[By Hirday Virdi. LC-II, Faculty of Law, University of Delhi]
In order to stand out from competition and carry on any trade in the commercial world, a trader would have to adopt any mark, symbol or other device so as to differentiate his goods from that of any other person. Such a mark, symbol, or other indicia used by a manufacturer or trader to distinguish his goods from those of another person is known as a “Trade Mark”.
The field of Trade Marks in intellectual property rights has developed extensively over the years. However, with evolving technologies and goods being produced, a number of unconventional trademarks are being introduced that are left outside the scope of the existing legal framework governing trademarks. The present blog attempts to analyse the current Indian legal position on the unconventional olfactory trademark.
TRIPs Agreement and Olfactory Marks
The Trade Related Intellectual Property Rights Agreement (TRIPS) forms the bedrock upon which the Indian intellectual property rights regime has been built. The agreement addresses, inter alia, rights including copyright, trademarks, geographical indications, industrial designs, patents and trade secrets.
Section 2 of the agreement deals with trademarks. Article 15, under Section 2 defines “Protectable Subject Matter” as any symbol, or any combination of signs, capable of separating from those of other undertakings, the goods or services of one undertaking as capable of constituting a trademark. Where these signs are not necessarily capable of distinguishing between the products or services involved, members may depend on the distinctiveness gained by use for registration. Personal names, letters, numerals, figurative elements and colour variations, as well as any combination thereof, are also eligible for recognition as trademarks. Therefore, it can be said that the agreement neither expressly includes unconventional marks as trademarks, nor completely excludes the possibility of registering such trademarks. Notably, however, the agreement recognizes the right of the member countries to require a graphical representation of unconventional trademarks under their domestic legislation. The TRIPS agreement both widens the scope of registration of unconventional marks and narrows it down by not providing clarity on the issue of requirement of graphical representation of unconventional trademarks such as olfactory marks.
Position in India
Section 2(1)(zb) of the Trade Marks Act, 1999 defines “trade mark” as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours”. The term ‘non-conventional trademarks’ refers to those trademarks which are not confined to the conventional definition of a trademark. These marks extend to slogans, motion marks, position marks, hologram marks, smell marks, taste marks and sound marks.
The essential features of the definition of trademark according to Section 2(1)(zb) are:
(i) a mark [Section 2(m), Trade Mark Act, 1999];
(ii) capable of being represented graphically, and
(iii) includes shape of goods, their packaging and combination of colours.
In addition to the definition of trademark, the Rule 25(12)(b) of the Trademark Rules, 2002, mandate that for registration of a trademark, a graphical depiction of the marks should be available, and the same should be represented on a paper in a durable form (Rule 28 and 30).
In the cases of olfactory smell marks, the compulsory requirement of, as stipulated above, being able to be represented graphically, causes a major hurdle to it being recognised as a valid trademark in India. Smell being subjective, varying in perception from person to person, makes it open to interpretation, thus giving rise to complications, and the argument arises that subjective views are inadequate while determining whether the mark functions as a trademark.
A smell can neither be graphically noted, nor it can be stored in a bottle in a Registration office, as owing to its nature it would decay with time, or would rather escape the vessel. One way is to write down the chemical composition of the compound, but the smell of the compound varies with temperature, concentration, humidity and other conditions making it practically impossible for the general public to interpret the formula and determine the smell. So, the only way left is to write down the exact description of the smell to such precision and accuracy that every scope of confusion is eliminated. But the Indian laws, as it stands today, does not permit the use of such methods and require a graphical representation for registration of a trademark.
While there have been a couple of recent registrations of sound marks in India, the potential outcomes of the law perceiving a smell mark as a trademark still do not seem to have been acknowledged and investigated, by both those influenced by its unavailability, and the law itself. With regard to sound marks, the courts in India broke this practice by granting Yahoo! protection as India’s first sound mark. However, it can be argued that sound being an unconventional trademark, is still nevertheless capable of being represented graphically in the form of soundwaves and hence complies with the requirements of the Trade Marks Act, 1999.
In 2009, a Draft Manual by the Trade Mark office was drafted which gave the non-conventional marks a distinct concern and entailed certain provision to deal with the same. However, the manual has not been yet incorporated into the Trade Marks Act, 1999. Consequently, the registration of olfactory marks as a singular trade mark has not yet seen the light of the day in India.
Though the law and practice surrounding the registration of olfactory marks as trademarks internationally is in its early stages and hence somewhat unclear, the removal of the rigidity required by the Trade Marks Act of India would be a welcome move in the right direction. Alternative methods of description, such as one proposed by the EU Trademark Directive – that the sign must be capable of being represented in such a manner as to create sufficient clarity about the mark being protected – would permit extending the protection to non-conventional trademarks like olfactory marks. However, this extension of protection to olfactory marks should be used judiciously, as is the case in USA and Singapore, which partially allow for registration of olfactory marks, excluding those instances where the smell is representative of the product.
Therefore, there is an urgent need to iron out the difficulties associated with the registrability of olfactory marks to avoid any further confusion and contradictory judgements.