ABSTRACT
The Indian legal framework for trademarks has evolved significantly to accommodate the changing dynamics of commerce, branding, and intellectual property protection. While conventional trademarks such as logos, symbols, and wordmarks have been widely recognized and protected under the Trade Marks Act, 1999, the emergence of non-conventional trademarks—including sound, color, shape, and smell marks—presents new legal and procedural challenges. This chapter critically examines the scope, definition, and limitations of trademarks in India, emphasizing the necessity for a functional definition that can effectively integrate non-traditional forms of brand identity.
This study uses doctrinal and analytical methods to explore the evolution, legal protection, and regulation of non-conventional trademarks. It examines key issues like infringement and dispute resolution across jurisdictions, supported by case law and sourced from primary and secondary materials, offering comprehensive insights into their legal recognition and enforcement.
The chapter begins by addressing the overarching issues in India’s trademark law, particularly the doctrine of distinctiveness, graphical representation requirements, and the functionality principle, which often restrict the recognition of non-conventional trademarks. It then explores the scope and definition of trademarks under Section 2(1)(zb) of the Trade Marks Act, 1999, analyzing how Indian courts and authorities interpret brand identifiers beyond conventional word and logo marks.
Further, the chapter delves into the legal framework and challenges of trademarks in India, examining the gaps in statutory provisions, judicial decisions, and the impact of international obligations like the TRIPS Agreement on the recognition and registration of non-conventional trademarks.
The final section of this chapter highlights the registration and procedural requirements for non-conventional trademarks in India, identifying key hurdles such as the lack of statutory clarity, the burden of proving acquired distinctiveness, and the absence of uniform examination guidelines. Through a comparative lens, the chapter assesses India’s position relative to international standards, identifying areas for legal reform and procedural enhancement to strengthen trademark protection in the modern commercial landscape.
Keywords: Unconventional trademarks, trademark infringement, legal jurisprudence, TRIPS Agreement, intellectual property, India, European Union, United States, legal framework.
1.1 INTRODUCTION
In recent years, trademark registries and courts have grappled with nontraditional trademarks, including shapes, fragrances, sounds, colors, and even gestures. This trend reflects a broader interpretation of what constitutes a trademark, focusing on its functional role in identifying the origin of goods and services. Traditionally, trademark systems have centered around conventional marks, primarily words and logos, but there is now a push to recognize a wider variety of signs.
In India, trademark law is still evolving, and it may take several legal precedents and amendments for nontraditional trademarks to be fully recognized. A notable case involved the Taj Mahal Palace Hotel, where the building’s image was granted trademark protection, highlighting the unique nature of architectural trademarks.
The Indian trademark registry has recently started accepting sound trademarks, such as those for Yahoo and Allianz, and the Delhi High Court has upheld a claim for the shape of Zippo lighters. This interest in nontraditional trademarks is timely, as the Trademark Registry has updated its guidelines to include these types of marks, moving away from the more restrictive definitions of the past.
The revised guidelines distinguish between visible signs (like colors and 3D marks) and non-visible signs (like sounds and scents), ensuring clarity for trademark applicants and examiners. However, while Indian trademark law has historically mirrored British law, it is now diverging as British law aligns more with European regulations.
Ultimately, Indian courts have the flexibility to interpret trademark law based on local conditions and can deviate from British precedents. This ongoing development suggests that Indian trademark law will continue to evolve independently rather than being fully influenced by European standards.