Non Conventional Mark: A Legal

Analysis

Abstract
Article 15 of the TRIPS Agreement defines Trademark as any sign, or any combination of
signs, capable of distinguishing the goods or services of one undertaking from those of other
undertakings. It further states that Members may require, as a condition of registration, signs
to be visually perceptible. This means that it is not compulsory for the Trademark to be
visually perceptible so far TRIPs Agreement is concerned. Further, Article 1 of the TRIPS
Agreement states that Members are not obliged to implement in their law more extensive
protection than is required in the aforesaid agreement. This means that the Member States
may or may not require Trademark to be visually perceptible or capable of graphical
representation. The only necessary condition is that the given sign shall be capable of
distinguishing the goods or services of one undertaking from those of other undertakings.
This is because the primary function of a trademark is to distinguish the goods or services of
one undertaking from those of other undertakings, whether a mark is visually perceptible or
not doesnt matters. However, the moot question is that whether it is possible for a mark to
perform the primary function of a trademark despite lacking any capability of graphical
representation.
The purpose of this project is to study the registrability of non-conventional trademark under
the trademark regimes of United States and India.

Kritarth Pandey

Electronic copy available at: http://ssrn.com/abstract=2399286

Non Conventional Mark: A Legal

Analysis

I. Introduction
Article 15 of the TRIPS Agreement defines Trademark as any sign, or any combination of
signs, capable of distinguishing the goods or services of one undertaking from those of other
undertakings. It further states that Members may require, as a condition of registration, signs
to be visually perceptible. This means that it is not compulsory for the Trademark to be
visually perceptible so far TRIPs Agreement is concerned. Further, Article 1 of the TRIPS
Agreement states that Members are not obliged to implement in their law more extensive
protection than is required in the aforesaid agreement. This means that the Member States
may or may not require Trademark to be visually perceptible or capable of graphical
1

representation. The only necessary condition is that the given sign shall be capable of
distinguishing the goods or services of one undertaking from those of other undertakings.
This is because the primary function of a trademark is to distinguish the goods or services of
2

one undertaking from those of other undertakings , whether a mark is visually perceptible or
not doesnt matters. However, the moot question is that whether it is possible for a mark to
perform the primary function of a trademark despite lacking any capability of graphical
representation.
The purpose of this Project is to make an attempt for answering this question in respect of
non-conventional trademarks and giving suggestions, if any, required under existing
Trademark regime of India.

II. Non-conventional Trademarks: Meaning

The term non-conventional trademarks encompasses marks which do not fall into the
conventional set of marks e.g. those consisting of letters, numerals, words, logos, pictures,
symbols, or combinations of one or more of these elements, and therefore includes marks
based on appearance, shape, sound, smell, taste and texture. Certain types of nonconventional trademarks have become more widely accepted in recent times as a result of
legislative changes expanding the definition of trademark. Such developments are the result
of international treaties dealing with intellectual property, such as the Agreement on TradeRelated Aspects of Intellectual Property Rights, which sets down a standardized, inclusive
1

Capable of graphic representation and visually perceptibility are different concepts. A

mark that is visually perceptible is always capable of graphic representation. But not all
marks capable of graphical representation are visually perceptible. See Nuno Pires de
Carvalho, The TRIPS Regime of Trademarks and Designs(Kluwer Law International 2006) 234
2
Ibid 212

Kritarth Pandey

Electronic copy available at: http://ssrn.com/abstract=2399286

Non Conventional Mark: A Legal

Analysis

legal definition of Trademark. Single colour marks, motion marks, hologram marks, shape
marks known as three dimensional trademarks or 3D trademarks, and sound marks known as
aural trademarks, are examples of non-conventional trademarks. Traditionally, trademarks
have been visual and graphically recognizable. However, with the increasing diversity of
business ventures, trademarks related to just two dimensional visual representations have
given way to a plethora of nonconventional trademarks that are distinguishable by senses
other than sight. A few are discussed below:

Types of Non-conventional Trademarks

1. Sound Marks
A sound trademark is a non-conventional trademark where the trademark function of
uniquely identifying the commercial origin of products or services is achieved by means of an
audio clip. Under most conventions and statutory provisions the definition of trademark
either encompasses sound as a trademark, or at the very least, does not exclude such marks.
Only a handful of countries have a standard or a set of requirements to be met for sound
trademarks. These standards have evolved largely due to the cases prosecuted, and since even
in those countries the number of applications prosecuted has been limited, guidelines, if any,
are not very well developed.
Although trademark laws passed in the European Union do not explicitly include sound in the
definition of trademarks, the European Court of Justice felt that sound signs could be
registered as trademarks so long as their use made it possible to distinguish the goods or
services of one undertaking from those of other undertakings. To be registered in the
European Union, sounds must not only follow traditional trademark laws but also be
represented graphically in a way that is clear, precise, self-contained, equally accessible,
intelligible, durable and objective. In general, applications in the form of musical notations
describing the sound meet these requirements, whereas onomatopoeic descriptions do not.
This means that musical notes that can be represented in the form of musical notations are
acceptable whereas noises like a dog barking or a lion roaring which cannot be represented
by a musical notation but has to be described onomatopoeically or through a sonogram
cannot be eligible for a trademark in the European Union. Metro Goldwyn Mayer (MGM)
Corporation had applied for the registration of a sound, that of a Lion roaring, by submitting a
sonogram for the Lions roar. The application has been refused in the European Union.
Interestingly, the same trademark has been granted in the US. In the United States, whether a
Kritarth Pandey

Electronic copy available at: http://ssrn.com/abstract=2399286

Non Conventional Mark: A Legal

Analysis

sound can serve as a trade mark depends on the aural perception of the listener which may
be as fleeting as the sound itself unless, of course, the sound is so inherently different or
distinctive that it attaches to the subliminal mind of the listener to be awakened when heard
and to be associated with the source or event with which it struck. Quite simply this means
that if a sound lingers in the mind of the listener and the listener subsequently associates a
source or event with that sound then the sound may be eligible for a trademark.
2. Scent Marks
A scent may be registered as a trade mark. A scent trade mark is a distinctive smell used in
relation to goods or services to distinguish them from the goods or services of other traders.
To qualify as a trade mark, the scent must be associated with a particular item or product to
which it is applied to add an unusual or distinctive smell. A unique scent can also be
associated with the provision of a service. A scent trade mark can't be just the scent itself in
isolation. For example, a scent trade mark was first recognised in 1990 in the United States,
where a scent, described as a high impact, fresh, floral fragrance reminiscent of plumeria
blossoms, applied to sewing thread.
3. Single Colour Marks
A specific shade of colour can function as a trade mark; however, the process of registration
is not easy. You must show that you have used the colour as a trade mark and that the public
have come to identify that colour with your particular goods or services. Trade marks for
combinations of colours can be easier to register as there may be a less common need for
their use. All goods have some colour but it is primarily used as ornamentation. There are
cases where colour has been allowed as a trade mark. Cadbury's applied to register the colour
purple as a trade mark. They were unable to register the general colour purple but were
successful in registering a specific shade of purple as a trade mark, when used on the
packaging for block chocolate and boxed chocolate.
4. Motion marks
Motion trademarks may also be known as animated marks, moving marks, or movement
marks. The requirements of a motion trademark involve the detailed description of the various
components or elements of the trademarks and their interaction with each other explained in a
sequence of steps. The description of the Columbia motion trademark is described as
consisting of a moving image of a flash of light from which rays of light are

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Non Conventional Mark: A Legal

Analysis

emitted against a background of sky and clouds. The scene then pans downward to a torch
being held by a female figure on a pedestal. The word COLUMBIA appears across the top
running through the torch and then a circular rainbow appears in the sky encircling the
figure. Just like the US, the European Union has also allowed registration of motion
trademarks.
5. Hologram Marks
Holograms have for long been used for security purposes on credit cards, concert tickets,
certain currencies etc. The purpose of use is to prevent counterfeiting and fraudulent
replication, as replication of a hologram is considered more difficult. Holographic trademarks
have been registered by a few European countries and also in the United States. The basic
requirements for a trademark registration apply to a hologram too, i.e., the mark should be
distinctive enough to be used by a business to uniquely identify itself and its products and
services to consumers.
However, the difficulty arises in the method of graphically defining the mark in trademark
registrations. Holograms by their very nature possess multiple images or colors that are
visible only when viewed from different angles. Hence, holograms are difficult to capture in
paper form, because the paper print will not be able to show the movement of the images. The
image may work electronically, but on paper, the published mark will only be a substitute of
the mark itself; a figurative mark which needs graphical representation and adequate written
description if it is to succeed.

III.

Registrability of Non-conventional Trademarks in United States

The Lanham Act of the United States defines trademark, essentially, as any word, name,
3

symbol, or device , or any combination thereof used to identify and distinguish goods or
4

services of one undertaking from those of other undertakings. Thus, there is no requirement
3

The United States Trademark Association Trademark Review Commissions report to

Congress had recommended that the terms symbol or device should not be deleted or
narrowed to preclude registration of such things as colour ,shape ,smell or sound which
function as a trademark. Their suggestion was followed by the US Congress. See Jane C.
Ginsburg et al , Trademarks and Brands-An Inter Disciplinary Critique(Cambridge
University Press 2008)93

15 U.S.C. Sec 1127.

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Non Conventional Mark: A Legal

Analysis

of capability of graphical representation for a trademark. Now, the question is that what is the
importance of graphical representation for a trademark and whether it can be withered away
5

without diluting the primary function of trademark as the source identifier. The purpose
behind graphical representation, while registration, of the trademark is to enable competitors
and others to know what has been trademarked. Registration puts other producers on notice
that a trademark is already in use. This means that the fellow competitors and the public must
know a given trademark in a clear, precise, self-contained, easily accessible, intelligible,
6

durable and objective manner before registration of the trademark. Despite this, there is no
need for a mark to be graphically represented for the registration purposes in the United
States.
The Trademark Rules of Procedure explicitly provides for the registration of sound marks.
Sound marks which are "not used in printed or written form" can be registered when
7

submitted on a disc. However, the criteria for registering a sound mark differs from those
8

traditionally applied to word marks. In Re General Electric Broadcasting Co , General

Electric Broadcasting Company sought to register, as a sound mark, a ship's bell clock as a
service mark for radio broadcasting services. The Trademark Trial and Appeal Board
(T.T.A.B.) held that this sound mark could not be registered because it was not proven to
identify the applicant's services. The Board held that the mark was not inherently distinctive
9

and secondary meaning had not been proven. The opinion, written by administrative Judge
Lefkowitz, stated that "the criteria for the registration of sound marks" differed from
traditional trademark analysis. The aural perception of a sound mark may be fleeting, unless
"the sound is so inherently different or distinctive that it attaches" and awakens the subliminal
mind of the listener when heard and is associated with a particular source or event. The
opinion set forth conditions under which sounds function as source indicators." A distinction
must be made between unique, different, or distinctive sounds and those that resemble or
5

In Oliveira v. Frito-Lay, Inc., 251 F.3d 56, 62 (2d Cir. 2001) the Federal Circuit asserted
that there was no reason why a musical composition could not serve as an indicator of
source. Thus, it was recognized that musical composition can act as a source identifier.
6
See Ralf Sieckmann v. Deutsches Patent and Markenamt, Case C-273/00,12 Dec
2002,European Court of Justice.
7
See Trademark Manual of Examination Procedure Sec. 1301.07(2001).
8

See In re General Electric Broadcasting Co., Inc., 199 U.S.P.Q. 560 (T.T.A.B. 1978).

The concept of secondary meaning is based on the idea that marks that are descriptive
of a product are ordinarily not protectable as trademarks. However, some marks may be
protected if they have acquired an association or secondary meaning for the consuming
public as an identifier of the source of goods. To establish secondary meaning for a
mark , a party must show that the primary significance of the mark in the minds of the
consuming public is not the product but the producer. See Daniel R. Schechter,5 Fordham
Intell. Prop. Media & Ent. L.J. 481. See also Zatarain's, Inc. v. Oak Grove Smokehouse,
Inc., 698 F.2d 786, 791 (5th Cir.1983)

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Non Conventional Mark: A Legal

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imitate 'commonplace' sounds or those to which listeners have been exposed under different
circumstances. This does not mean that sounds that fall within the latter group, when applied
outside of the common environment cannot function as marks for the services in connection
with which they are used. But, whereas the arbitrary, unique or distinctive marks are
registerable as such on the Principal Register without supportive evidence, those that fall
within the second category must be supported by evidence to show that purchasers,
prospective purchasers and listeners do recognize and associate the sound with services
offered and/or rendered exclusively with a single, albeit anonymous, source. In other words,
because of their nature, sound marks require proof of distinctiveness, or in the alternative,
proof of secondary meaning, before being entitled to registration. But a different spectrum of
distinctiveness than that applied to traditional marks is followed. The TTAB has defined the
spectrum as the distinction between "unique, different, or distinctive" sounds on the one hand
and "commonplace" sounds on the other hand. It is pertinent to highlight three issues. Firstly,
there is no need to prove secondary meaning in the case of inherently distinctive sounds.
However, there is neither any explanation of inherently distinctive sounds or commonplace
sounds nor any criteria for distinguishing inherently distinguishable sounds from common
place sounds. Secondly, we can draw a close analogy between sound marks and word marks.
Sound marks that are presumed to be inherently distinctive are similar to the arbitrary or
fanciful marks. Both of them dont require any prove of secondary meaning. In contrast,
common place sounds are similar to the descriptive words in a sense that both require proof
of secondary meaning during registration of the mark. Lastly, Sound marks are different from
the Word marks because the former doesnt require any graphical registration while graphical
representation is necessary for the latter marks. This doesnt mean that sound marks are in
any way inferior to the word marks. They perform the same function as performed by the
word marks.
Thus, the description of the sound is the only means for presenting, in any printed record, the
essence of the mark.

10

This is done because actual sound cannot be represented visually and,

hence, the U.S. system recognizes the description of the sound in the application as the
accepted scope of the mark being sought.

11

Accordingly, sound marks have been registered

with descriptions using onomatopoeia, listed musical notes, and simple declaratory phrases,
but generally there is no preferred method for the description of a sound.
10
11
12

12

See Kawasaki Motors Corp. v. H-D Michigan, Inc., 43 U.S.P.Q.2d 1521 (T.T.A.B. 1997).
ibid
Kevin K. McCormick ,96 Trademark Rep. 1101 2006.

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Non Conventional Mark: A Legal

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The Lanham Act appears to allow the registration of scent marks because it has not explicitly
excluded them. Furthermore, the USPTO has taken an affirmative position on their
registration, recognizing scent marks' ability to fulfill traditional trademark objectives and
permitting scent mark registration on the principal register. The first scent to receive
trademark protection was the scent described as a high impact, fresh, floral fragrance
reminiscent of Plumeria blossoms.

13

In this case, plumeria scent added to sewing thread was

registered as a US trademark. The patent examiner, initially, rejected the application on the
grounds that consumers would not recognize the scent as an "indication of origin." Instead,
they would view the floral scent as a pleasant side effect of the product. The TTAB, however,
took a different position. Noting Clarke's emphasis of the product's scent in her advertising
campaigns and the goodwill she had developed with consumers based on the scent, the TTAB
ruled that Clarke had earned the registration of her scent mark through an adequate showing
of secondary meaning. The plaintiff had sufficiently demonstrated that the scent of plumerias
served the functions of a traditional trademark. After the TTAB's ruling in the Clarke case, the
USPTO altered its guidelines to address the registration of non-traditional trademarks.
The Trademark Manual of Examination Procedures (TMEP) advises examining attorneys that
scent marks must comply with the traditional trademark constraints, such as the functionality
test.

14

On the other hand, the TMEP disregards the traditional requirement of a drawing

when the registered trademark is a scent. Instead, the TMEP requires and emphasizes a
written description of the mark. However, the manual does not describe what a proper written
description includes, the type of language required, or the level of specificity necessary.
Additionally, the USPTO requires the submission of a specimen, though the manual again
fails to detail any specific requirements for such a specimen. Nevertheless, a scent mark need
not be graphically represented for the registration purposes.
Although colour combined with words, designs, symbols, logos and other such
distinguishable signs have been traditionally eligible for a trademark, whether colour alone is
eligible has been shrouded in shades of grey. The distinctiveness of colours and the ability to
differentiate between different shades of a colour have been points in question. The colour
alone rule was founded on two major policy considerations. First, there was concern that with
the limited number of colours, to grant exclusive rights to colours would sooner or later
13

In re Clarke, 17 USPQ2d 1238 (TTAB 1990). The goods for which this scent was required
was sewing thread and yarn required for embroidery.
14
According to the functionality test, if the products feature is essential to the use or
purpose of the article, then thats feature is not a protectable trademark. This test
ensures that the producers do not use trademark law to protect product features that are
vital to fair competition.

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Non Conventional Mark: A Legal

Analysis

deplete the available stock and, thus, be anti-competitive. Second, there was concern that if
colour alone was protectable, trademark infringement suits would lead to lengthy litigations
over shades of colour, which would slow down the process of trademark registration.
However, on March 28, 1995, the U.S. Supreme Court held in Qualitex Co. v. Jacobson
15

Products Co. , that federal trademark law "permits the registration of a trademark that
consists, purely and simply, of a color." The Court allowed the registration of the colour
green-gold as a trademark for press pads used for dry cleaning. The Court noted that the
language of the trademark statute and the underlying principles of trademark law seemed to
cover colour as being eligible for trademark protection.
The Court, however, limited the eligibility of colour trademarks to only those colours that
have attained a "secondary meaning" and are associated with and help to identify and
distinguish a particular brand and thus indicate its source. This means that a colour will not
qualify to be treated as a trademark unless consumers come to associate that colour with a
particular manufacturer or source of goods or services. In addition, a colour cannot be a
trademark if the colour is functional in nature. Under this functionality doctrine, if the
feature of the product for which protection is sought is useful or affects the cost or the quality
of the article, such that granting trademark protection to the feature would put competitors at
a significant disadvantage, the feature is not entitled to trademark protection.

IV.

Registrability of Non-conventional Trademarks in India

Section 2(1) (zb) of the Indian Trade Mark Act defines trademark as 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 ,and . Thus, unlike the US trademark law; there is a requirement
for all the trade marks including that they shall be capable of graphical representation. The
2002 Rules define graphical representation to mean the representation of a trade mark for
goods or services in paper form. Thus, it can safely be asserted that graphical representation
is a sine qua non for Trademark Registration in India.

15

See Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995).

Kritarth Pandey

Non Conventional Mark: A Legal

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The India Trade Mark Regime has simply followed the European Union case law as far as
16

non-conventional trademarks are concerned. In Shield Mark BV v. Kist , the European Court
of Justice held that sound marks were registrable, but they had to conform to the requirement
17

of graphic representation. In another case , it was held that the graphically representation of
mark must be "clear, precise, self-contained, easily accessible, intelligible, durable and
objective. Since description of sound may lack precision and quality, therefore the ECJ has
refused written description of sound as being equivalent to the requirement of graphical
representation. Thus, onomatopoeia cannot be used as it fails in satisfying the requirement of
precision and clarity. In this respect, the European Union requirements for registration of
sound marks are much more than that of the written description requirement of the United
States.
18

The first sound mark that was registered in Indian was Yahoos yodel . The yodel was
represented through musical notes. The important issue is that it is necessary to show
secondary meaning for the unconventional trademarks such as sound marks before allowing
registration of the sound mark. The limited applications on registration of sound mark have
resulted in the prevalence of ambiguities in the realm of unconventional trademarks. For
instance, it is still not clear that whether secondary meaning is necessary for all the sound
marks or merely in the case of common sounds rather than inherently distinguishable sounds.
Nevertheless, the criteria of graphical representation for a sound mark is out of
synchronization with the very purpose of trademark law. The trademark law aims for the
identification of source of particular goods or services through the use of trademark. Since
this function can easily be performed by the sound mark, there is no need to add on other
requirements for the registry of a mark.

V. Conclusion and Suggestion

The TRIPs Agreement does not make capability of graphical representation as a necessary
condition for the trademark. Similarly, the Trademark Regime of the United States does not
require graphical representation of the trademark as a necessary condition for the registration
of a trademark. That is why the criteria for the registration of non-conventional trademarks
16

See Shield Mark BV v. Kist, Case C-283/01, The European Court of Justice

17

See Ralf Sieckmann v. Deutsches Patent and Markenamt, Case C-273/00,12 Dec
2002,European Court of Justice.
18

available at http://spicyipindia.blogspot.com/2008/08/breaking-news-indias-firstsound-mark.html(Last visited on 7- 4-2013)

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Non Conventional Mark: A Legal

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are much more liberal in the United States in comparison to countries where graphically
representability is a necessary condition for a trademark. The Indian Trademark Regime has,
so far, imitated the position of European Union as far as requirement of graphical
representation for a trademark is concerned. The Indian Trademark Act, 1999 puts obligation
of capability of graphical representation for the registration of trademark. Thus, it makes
registration of non-conventional trademarks much more stringent in India than in the United
States. The non-conventional trademarks possess capability of source identifier despite not
easily graphically representable. The working of US Trademark Regime proves this fact.
Thus, we can conclusively hold that the Indian Trademark Act 1999 has put an unnecessary
burden of capability of graphical representation as a condition for the registration of a
trademark. In the increasingly globalized world, the use of sound, scent, colour, motion or
holograms as a trademark is bound to increase in the nearby future. Thus, we should
liberalize our trademark regime by diluting the requirement of graphical representation for
the non-conventional trademarks.

Bibliography

Books referred

Bently & Davis, Trade Mark and Brands (Ginsburg Cambridge University Press
2008)

Shilling D., Essentials of Trademarks and Unfair Competition (John Wiley & Sons
2002)

Statutes referred

Lanham (Trademark) Act (US)

Trade marks Act, 1999 (India)

Articles refered

Arka Majumdar, The Requirement of Graphical Representibility for NonConventional

2006]

Trademarks, nopr.niscair.res.in ... JIPR Vol.11(5) [September

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Non Conventional Mark: A Legal

Analysis

Dev Gangiee, Non-Conventional Trademarks in India,

www.manupatra.co.in/.../BB1047DA-5CCF-41BC-9C82-487F5DC57...

Neha Mishra, Registration of Non-Traditional Trademarks,

nopr.niscair.res.in/.../407/1/JIPR%2013(1)%20(2008)%2043-50.pdf

Kritarth Pandey