other forms of non-conventional trademarks include smell trademarks, taste trademarks and moving image trademarks. The first olfactory mark was registered in the United States in 1990 when plumeria scent which was added to sewing thread and embroidery yarn was registered as a trademark. The mark was described in the application as “a high impact, fresh, floral fragrance reminiscent of Plumeria blossoms.” The mark was initially refused registration on the grounds that:
(1)The mark does not function as a trademark because it does not identify or distinguish applicant’s goods from those of others.
(2)Fragrance mark is analogous to other forms of product ornamentation in that it is not the type of matter which consumers would tend to perceive as an indication of origin.
(3)Alleged mark was de jure functional.
On appeal by the applicant Celia Clarke, doing business as Clarke’s OSEWEZ, this was reversed and the olfactory trademark was granted as the Clarke was the only person who marketed yarns and threads with fragrance and fragrance was not an inherent attribute or natural characteristic of applicant’s goods but a feature applied by Clarke’s.
The first olfactory trademark in the European Union was the registration as an olfactory mark of “the smell of fresh cut grass” for goods, namely tennis balls in 1999. The application was initially rejected by the examiner. On appeal the Board said that, the smell of freshly cut grass was a distinct smell which everyone immediately recognised from experience. The Board said that this was sufficient to comply with the requirement of graphical representation under Article 4 of the Community Trademark Regulation. The odour of beer for dart flights and the scent of roses for tyres were one of the first olfactory marks to be registered in the U.K. However an application by Chanel to register the fragrance of ‘Chanel No 5’ as an olfactory trade mark failed in 1994 as the smell of the perfume which was sought to be registered resulted from the nature of the good itself.
In 2004 Eli Lilly applied for a Community Trademark on “the taste of artificial strawberry flavour” as a taste mark or gustatory trademark for pharmaceutical preparations. The application was refused by the Examiner and subsequently by the Board of Appeal. The Board said that an exclusive right to Eli Lilly on the mark applied for would unduly interfere with the freedom of their competitors. Moreover, the Board said that such a taste could not distinguish the pharmaceutical preparations of one company from the other. The consumers would most likely assume that the flavour was added to mask the unpleasant taste of the product. Am attempt by N.V Organon towards patenting orange flavour for pharmaceuticals was rejected by the US Patent Office.
It however remains to be seen if the Indian Trademarks Registry will move towards the grant of more non-traditional trademarks like olfactory and gustatory marks in line with precedents in UK, US and the EU. With technology progressing at the speed of lightning, it remains to be seen as to how jurisprudence in the area of trademarks will progress.
Spicyip thanks Mr. Santosh Singh of Fox Mandal Little for bringing this news to our notice.