An Analysis of the Contours of the Non-Conventional Trademarks in India

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The development of non-conventional trademarks in the arena of trademarks as far as intellectual property rights are concerned has been immense. And, while the developments across the world suggest that non-conventional trademarks are the fastest gaining ground, India’s approach towards adopting this upcoming concept in the trademark arena makes for an interesting study. However, as obscure as non-conventional trademarks may appear, the legal barriers to their registration are significant.

A trademark is defined in Article 15 of the TRIPS Agreement as any sign, or combination of marks, capable of identifying one undertaking’s goods or services from those of other enterprises. It further stipulates that members may demand clearly discernible indications as a condition of registration.

This implies that, in terms of the TRIPS Agreement, the trademark does not have to be physically discernible. Furthermore, Article 1 of the TRIPS Agreement states that members are not required to enact broader protection in their laws than is required by the aforementioned agreement. This implies that the Member States may or may not need a trademark to be physically discernible or capable of graphical depiction.[1]

The sole requirement is that the provided sign be capable of differentiating one undertaking’s goods or services from those of other undertakings. This is because the basic role of a trademark is to differentiate one undertaking’s goods or services from those of other undertakings; whether a mark is visually apparent or not, is irrelevant.[2]

Here, the author will analyze the challenges faced by non-conventional trademarks and their registrability under the Trade Marks Act, 1999 to understand the complete profile of such marks in India.

Meaning of Non – Conventional Trademarks

Non-traditional trademarks are marks that do not fall within the traditional set of marks, such as those made up of letters, numerals, words, pictures, or combinations of one or more of these elements, and thus include markings based on appearance, sound, smell, and texture.

Certain types of non-traditional trademarks have recently gained acceptance as a result of legal amendments broadening the scope of trademarks. And this is possible because of international IP treaties, such as the TRIPS, which establish a uniform, all-encompassing legal definition of “trademark”.

Challenges Faced by Non-Conventional Trademarks:

The trademark registration process has evolved slowly for the traditional subject matter. Non- traditional trademarks have failed to gain momentum. The applicant who wants to register for the non-traditional subject matter has to clear various hurdles. Many of these difficulties are covered more below;

Functionality Issue: The hurdle of registering these non-traditional trademarks and demonstrating their uniqueness is whether such indications act as a “functional element” of the associated items, as other traditional trademarks

Under trademark law, registering a trademark over a product’s functional characteristics is strictly banned. The functional characteristics of a mark are those aspects that are derived from the nature of the good or any essential element present in the good or service. The court in the Kellogg Co.[3] case, which is also regarded as the “basis of the functionality doctrine,” concluded that product designs that are inherent in functionality cannot be protected because doing so would restrict market competition.

In such instances, it is made clear that protection cannot be granted to a functional feature of a brand, even if it has acquired distinctiveness, to stimulate competition and minimise monopoly in the market.

Graphical Representation: Another impediment is that graphically displaying a fragrance or a smell mark by providing a chemical formula or composition information is problematic since it is intended to reflect the product rather than the smell of that thing.

Although Article 15 of the TRIPS agreement doesn’t mandate graphical perceptibility requirements for trademarks, it does allow member countries to include or exclude graphical perceptibility criteria in their domestic trademark legislation. As a result, to get trademark protection in countries like India, the trademark must comply with the rules for the graphical depiction of a mark. The Indian Trademark Act defines a trademark as “something capable of being presented graphically,” indicating that the mark must be capable of being presented on paper and published in the trademark’s official journal.[4]

In Shield Mark v. Kist[5], this issue of visual representation attached to the registration sound mark was considered. The Court further recognized that, while not “immediately clear,” the graphic illustration is legible. Here, the Court also relied on the Sieckmann rule, according to which the representation should be more transparent, clearer, precise, and attainable.

Therefore, another hurdle is that it is difficult to graphically portray a fragrance or an odour mark by providing a chemical formula or composition information since it is meant to reflect the product rather than the odour of that thing.

Distinctiveness: One of the most important considerations for trademark registration is the necessity for originality. Under the trademark regime, a mark can only be registered if it is unique and capable of identifying one proprietor’s products or services from those of others. On The other hand, a mark’s uniqueness might be either innate or acquired. The distinctiveness of a mark is frequently judged in connection to the product or service with which it is linked, rather than in general.

In the case of non-conventional marks, the trademark office should exercise cautiously in the determination of a mark’s uniqueness because there are many non-traditional marks, which are not inherently unique but have gained uniqueness through widespread recognition, either through the use or the context in which they are used,[6] like the smell of grass, which is not inherently unique but may have acquired specificity through widespread recognition.

Thus, the trademark office should deal with these matters with practical flavour. And, these marks should not be protected, or at least proof of distinctiveness should be needed.

Registrability of Non – Conventional Trademarks

The Trade Mark Act defines a trademark as “a mark capable of being expressed graphically and capable of identifying one person’s goods or services from those of another, and may include the shape of items, their packaging, and color combination.”[7] In contrast to US trademark law; there is a need for all trademarks to be capable of graphical depiction.

According to the 2002 Rules, graphical representation refers to the portrayal of a trade mark for products or services on paper. Thus, it is safe to say that pictorial representation is a must for trademark registration in India.

Regarding non-conventional trademarks, the Indian Trade Mark Regime has simply followed EU case laws. The ECJ ruled that sound marks might be registered, but they had to meet the criteria of pictorial representation, which has to be “clear, exact, self-contained, easily accessible, comprehensible, durable, and objective” in comparison to written descriptions of sound, which may lack clarity and quality.[8]  In this regard, the EU’s standards for registering sound marks are far more stringent than the US textual description requirement.

Yahoo Yodel was the very first sound mark to be registered in India. Musical notes were used to depict the yodel. Due to the low number of applications for registration of sound marks, there is a high incidence of ambiguity in the field of non-conventional trademarks. For example, it is currently not clear whether secondary meanings are needed for all sound markers or only for popular sounds rather than for fundamentally unique sounds.


Therefore, the need for visual representation is combined with other conditions that must be met before registration. And if a trademark is not “capable of distinguishing” one person’s goods or services from those of another, then such marks can be registered only if proof can be given demonstrating that they have evolved a distinctive character as a result of their use.

If any of these trademarks are descriptive, they must acquire or attain a second distinct meaning to indicate that the goods or services for which they are used are connected with a certain brand or the owner.

A non-traditional trademark gains distinctiveness and becomes known as a result of its continuous and prolonged use among the general public, and consumers associate such non-traditional trademarks with their brand or the owner; such trademarks are registrable under the Indian Trademark Law. The granting of a non-conventional trademark would inspire other firms to develop novel and creative ways to brand and market their products.

End Notes                                                                                    


Law International 2006).

[2] Id. at 212.

[3] Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938)

[4] The Trade Marks Act, § 2 (1) (zb), No. 47, Act of Parliament, 1999 (India)

[5] Shield Mark BV v. Joost Kist, [2003] EUECJ C-283/01

[6] Rachna R. Kurup & Nimita Aksa Pradeep, Non-Conventional Trademarks In India: The What, The Why And The How, 01 E-JAIRIPA 131, 144 (2020).

[7] Supra note at 5

[8] Supra note at 6

This article has been submitted by Akshita Gupta.

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