We bring to you an excellent piece covering a portion of trademark law that is not often discussed in India – non-visual trademarks. This post is brought to us by Vatsala Sahay, an enterprising 4th year student of NLSIU. Without further ado:
A Defence of Non-Conventional Trademarks
Non-conventional trademarks represent an exciting branch of trademark law. While in India, apart from the shape of the Zippo lighter, the Yahoo yodel and the sound mark registered by Allianz Aktiengesellschaft, no other non-visual and hence non-conventional trademark has been registered, in the USA and in the EU, non-conventional trademarks ranging from the smell of freshly cut grass (for tennis balls) to the Intel jingle have received trademark protection. The registration of sounds, smells, shapes, colours however has received criticism from various quarters. In this piece I argue that the inclusion of non-conventional trademarks in the trademark regime is a positive phenomenon. While I will concentrate on scents, sounds and shapes, the argument in my opinion applies to all non-visual trademarks.
I. The “Desirability” of Non-Conventional Trademarks
One of the common arguments against non-conventional trademarks is that they are leading to an undesirable restriction in free intellectual property resources. Therefore it becomes imperative to first ask whether they should be registered?[i]
According to me, assuming that a particular non-conventional mark is distinctive and is not functional, a non-conventional mark like sound, smell or shape should be given trade mark protection. Non-conventional trademarks cater to a segment of society which has, in the opinion of the researcher, been ignored in the earlier trade mark regime. I refer here to those for whom visual perception often becomes difficult or even impossible: the visually impaired[ii] and the illiterate. Non-conventional marks encourage undertakings to develop new and innovative ways of branding. Companies reach out to newer markets, increasing benefits for themselves and a new segment of purchasers. Marks such as shape, smell and sound, embodying multi-sensory perception, enable the aforementioned consumers to make more beneficial purchasing decisions. Their identification of what they prefer incentivizes quality production for the holders of these marks. Registration prevents unjust enrichment.
It must also be noted that given patent, copyright and trademark law are three different branches of intellectually property law, performing different functions, the argument that non-conventional trademarks are undesirable because they are making inaccessible free intellectual resources, for instance classical music over which no one has a copyright, is also not tenable. As McCarthy has remarked, “One cannot come to the bottom-line conclusion that any item is “in the public domain” until one has exhausted all of the possible areas of exclusive intellectual property rights.”[iii]It must also be noted that just because something has received copyright protection does not mean that it cannot be registered as a trademark. Therefore, hypothetically, Stone Cold Steve Austin, the famous wrestler, can get the sound of glass shattering which is played every time he mad an entry, trademarked, even if another musician has a copyright over it!
Another contention that this is leading to a slippery slope, that if smell receives protection now, a vista of intellectual property becomes exposed to potential registration, is, in the opinion of the researcher, not a valid contention for arguing in favour of non-registration. It is opined that the provided the mark is not functional and is distinctive, there is no reason to prevent anything from receiving protection. Visual perceptibility should not be and is not a sine qua non for building brand association in the minds of the consumers. As observed above, non-conventional trademarks do fulfill the traditional purpose attached to trade mark protection. They also provide additional benefits. Thus, they should receive trade mark protection.
II. Non-Conventional Trademarks and Nuances of Registration
After concluding that there is no reason for not including smells, sounds and shapes as marks, the next question to be asked is: are these marks capable of registration? The two requirements which are relevant for this discussion are: distinctiveness and graphical representation.
I. Are Non-Conventional Trademarks Distinctive?[iv]
Regarding distinctiveness, it is arguable that smells, sounds and shapes often are a feature of the product, possibly even essential (and therefore functional), and hence are not distinctive.[v] For instance, a consumer may instantly recognise the presence of paint through its smell. However the smell cannot be trademarked by, for instance, Asian Paints because it is a smell common to all paints and is the consequence of its composition. However, it can be simultaneously argued that consumers associate a certain smell with a product, the best example being the rose fragrance and the Sumitomo tyres, and hence trade mark protection should be granted. I think this dilemma can only be solved on a case to case basis and it is not possible to make a general proposition that non-conventional trademarks should not receive trade mark protection on account of lack of distinctiveness.
II. Are Non-Conventional Trademarks Capable of Being Graphically Represented?
This question begets a careful analysis of existing judgments on methods of graphical representation of these marks. In the context of shapes, it is plain that they are capable of being graphically represented. For shapes, passing the tests of functionality and distinctiveness become more difficult. The discussion on the aforementioned capability however assumes complexity in the context of sounds and scents.
Sound and the Shield Mark Criterion
In the Shield Mark case, [vi]the ECJ held that musical notes comprising a stave and cleft is an intelligible, precise and stable method of representing sound and hence is a satisfactory form of graphical representation.
However, I am of the opinion that the criterion is not completely satisfactory. The first issue is this: can graphical representation comprising a stave and cleft comprise intelligible representation? In fact, I think the same is not intelligible representation and in fact, caters to a music literate audience.[vii]
Significantly, the Court seems to have preempted this. The Court did note that even if not “immediately intelligible”, the representation was still “easily intelligible”. While this is true, in the researcher’s opinion there can be simpler, equally precise, and more intelligible representation. It is noteworthy to observe before the Shield Mark case, Metro-Goldwyn Mayer (“MGM”) had applied for a trademark for its lion roar. (see Metro-Goldwyn Mayer Lion Corporation’s Appeal relating to Community Trade Mark Application No. 143 891, Case R 781 / 1999-4, Decision of OHIM Fourth Board of Appeal of 25 August 2003, as corrected on 29 September 2003). The graphical representation of the roar was in the form of a sonogram. A Board of Appeal ruled that sonograms in principle constituted valid graphical representation; however in that particular case, since time or frequency could not be made out from the sonogram, there was no precision. The Shield Mark case, in not considering sonograms and stressing only on musical notes, is at divergence with the decision in MGM.
Moreover, representation comprising musical notes can only be extended to musical works. The Shield Mark decision thus, in not envisioning non-musical sounds had, perhaps inadvertently, restricted the number of potential sound trademarks.
It is however heartening to note that in 2005 the OHIM, in the context of non-musical notes, has taken the American way and has accepted representation by means of an oscillogram or sonogram accompanied by the sound file.[viii] To make the representation more clear, it is suggested that a written description of the sound too should be given.[ix] Unfortunately, as can be gleaned from The Draft Manual (Revised) for Trademark Practice & Procedure (specifically s. 18.104.22.168), India has not upgraded its law on the same and continues to only endorse the Shield Mark criterion.
Scent and the Sieckmann Criterion
The ironical aspect of the Sieckmann case[x] is that there is no Sieckmann criterion. The ECJ in ruling that smells are registerable, but in rejecting the exhaustive list of methods of representation suggested and not suggesting any new method, has cast great uncertainty over the registerabilty of smells. It is submitted that if musical notes, in spite of not being “immediately intelligible”, could be deemed to be valid representation by the ECJ in Shield Mark then the same standard should be applied to chemical formulae and they too should be considered to be valid in the context of scents. Formulae are clear and precise in their representation. Admittedly, formulae only represent the origin of the smell, that is, the substances. Possibly, along with the chemical formulae, the method of preparing the substance with temperature and other conditions being specified,[xi] and a written description of the smell, is a suitable alternative.[xii]
[i] In my opinion, such an argument can be made when any mark, visual or non-visual, is sought to be trademarked. Curiously, the only rationale that is stated for the distinction is that non-visual marks are not capable of graphical representation. Such a ground, even assuming is valid, cannot be a reason for suggesting that non-conventional marks lead to an undesirable restriction. It is a ground for arguing why non-conventional marks are incapable of registration. The argument here however is at a first principle level: assuming non-conventional marks are capable of registration, is it desirable that they be registered?
[ii] See David Vaver, “Unconventional and Well-Known Trademarks” Singapore Journal of Legal Studies 1 (2005) at 18.
[iii] J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (II) (4th edn., St. Paul: West Group, 2000) at 6-9. It must also be noted that an existing copyright over something will not prevent it from getting trademarked. As has been noted by an American court in the context of the character of E.T, in the eponymous film: “A character is deemed an artistic creation deserving copyright protection and may also serve to identify the creator, thus meriting protection under theories of trade mark”. See Universal City Studios, Inc. v J.A.R. Sales, Inc., 216 U.S.P.Q. 679 (C.D. Cal. 1982).
[iv] I refer here to both inherent distinctiveness and acquired distinctiveness.
[v] See James C. Chao, “Recent Trends in Asian Trademark Law”, 95 The Trademark Reporter 883 (2005) at 894.
[vii] Also see David Vaver, “Unconventional and Well-Known Trademarks” Singapore Journal of Legal Studies 1 (2005) at 8.
[viii] See S. 7.6.1, The Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part B, Examination, available at http://oami.europa.eu/ows/rw/resource/documents/CTM/legalReferences/partb_examination.pdf (Visited on 1st September, 2010).
[ix] The same has also been suggested by David Vaver. See David Vaver, “Unconventional and Well-Known Trademarks” Singapore Journal of Legal Studies 1 (2005) at 9.
[x] Ralf Sieckmann v Deutsches Patent und Markenamt, Case C-273/00, December 12th, 2002, European Court of Justice.
[xi] As unlike musical notes which one can play on a piano to obtain the tune, the chemical formula may not enable one to get the substance which has the smell; the same elements can react differently under different atmospheric conditions and in different quantities to give different substances.
[xii] In this regard, the method used in chemistry to describe how students can get a particular flame colour is a suitable analogy. The exact method of preparing the substance which gives the flame, with quantities and atmospheric conditions being specified, is stated in chemistry books when the flame colour is being discussed.