Intellectual Property Rights are defined as exclusive rights to any authentic and original creation by the human intellect, which may include any artistic, scientific, literary, or technical creation. These creations or ideas have been conferred the status of the property as a result of public willingness. Intellectual Property Rights confer exclusive rights to the creators and the inventors of the property so as to enable them to derive commercial benefits by fully utilizing the efforts of their intellect. Intellectual Property Rights play an active role in granting protection to the company’s invention, granting a distinct identity, and also provides a platform to commercialize its inventions and products. Thus, intellectual property rights confer a unique identity, which further enables the innovators to reap the benefits of commercialization while also providing for intellectual property protection. In the landmark case of The Institute of Chartered Accountant of India v. Shaunak H. Satya and Ors., the Supreme Court defined the concept of intellectual property as a category of intangible rights protecting commercially valuable products of human intellect. Further, in the case of McDonald’s India Pvt. Ltd. And Ors. v. Commissioner of Trade and Taxes, New Delhi and Ors. the Delhi High Court opined that the nature of the intellectual property and the remedies provided for their enforcement hinge upon the right to exclude others from using it.
It can be termed an instrument that protects investments, money, time, and efforts put in by the creator/inventor of intellectual property by providing a platform to reap the benefits of commercialization of innovation or product and conferring a distinct identity to the company or the brand. It has been well-established that intellectual property rights aids in the economic growth of a nation, by contributing to healthy competition, promoting industrial and technological development while also attracting investments.
With the ever-evolving and rapidly increasing competition in entrepreneurship and business, corporations, start-ups, and businesses are compelled to be unique and distinct from their competitors. In their quest to mark their presence in the corporate world and in the consumer market, trademarks perform a valuable role in giving a unique identity to businesses and corporations.
Trademark refers to any sign or a combination of signs which distinguish a product or a service. As per Article 15.1 of the TRIPS Agreement, a trademark must be distinctive and not deceptive and should include personal name, figurative elements, letters, color combinations, numbers, signs, etc. Hence, a trademark provides an identity or individualizes the goods and services of a given enterprise and distinguishes them from those of its rivals or competitors. It is a distinct or unique sign that enables a product or service of an enterprise to be distinguished from other similar products of other market players by providing it with a unique identity in the consumer base for the said product.
However, with the growing competition, the need to be distinct is becoming important. This has led to the rise of unconventional trademarks. These trademarks are those which do not fall within the conventional or general definition of trademarks and hence, often find themselves outside the scope of legal protection in some countries like India and China. In other words, it can be said that non-conventional trademarks are those which fulfill the criteria of being a trademark but are unable to be recognized as a trademark due to their unusual nature. Some examples of unconventional trademarks include texture, shape, sound, scent, olfactory trademarks, and outline.
Unconventional Marks under the Agreement on Trade-Related Aspects of Intellectual Property Rights
The World Trade Organization Agreement on Trade-Related aspects of Intellectual Property Rights is the Indian Intellectual Property Rights Laws foundation. The Agreement, abbreviated as the TRIPS Agreement, is a multilateral agreement providing for minimum standards for the protection of Intellectual Property. Article 15.1 of the TRIPS Agreement “Protectable Subject Matter” is a symbol or a combination of signs that can distinguish or separate from other enterprises and undertakings. Hence, it can be inferred that the TRIPS Agreement neither expressly includes non-conventional trademarks under its ambit, nor expressly excludes them from the definition of a trademark as well as of ‘protectable subject matter’. Thus, the Agreement neither expands nor contracts the scope of registration of unconventional marks as a trademark of an enterprise. However, with the growing use of non-conventional marks, it is becoming increasingly necessary that unconventional trademarks are given enough coverage under international treaties.
Understanding Trademark in the Indian Context, With Special Emphasis on the Recognition of Unconventional Marks under the Indian Law
The Trade Marks Act, 1999 defines ‘trademark’ under Section 2(1)(zb) as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of other and may include the shape of goods, their packaging, and combination of colours”. Hence, the essential ingredients of a trademark under the Indian Trademarks Act, 1999 are:
- A mark
- Capable of being represented graphically
- Capable of distinguishing goods and services of one person from others
- Includes shape of goods, packaging, and color combination
Further, Section 9 of the Trade Marks Act 1999 provides an absolute ground of refusal to register a trademark. It provides that a trademark shall not be registered where:
- Trademarks are devoid of distinctive character
- It misleads or deceives the public or causes confusion
- It contains matter which is likely to hurt the religious sentiments of communities
- It contains obscene or scandalous matter
- Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950.
Hence, the Trade Marks Act 1999 doesn’t exclude unconventional marks from the scope of registration of trademarks.
However, the Trade Marks Rules, 2002, under Rule 25(12)(b) provides that a trademark must be capable of being graphically depicted and be represented in a durable form on a paper. This mandatory provision excludes the scope of registering smell marks or olfactory marks as a trademark, because of the inability to graphically depict them and represent them on paper. In fact, the right of member states to require a trademark to be represented graphically is also recognized by the TRIPS agreement fragrance, smell, or a scent, due to its very nature can’t be represented graphically, nor on paper. Further, it can’t be stored in a container, as it would escape due to its gaseous nature. Moreover, the smell is subjective as its perception may vary from one person to another, which makes it relative and open to interpretation.
Moreover, if this method is adopted, the general public will not be able to interpret the formula as well. Hence, the method of representing smell as a chemical formula shall not be able to provide sufficient clarity, as is required by the Trade Marks Law.
Further, Rule 26(5) of Trade Marks Rules 2017 provides for registration of sound marks wherein the sound must be submitted in an MP3 format and should be of a maximum of thirty seconds. A graphical representation of its notations must be accompanied by a clear and audible copy of the sound. In 2008, India granted its first sound mark of Yahoo!’s yodel to Sunnyvale In 2011, ICICI Bank became the first Indian entity to successfully register its corporate jingle as a sound mark
For registration of colour trademarks, Rule 26(2) of the Trade Marks Rules 2017 provides that a reproduction of the combination of colours is to be submitted while applying for registration. The onus of showing and proving the distinctiveness of the colour combination is upon the Applicant. In the case of Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd. was observed that the Applicant must provide evidence proving that the colour combination is solely associated with the Applicant’s enterprise and that such colour is associated with the Applicant’s enterprise or brand in the general public or consumer perception.
Further, Rule 26(3) provides for the registration of three-dimensional marks and the shape or packaging of goods as trademarks. Hence, it can be said that the Indian Trademark Laws covers unconventional trademarks to a great extent, but there are no provisions to accommodate scent or olfactory trademarks under the Indian regime.
It is pertinent to note that the European Union Trademark Directive prescribes that a trademark should be capable of being represented in such a manner so as to offer sufficient clarity about the mark If the Indian Trademark Law adopts this directive as regard to registration of trademarks, the unconventional marks can be widely incorporated under the registration procedure of a trademark. Moreover, in 2009, the Indian Trade Mark Office released a Draft Manual which stressed the recognition of non-conventional trademarks and the need to legally incorporate them into the Indian Trademark Law. The suggestions have been incorporated under the Trade Marks Rules, 2017.
Thus, with the growing competition, the need to be distinct is gaining pace. Olfactory marks have a significant impact on the identity of a brand and hence, these must be given their due importance under the international treaties as well as the Indian Trademark Laws.
Jahnvi Sharma is a 4th-year law student pursuing B.A. LL.B. from Guru Gobind Singh Indraprastha University.
The Institute of Chartered Accountants of India vs. Shaunak H. SatyaandOrs., AIR 2011 SC 3336 (India).
McDonald’s India Pvt. Ltd. and Ors. vs. Commissioner of Trade & Taxes, New Delhi and Ors., 2017 VIIAD (Delhi) 350 (India).
 Article 15.1, Agreement on the Trade-Related Aspects of Intellectual Property Rights.
 Section 2(1)(zb), The Trade Marks Act, 1999.
 Section 9, The Trade Marks Act, 1999.
 Rule 25(12)(b), The Trade Marks Rules, 2002.
 Article 15.1, Agreement on the Trade Related Aspects of Intellectual Property Rights.
 Rule 26(5), The Trade Marks Rules, 2017.
 Yahoo’s yodel safe and sound in India, Law Asia, October 16, 2008, https://law.asia/yahoos-yodel-safe-and-sound-in-india/ .
 ICICI Bank gets ‘sound mark’ registration, The Hindu Business Line, March 13, 2011, https://www.thehindubusinessline.com/money-and-banking/ICICI-Bank-gets-lsquosound-mark-registration/article20108922.ece .
 Rule 26(2), The Trade Marks Rules, 2017.
Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd.,2005 (31) PTC 583 DEL (India).
 Rule 26(3), The Trade Marks Rules, 2017.
 Rule 26(3), The Trade Marks Rules, 2017.
 Article 3, Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks, https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32015L2436&from=EN .
 Chapter III, Draft of Manual of Trade Marks Practice and Procedure, https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf .
 Rule 26, the Trade Marks Rules, 2017 deals with the representation of unconventional trademarks.