Registration of Non-Conventional Trademark
Trademark

Registration of Non-Conventional Trademark

7 Mins read

In the evolving market, where businesses are constantly racing to be identified and stand out from the crowd, creating a unique and recognisable brand is essential. While traditional trademarks like logos, names, and slogans have long been the go-to methods for brand differentiation, companies are increasingly exploring innovative ways to establish their identity. This creativity has given birth to the concept of non-conventional trademarks. These trademarks are different from traditional trademarks and go beyond the ordinary vision to capture people’s attention in different ways. Non-conventional trademarks include elements such as colours, shapes, sounds, smells, and even motions that are intrinsically tied to a brand’s identity. Think of the iconic Tiffany Blue, the distinct shape of a Coca-Cola bottle, or the memorable jingle of the Nokia tune—these are all examples of non-conventional trademarks that have successfully carved a niche in the consumer’s mind. A non-conventional trademark does not belong to any of the conventionally recognised marks In the Indian Trademarks Act of 1999. But like any other mark, to seek protection for a non-conventional traditional mark, it must possess the quality of being differentiated from the rest of others.

In this blog, we shall understand the meaning of non-conventional trademarks, their types, the challenges faced by applicants, and notable examples of successful registrations.

What Are Non-Conventional Trademarks?

Non-conventional trademarks are unique identifiers that go beyond traditional logos, words, or symbols. They represent creative ways for brands to stand out using sensory elements like colour, sound, smell, shape, motion, or even taste. Due to their abstract nature, these trademarks are often more difficult to register and enforce.

Types of Non-Conventional Trademarks:

  1. Colour Marks: This type of mark includes a specific colour or combination of colours immediately associated with a brand. Colours become trademarks when they are distinctive enough to identify the source of a product or service. A famous example is Tiffany Blue, which is closely tied to the luxury jewellery brand Tiffany & Co. Colour marks can be tricky to register, as the colour must be proven to serve a source-identifying function rather than merely being ornamental.
  2. Sound Marks: Sound trademarks mean distinctive sounds that evoke a particular brand. For example, the Nokia tune is a recognizable sound mark. To qualify as a sound mark, the sound must be distinctive and immediately recognizable as belonging to a specific brand, and it must not be a common or generic sound.
  3. Smell Marks: While less common and harder to protect, smell marks are scents that uniquely identify a brand or product. An example is the scent of Play-Doh, which is so distinct that it’s considered a signature of the brand.
  4. Shape Marks: These trademarks refer to the unique and distinctive shapes of products or packaging, such as Coca-Cola’s bottle. Shape marks are powerful in distinguishing a brand from the rest of others as it offers an opportunity to protect its distinctive design elements from being copied.
  5. Motion Marks: Motion marks include animated logos or moving elements associated with a brand. A good example is Microsoft’s Windows boot-up animation. These marks are less common and often require specialized trademark applications, but they can be a valuable tool for brands in the digital space or entertainment industry.
  6. Taste Marks: Although highly rare and difficult to register, taste marks involve specific flavours that are so distinctive that they can be linked to a particular brand. An example might be the unique taste of Coca-Cola’s soft drink.

Process of Registering Non-Conventional Trademarks in India

1. Pre-Filing Search

Before you apply for your non-conventional trademark registration, conduct a thorough trademark search to make sure your non-conventional mark (like colour, sound, or shape) is not already registered by someone else.

2. Graphical Representation

Non-conventional trademarks often need special preparation because they don’t naturally fit into traditional visual forms.

  • Sound Marks: You’ll need to provide an MP3 file of the sound and a visual representation of the sound in the form of a sound wave diagram.
  • Colour Marks: Make sure to describe the shade or colour combination.
  • Shape Marks: Add clear images of the product or packaging from different angles so that your distinctive shape is recognizable.
  • Smell or Taste Marks: These are trickier, as India does not yet have a well-defined system for representing these graphically. However, a detailed written description of the smell or taste is still required.

3. File the Application

Once you gather the essential documents and materials required for registration, submit your application through the online portal of the Controller General of Patents, Designs, and Trademarks, or do it offline at the trademark office. You’ll need to:

  • Choose the correct class of goods or services your trademark applies to (e.g., clothing, food, technology).
  • Pay the required fee and upload all supporting documents.

4. Examination

The Registrar will review your application to check:

  • If it meets all the legal requirements.
  • If the mark is distinctive enough to be considered a trademark.
  • If any issues arise, you’ll receive an examination report with objections, which you’ll need to respond to within the given time frame.

5. Publication in the Trademark Journal

Once the Registrar is satisfied with your trademark application, your trademark is published in the Trademark Journal. This gives the public an opportunity to oppose your application if they believe your mark infringes on their rights.

  • If there is an opposition, you will need to respond to it with legal arguments and evidence.
  • If no one opposes within the specified time (generally 4 months), your application moves forward.

6. Registration

If no objections arise in your trademark application or you successfully counter them, your non-conventional is registered, and you will receive a registration certificate.

Challenges in Registering Non-Conventional Trademarks

Registering non-conventional trademarks—like those based on colour, sound, smell, shape, and taste—can be tricky for several reasons, and this is even more complicated in the world of the metaverse (the virtual world where people interact in immersive digital environments). The main challenges businesses face when trying to register these kinds of trademarks are:

1. Graphical Representation

Trademarks need to be shown clearly in a visual format. However, many non-conventional marks don’t have an easy way to be represented:

  • Sound Marks: These must be written as musical notes or sound waves, which can be hard to capture exactly. A simple example would be the Nokia tune. It’s easy to recognize, but writing it down as a musical score doesn’t always do it justice.
  • Smell Marks: Visually representing a smell is almost impossible, making it a considerable challenge. While some companies have tried, there’s no standard way to capture scents like Play-Doh’s signature smell on paper.
  • Taste Marks: Like smells, tastes are subjective, and there is no clear way to show taste in a legal document. This makes it difficult for companies to register a flavour as a trademark.

2. Distinctiveness

To qualify as a trademark, a non-conventional mark must stand out and be strongly linked to the brand. This is especially tough with sensory marks:

  • Colour Marks: A colour like Tiffany Blue must be proven to be more than just an aesthetic choice—it needs to be recognized by consumers as uniquely identifying that brand. This requires extensive proof that the colour has become well-known, which can take time and a lot of marketing.
  • Smells and Tastes: These marks are hard to establish as distinct because they may not be naturally tied to the brand in the consumer’s mind. For example, a scent might be distinctive, but how do you prove that people associate it with your brand rather than just recognizing it as a pleasant fragrance?

3. Proof of Use

Trademark law usually requires companies to show they have used the mark in commerce, i.e., it has been in the marketplace long enough to be recognized. This can be hard to prove for non-conventional marks. A colour, sound, or taste might have been used for a short period, but how do you show that consumers recognize it as uniquely yours?

4. Subjectivity

Non-conventional marks are often based on senses—sound, taste, smell—which are experienced differently by each person. This subjectivity makes it harder to register such marks:

  1. Smells: One person might find a certain scent memorable, while someone else might not even notice it. This variation can make it hard to prove that a smell is tied to a particular brand.
  2. Tastes and Sounds: Similar issues arise here. One person might recognize the Coca-Cola taste as distinctive, while another might not. Sounds like a jingle may be linked to a brand for some people but not for others.

5. The Impact of the Metaverse

The rise of the metaverse—virtual environments where people interact digitally—adds another layer of complexity. Brands in these virtual worlds need to protect their non-conventional trademarks just like in the physical world, but things are much more complicated:

  • Virtual Goods: Brands selling virtual items or experiences might use colours, sounds, or even unique motions in the metaverse. For example, a digital fashion brand might use a distinctive shade of blue, or a virtual game might feature a particular sound effect. These elements need trademark protection in the same way traditional trademarks do, but proving distinctiveness in a digital world is even more challenging.
  • Immersive Technology: As virtual and augmented reality technologies grow, businesses may start using more senses (like touch, taste, or smell) in digital spaces. But how do you register something like a “virtual touch sensation” or a flavour experienced through VR? This raises new challenges for trademark laws, especially when the way people experience these virtual environments can be so different from the physical world.

Conclusion

Unusual trademarks, such as colours, sounds, shapes, and even scents, are a fun way for companies to differentiate themselves. Although these marks are permitted under Indian law, the process can be complicated because of the country’s stringent requirements for distinctiveness and graphical representation. Businesses can effectively protect these distinctive trademarks by being well-prepared, utilising the mark consistently, obtaining proof of distinctiveness, and consulting an expert lawyer.

Particularly in a time when sensory branding is more crucial than ever, these initiatives not only protect intellectual property but also pave the way for original and creative branding techniques.

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FAQs

1. What is a non-conventional trademark?

It is a type of trademark that includes unique elements like colours, shapes, sounds or smells beyond traditional names and logos.

2. Can a sound be registered as a trademark in India?

Yes, sound marks can be registered if represented graphically and proven distinctive.

3. Are smell marks registrable in India?

Smell marks face challenges due to the lack of a standardized graphical representation method.

4. What legal framework governs trademarks in India?

The Trademark Act, 1999, and Trademark Rules, 2017.

5. How do I prove distinctiveness for a colour mark?

By showing consistent commercial use and evidence of acquired secondary meaning.

6. Is India part of the Madrid Protocol?

Yes, India joined the Madrid Protocol in 2013, enabling international trademark filings.

7. What is the role of the Registrar in trademark registration?

The Registrar examines applications for compliance with legal standards and publishes accepted marks for public opposition.

8. What are some examples of non-conventional trademarks?

Examples include the Yahoo sound mark, Coca-Cola’s bottle shape, and Louboutin’s red soles.

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Advocate by profession, writer at heart. I navigate the world and express it through words, blending legal expertise with a passion for administration, new technologies and sustainability. I am constantly seeking fresh perspectives to inspire and inform my work.
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