A Trademark is a type of Intellectual Property that consists of a recognizable sign, design or expression capable of distinguishing the goods or services of one enterprise from those of other enterprises. According to the Trade Marks Act, 1999 for something to be registered as a trademark three basic requirements needs to be met i.e. it should be-
-Any mark capable of distinguishing the goods/services of one person from those of others
-Used for indicating a trade connection
-Capable of being represented graphically
Also, the word ‘mark’ used here is defined in the act as- “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.
What Marks can be registered as trademarks-
Under the act we can bucket the marks that can be registered as trademarks into two categories-
1. Conventional Trademark
2. Non-Conventional Trademark
(1) Conventional Trademark
These are the general traditional trademarks that we see in our everyday life.
They are also of different types-
In a word mark the owner of the trademark is only claiming rights in the words, letters, numbers, slogans that are present in the trademark without any claim to any particular font, style, size, or colour. This is also known as a standard character mark. This can be a registration for a brand name, slogan or a tag line. McDonalds - I'm loving it, Nike - ‘just do it’ etc are example of slogan tagline that are registered in wordmarks whereas Apple, Google, Tata are example of words of a brand name registered as trademarks.
Device or Label Marks-
Label marks that are also known as device marks can be registered as trademarks. A device mark includes any label, sticker, monogram, logo or any geometrical figure or design of a name other than word mark. The main thing here is that the word used alone would not make it a distinctive label mark. The word should be in a particular style and in any other mode of writing it would not qualify it to be a label mark. For e.g.: the word Airtel will only qualify to be a label mark if it is written as it advertises itself with the red background and the special font not if it is written in a normal font without its characteristic background.
Logos are most common form of this mark. A logo can be a design which is used as a mark for marketing the goods or services. However, the logo must be elaborative and it must be distinctive to identify the goods and services sold under the mark.
Since the definition of trademark is wide enough numerals can also be registered as trademarks that have a distinctive character to identify goods and services of a particular type. For e.g. - 555 generally used under tobacco products, 24×7is a well-known retail store that’s trademarked under this numeral.
(2) Non-Conventional Trademark-
Non-Conventional trademarks are the ones which are beyond the scope of traditional trademarks. They are not so known or specifically mentioned in the Act but since they fulfil the three criteria required under the act for something to be registered as trademark therefore the definition of a 'trademark' incorporates the non-conventional marks as well. Non-conventional trademarks may therefore be visible signs (e.g. colours, shapes, holograms, signature), or non-visible signs (e.g. sounds, scents, tastes, textures).
Shape Marks/ 3-dimentional marks-
If the product or the product’s packaging have a special shape which is capable of distinguishing the goods and services of a trader from those of another they can be registered as trademarks. It also includes any particular or unique packaging of goods that distinguishing it from others. For e.g. the shape of Coca-Cola bottle, Bear shaped nutraceutical, shape of Ferrero Rocher chocolate all has secured trademark due to its distinctive character.
Colour Mark is a single colour or combination of colours if are distinctive in nature can be registered as trademarks. But it can be only registered if the colour is a new invention and the consumers directly link the colour with the brand. Unless the colour identifies the product, it is really hard to prove the distinctiveness with just a single colour. The example for colour marks are: blue gas tanks that are used as campsites, blue white combination of colour for Missionaries of charity, Kolkata.
A sound trademark is a sound or a melody which has a distinctive recognition effect and in order to protect it we should be able to reproduce that sound graphically. This trademark is very important in today’s context as with the growth of e-media these days sound has started to play a big role in identifying a product. For example- Human voice yodelling Yahoo is the first registered trademark sound in India, the lion roar of Metro-Goldwyn-Mayer Corporation, Nokia’s guitar notes on switching on the device are all registered trademarks.
Scent or smell Marks-
Smell or scent marks though cannot be perceived visually yet are considered as a valid trademark if the source identifier of goods is a smell since the the visual perception is not a necessary criterion for as far as the mark can be graphically represented. Though the Scent or smell has to be distinctive of the product and must not be utilitarian or functional i.e. the smell should not be an inherent attribute of the product. Thus, the fragrance of the scent/perfume cannot be registered where the smell is an essential element. The example for scent marks area Dutch company’s tennis balls with the scent of newly mown grass which was able to secure it as its trademark.
Taste Marks are treated similar to the smell marks and can also be registered as a trademark. Taste marks may be easier to represent graphically as the written description of the taste can be used to indicate the taste of the goods but the real problems come in functionality. A trademark for the taste of pizza or pasta cannot be granted a trademark as it inherently performs the same function of adding flavour to the dishes. Therefore, any product meant for human consumption may inherently disqualify for taste protection under trademark given the functionality doctrine. That’s the reason that till date, no registration has been granted for taste marks in the world.
The signature of a person can also be registered as a trademark since a signature is considered to be an inherently distinctive mark. Various celebrities like John Hancock, Taylor Swift, Sachin Tendulkar, Shahrukh Khan have registered their signature as a trademark. The signature needs to be authentic which is distinctive of the individual who signed. However, a signature which is in non-distinctive or in ordinary script / font may not be considered as a signature but will be treated just like a personal name or surname. Even an ordinary person if his signature is distinctive can apply for registration of his signatures. For example, a photographer named Piyush Bedi based in Ludhiana, India applied to register his signatures in class 41 for photography services.
If something gives us the feel of the product through touch it is considered to be a texture mark. For them to be registered as a trademark the applicant need to provide an appropriate representation and description of the texture. Also, the texture should not be attributing to the functional purpose of the product. Therefore, for example, the texture of a toothbrush’s hair cannot be trademarked as they are supposed to be pliable to enable its reach all inside the mouth.
A mark where a three-dimensional picture is shown using the holographic technique is known as a hologram mark. If mark can be represented by a video file or a series of still images that show the variation of the hologram and is distinctive to the goods or service of a particular company or trader then it can be registered as a trademark. For e.g. the Glaxo Group's trade mark for the holograms appearing upon the packaging of their products like toothpaste, mouth wash etc.
Can religious symbols be registered as trademarks?
India is a secular country where people with different religious ideologies and views coexist together. People have faith in the religions they practise, and they respect all of their religion's norms, principles, practises, and customs. Religious symbols of every religion, for that matter, are often considered to be an integral part of that religion. Article 25(1) of the Indian Constitution guarantees to all the citizens the right to freely profess, practice, and propagate their religion in the way they want to. Since people put a high emphasis on religious symbols, and are emotionally and spiritually attached to the things associated with their faith, the probability of trade, industry and business using these symbols to attract consumers also increases. The businesses/trades have been using religious symbols by connecting them with their products. Now here the question arises that can religious symbols be registered as a trademark?
This topic is very subjective in nature. It totally depends upon the examiner evaluating the trademark. On reading the Act we would know that there is nothing preventing such an application, although several questions have been raise regarding Section 9(2)(b) of the Trade Marks Act 1999, which deals with Absolute grounds for refusal of registration. This section says that a mark shall not be registered as a trade mark if it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India. So, for example if someone wants a religious mark to be used as a trademark for brand of footwears then it can hurt the religious sentiments of some people and in that case the examiner can reject the registration of that mark. Also another problem that comes while registration of a religious symbol as a trademark is that one cannot get monopoly over a symbol that belongs to all and religious mark is something that belongs to everyone.
Also in the case of Lal Babu Priyadarshi vs Amritpal Singh, the Supreme Court, clearly said that no one could claim trademark over Gods/Goddesses/Deities or religious books like the Holy Quran, Holy Bible, Guru Granth Sahib, Ramayana, etc. over goods or services.In this case the plaintiff applied for a trademark by the name ‘RAMAYAN’ for selling incense sticks and perfumes. The defendant who was a dealer for the sale of the products for the plaintiff here opposed the application on the ground that the name of a religious book can’t be monopolised by an individual and therefore is against the provisions of the Indian Trademarks Act, 1999. The plaintiff argued that law or act does not bar using the name of a religious book as a trademark, and that there is no evidence to show that feelings of any section of Hindus have been hurt by using that word as a trademark. The court though upheld that-“The word ‘Ramayan’ represents the title of a book written by Maharishi Valmiki and is considered a religious book of the Hindus. Thus, using exclusive name of the book ‘Ramayan’ as a trademark for any commodity cannot be permissible under the (Trade and Merchandise Marks) Act”. For this the court took the reference of ‘The Eighth Report’ on the Trade Marks Bill, 1993, submitted by the Parliamentary Standing Committee, which said any symbol relating to gods or places of worship should not ordinarily be registered as a trademark. And therefore, the registration was rejected even though it in no way hurt the religious sentiments of anyone.
However, there has also been various instances where the religious marks have been granted protection. For example, the ‘Attukal Bhagawathy Temple Trust’ in Kerala had secured trademark protection for the picture of its deity and the title ‘Sabarimala of Women’ under Class 42 for temple Services, social services, welfare services and cultural activities of the trademark act.Also, according to US Patent and trademark office you can trademark the name of a church. But apart all these the main thing is even if you successfully trademark a religious symbol, the legal protection will only prevent your competitors from using the religious symbol in a way that would cause consumers to be confused as to where the goods or services are coming from. The trademark would not in any way prevent any individual from using the symbol in non-competitive ways, nor would it prevent the associated religion from using the symbol in worship. Therefore, this is a subjective topic depending totally upon the case in which someone wants to register a religious symbol as a trademark but the bottom line that is concluded from the above discussion is that the religious symbols, which may hurt the religious susceptibilities of people cannot be registered as a trademark in any case.
By Injila Khan Institute of Law, Nirma University