ABSTRACT

Trademarks are a type of intellectual property designed to identify goods and services of the trader or an individual in case there is a sale. As one moves away from the traditional marks like logotypes, brand names slogans characters, and packaging styles towards the less conventional marks like scents music holograms, dynamic trademarks, and single-colour marks, there remains the question: how do you fix on paper and make a copy that’s readable of a mark that either one can’t see or it’s impossible to put the mark in writing, for example, a sound trademark. This article discusses the registration and enforcement practices adopted by India and the European Union on non-traditional/non-conventional marks. And, it analyses the influence of artificial intelligence on both these areas. From being based heavily on graphical-representation requirements which were laid down in the cases of Sieckmann v Deutsches Patent- und Markenamt (2002) and Shield Mark BV v Joost Kist (2003), the European Union has moved towards a technology-neutral standard which is in fact a combination of Regulation (EU) 2017/1001 and Directive (EU) 2015/2436. Currently, in India, the graphical-representation requirement under Section 2(1)(zb) of the Trade Marks Act 1999 is still in force. Since the legislation did not have any changes from 1999, it led to conflicting legal decisions most Worth noting the Indian courts giving three different legal opinions on Louboutin’s red sole mark which uses a single-colour trademark in Delhi High Court. After that part of the paper is devoted to analyzing the dual role played by artificial intelligence as (1) an administrative tool, like European Union Intellectual Property Office’s (‘TMview’ and ‘Early TM Screening’), and India’s AI/ML search technology and IP Saarthi chatbot; As the law is developing, we can see different uses of AI as well, e.g. deepfakes and synthetical sound clones may constitute infringement. Then again, the disputes in the so-called metaverse/NFT space (like for instance Herms International v Rothschild, 2022) also show us the new infringement risk. The article further claims that despite the EU reform of 2017 being the first major change to the requirements to be a registrable mark, it was a limited reform as it could only cater to marks falling within the class of signs that it was possible to fix and reproduce in the audio and visual media. That means, for smell and taste trademarks as the case was left by the EU and it was still impossible to provide them with representation in any medium.

Keywords: unconventional trademarks; non-traditional trademarks; graphical representation; Trade Marks Act 1999; Regulation (EU) 2017/1001; artificial intelligence; sound marks; colour marks; metaverse.

1. INTRODUCTION

A trademark reveals the identity of the person who is behind a product in the eyes of the public (Trade Marks Act 1999 Sect. 2(1)(zb); Regulation (EU) 2017/1001, Art. 4). Earlier that role was carried out by visual signs as the visual signs only could be drawn on paper and could be compared in parallel at a glance. Current brands have their own identifying features like engine sounds, lighter clicks, certain specific coloure, jingles, and light choreography – all signs that registration office cannot and was never designed to record. India and the EU deal with the same basic dilemma – how a public register can record a sign which is not able to be drawn or illustrated – in contrasting ways. The EU completely gave up on the graphical representation via the Trade Mark Reform Package 2015-2017. India But in its Section 2(1)(zb), is still requiring graphical representation, even though Trade Marks Rules, 2017 do allow MP3 sound-mark registrations, which seem to clash with the parent statute (Trade Marks Rules 2017 r. 26). AI is now causing double disruption in this area. Firstly, as an administrative tool: the EUIPO’s TMview and the 2025 Early TM Screening Tool will leverage AI image recognition and pre-filing risk assessments (EUIPO 2023 2025); India’s Trade Marks Registry has launched a AI/ML-based search system that is accompanied by the generative “IP Saarthi” chatbot (IndiaAI, 2024) from September 2024. Secondly, it is a tool of infringement: generative AI has the capacities to generate deepfakes and brand sound clones, and to generate NFTs of virtual goods that will be confusing in the marketplaces after being tested in the US context, e.g. Herms International v Rothschild, 2022 related to “MetaBirkin” NFTs. The paper traces the legal structure regulating nonconventional marks, points out where and how the fundamental doctrinal question – representational certainty vs. perceptual variability – appears in both systems, and then discusses from a legal standpoint the problems that the introduction of the technology causes to these systems, leading finally to a few concrete reform suggestions for India.