When I first heard about the word Trademark, all I knew was a pictorial representation of logos; that’s it. But the scope of trademark is way wider and has many other aspects which is lesser known to people. All of us knew the logos of Tata, Mahindra, Nike, and Puma since our childhood. Now we hear Netflix’s intro sound, McDonald’s I’m loving it jingle or Nokia’s Guitar intro after switching on the mobile phone. Each of such sounds alone will remind you of the company that sound is of. So, can Amazon Prime use Netflix’s ‘Ta dum’? The answer is No. Netflix has a trademark for its sound ‘Ta dum’, which gives them exclusive rights to use such mark and bars other illegal or unconsented usage of such sound.
The word trademark has been defined under section 2(zb) of the Trademarks Act 1999, “where any ‘mark’ capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others, may include the shape of goods, their packaging and combination of colours”, the word mark has been defined under section 2(m) of the Trademarks Act, it includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof”. The scope of registration is wide.
So, to get a trademark registered, the proprietors or the agents have to focus on the graphical presentation of their desired mark. If you are successful in presenting the mark graphically, then most of the part is done, and I believe only the opposition ( 4months ) would be pending. The term “Graphical representation” has been defined under section 2(k) of the Trademark Rules, 2017, where any representation of a trademark of any goods or services represented or capable of being represented on paper or digitised form.
But there are several other types of marks, such as sound, smell, colour, motion and taste, which do not fall under any category mentioned above.
Sound mark refers to any kind of musical tone which can be associated with a company. Many companies have developed unique intro music which people tend to associate with such a company. Be it the introduction sound of Netflix’s “ta dum”, Yahoo’s yodel, Nationwide Mutual Insurance’s “nationwide on your side”, “MGM Lion Roar”, Harley Davidson’s unique exhaust sound, EA Sports’ “EA Sports it’s in the game”, etc. By submitting an MP3 format sound, not more than 30 seconds as mentioned under Rule 26(5) of the Trademark Rules, 2017, along with a graphical presentation of the musical notes, is to be submitted.Other potential soundmarks could be the intro music of Amazon Prime, Zomato’s “zummm” (not official name) which is played after your order gets confirmed, JioHotstar’s intro music of trumpets and T-series Intro music “instrumental of Papa meri Jaan song”
Similarly, Smell mark refers to the smell which people associate a company with. Many companies have started to make the best use of Olfaction to make customers remember the scent of their brand. Getting a smellmark registered would be quite a task, because unlike soundmark, where you can easily have a graphical presentation of the sound in musical tones, smellmark cannot be graphically presented as to what it smells like. The best we can do is to submit the composition and a sample of the smell you are claiming. Mentioning the composition of the ingredients of the smell and what it smells like would not suffice for the registry, as the smell might change before its evaluation, the main criteria of graphical presentation would not be complete here, as the mark, which is being desired for is of Smell and you cannot display how does a smell, smell like.
There were attempts made to get Smellmark registered, like the famous Chanel No. 5 perfume smellmark registration, which was rejected by the UK Trade Mark registry. Play-Doh, a famous modelling compound used for making characters, or models, by children, has a unique scent, which was granted a trademark for its unique smell. A UK-based sports equipment company got a trademark over “the strong smell of bitter beer applied to flights for darts”. The UK has also granted a trademark to Japan’s Sumitomo Rubber Company for their “a floral fragrance/smell reminiscent of roses as applied to tyres”.
Similarly, companies have also attempted to get Tastemark registered across the world. The taste of certain foods or beverages is associated with the company providing such goods or services. Think of getting Butter Chicken tastemarked! This would surely end up in chaos. But again, how would one describe how it tastes graphically, either on paper or digitally? The best we can do is to mention all the ingredients. But the intent here is to get registration over the sensation or tingle on your tongue, and what it feels like to your taste buds.
However, attempts to get a tastemark were made, and one such attempt was Eli Lilly v. OHIM- R120/2001, where the taste of artificial strawberry flavour was attempted to get registration, which the EUIPO has rejected, reasoning flavour at in any case had to be excluded because of its inability to be graphically presented which could satisfy the court. In the case of New York Pizzeria vs Ravinder Syal, the USPTO, it was held that a restaurant cannot have a tastemark over its pizzas.
Similarly, Touch/Texture mark has also been attempted to get registration. American Wholesale Wine & Spirits, Inc. got a texture mark for the “velvet-textured cover on the surface of a wine bottle”. The velvet texture was on the entire surface of the wine bottle, and the same was shown by dotted points on a black wine bottle-like image by the applicants. They got their registration in the year 2006 October 17, registration number: 3155702, at USPTO. But in the year 2013, May 24, their mark was cancelled under section 8 of the Lanham Act. This very mark isof the Khvanchkara Winery, registered before but cancelled now. Similarly, The David Family Group LLC got a trademark registered for the “leather-textured wrapping around the middle surface of a bottle of wine”. The leather texture was on the middle part of the wine bottle, where usually the brand labels are stuck. They got the registration in the year 2010 December 28, registration number: 3896100, at USPTO. But in the year 2021 July 30 the mark’s registration was cancelled because the registrant did not file an acceptable declaration under section 8.
Graphically representing a texture mark would be easier, as an approximate feeling can be presented. Like a “ smooth surface, with a feel like a peacock’s feather, having a machine-engraved square structure on equal distances ”, the original description would be better and less vague in its wording.
The Ecuadorian Institute of Intellectual Property granted Diageo, a global manufacturer and seller of spirits and beer, got textured mark for the cracked glass texture on the surface of its Old Parr Scotch Whisky bottle in the year 2004. The graphical presentation of the texture was printed and submitted before the registry.
Similarly, attempts to register the Colour mark were made by many companies. Certain companies are known for the distinctive colours they use, such as Cadbury’s purple or Barbie Pink, and we rarely see the same colour on any other product in the same segment. Getting a trademark on a specific colour would be a difficult process, as you are claiming the exclusive rights to use the entire colour alone, but getting a trademark on a combination of colours is much easier, as the claim here is made on the usage of colours used as combined and not solo usage of colours. There is a difference between Barbie Pink’s usage and Colgate’s White and Red combination. In the case of Barbie, we are using a single colour, whereas in the case of Colgate, a combination of colours is used.
One of the first cases on granting a colour mark was from the USPTO, which granted colour “ Accidental Pink”, which the company has extensively advertised in their “think pink” campaign or the Pink colour used for fibreglass, by Owens- Corning. The company got such a colour accidentally, as the companies in the insulation market had either yellow or white colours, so Owens added red dye to their fibreglass, and accidentally it came as Pink, which the company continued selling and got huge demand for their “pink insulation”. For the first time in the US, a colour was granted a trademark in the year 1985. Along with the registration, the court also provided principles for considering the colour mark applications. They are as follows: The applicant shall show colour:
• Distinguishes the company from its competitors.
• Doesn’t affect the product’s cost or quality.
• Doesn’t serve a functional purpose.
However, another important aspect is that the public should strongly associate such a mark with the company, hoping to obtain such registration. Tiffany Blue,another famous colour in the global market, has been owned by Tiffany & Co. since 1998. The company is known for its box and the colour they’ve used across their website and boxes. No matter the shade, the colour is not available to be used by any company. The Pantone colour of Tiffany blue is called “1837 Blue”, named after Tiffany’s founding year.
As already mentioned above, obtaining a colour mark registration is a challenging task. Companies like Pepto Bismol attempted to register their pink colour mark, but the attempt failed because the court held that patients generally purchase medicines based on their colour, and hence, pink in this case had a functional element (therapeutic element) and was rejected. Rule 26(2) of the Trademark Rules, 2017 talks about registration of a combination of colours and here the focus is on getting registration over an entire colour. A graphical representation of colours would be an easy task, all thanks to the colour codes we have, like Pantone.
Similarly, many have attempted to register Motion marks; companies have invested their Intellect and made some of the beautiful motion pictures, videos, which at a glance get associated with their brand. UTV motion pictures’ lady dancing with different colours, Netflix’s logo disintegrating into coloured lines, Amazon Prime’s intro video, where blue blocks form in such a way that it looks like a smile with an arrow or the famous MGM’s roaring lion. Motion mark mainly constitutes the movement of the elements with or without sound. There is no specific mention about registering a motion mark in the Trademark Act, but the list is not an exhaustive one. The definition of mark under section 2(m) is an inclusive one, mentioned in Assam Roofing Ltd. & Anr vs Jsb Cement Llp & Anr on 9 December 2015 by the Calcutta HC.
Graphical presentation of motion mark could be tricky, because there is no clear mention of submitting the video per se, so the best we can do is give a handout of pictures showing each stage of the motion as a flipbook and let the registry decide based on that. Sony Ericsson made a similar attempt, submitting 20 images to obtain the motion mark, which was initially rejected but was accepted later on. There is a very famous “motion picture” of Columbia Pictures, where a woman carrying a torch emits a bright flash of light in the background, and gradually the word Columbia is displayed. It got its motion mark registered with the USPTO in the year 1996. The mark was described as “ The mark consists of a moving image of a flash of light from which rays of light are emitted against a background of sky and clouds. The scene then pans downward to a torch being held by a lady 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 lady.”
Similarly, many have attempted to have Shapemark registered and have been pretty successful in getting one. To answer the question, what does the shape mark constitute? It means a 3-dimensional shape capable of being represented graphically, or the shape of the goods, or the packaging. But there are absolute grounds of refusal of the shape of goods given under section 9(3)(a), (b)&(c). Where a shape of goods results from the nature of goods themselves, the shape of goods necessary to obtain a technical result or the shape of goods gives substantialvalue to the goods, are not allowed to obtain registration for the shape of goods. The courts have reiterated that to register a shape trademark or shapemark, the mark has to qualify certain requirements, such as,
• The shape must not be generic
• The shape must be so distinctive that, without the label or branding on the shape, the customer could identify the source.
• The shape must have lost its inherent or generic meaning and acquired a secondary meaning.
The Trademark Rules (2017), section 26 sub-clauses 3 and 4 talk about registration of a 3-dimensional mark or shape of goods or packaging. Where the requirement for each is different, for registration of a 3-dimensional mark, one has to submit a 2-dimensional graphic or photograph reproduction along with 3 different views of the mark. In case of registering the shape of goods or packaging, the graphical presentation shall consist of 5 different views of the trademark, and if the registrar feels that the particulars are not clear, then he can call upon specimens of goods or packaging under 26(4)(ii) of Trademark Rules, 2017.
Shape marks have been actively acknowledged by Indian courts, like in the case of Zippo Manufacturing vs Anil Moolchandani. The Delhi High Court ordered in favour of Zippo and acknowledged their shape of lighters. Similarly, the famous case of Nestle vs Cadbury, where Nestle got its 4 rectangular bars of Kitkat a registered trademark in the year 1995, and this was opposed by Cadbury, saying it was not distinctive the court ordered in the favour of Cadbury in the year 2011 and lastly the case was appealed to the UK court of appeal and upheld the previous decision saying the shape was not distinctive.
To conclude, every intellectual creation shall have its place for registration. Covering unconventional trademarks was my attempt at showing the vast options available other than the traditional ones. Both unconventional and traditional creations are made entirely by using intellect. There should be absolutely no reason to reject any intellectual property which doesn’t fall under the already existing categories. Having a different approach to registration would put Indian cases at the forefront while determining any other foreign unconventional trademarks. As we all know, unconventional trademarks have no clear law; it is mostly based on a patchwork of laws. So the statute won’t change unless judges emphasise all the different possibilities of unconventional trademarks in their judgements and encourage registering their trademarks. The domain of unconventional trademarks is yet to be explored in depth. This would be a perfect chance for the Indian IP cases to be cited across borders and have further precedents relying on the futuristic approach followed in India.
The reason to register a trademark is to protect the intellectual property of the individual/company. By protecting a trademark, brands that gained goodwill through the use of such a mark are protected. Similarly, I feel unconventional marks are also at par when we look for a customer’s ability to associate such a mark with the company. Imagine “Papa Meri Jaan instrumental” playing just beforeyour movie, or you feel a particular smell whenever you enter a clothing store, or a colour which, from a distance, you can say must be of Barbie. So, unconventional marks are also successful in getting associated with companies, and people remember such marks. The very first few seconds of UTV’s dancing girl would make people believe that it must be UTV pictures. So, intellect spent on unconventional marks shall not be discarded by saying “it is outside the purview” The graphical representation in unconventional trademarks is a grey area, with lots of possibilities, but not sure which one. By encouraging the filing of unconventional trademarks court might have the opportunity to look for various possibilities of graphical presentation made by the advocates, and a fine outcome is quite a possibility.
-By Advaith Dhanpal (21/07/2025)