The Rise Of Non-Traditional Trademarks: Exploring The Protection Of Sounds, Scents, And Colors.

Introduction

Trademarks are fundamental to intellectual property rights, traditionally linked with words, logos, and symbols that differentiate goods and services of one entity from another. However, the concept of trademarks is evolving as non-traditional elements like sounds, scents, and colors gain recognition. This evolution brings new challenges that need understanding and addressing for effective operation in the modern marketplace.

Non-Traditional Trademarks: Categories and Challenges

1. Sound Marks: Non-traditional trademarks like sound marks are gaining prominence. Sounds such as jingles, tunes, and other auditory elements can function as trademarks. For instance, the iconic Nokia ringtone, Netflix’s Ta- dum sound or the Intel jingle are instantly recognizable and associated with their respective brands.

One of the primary challenges in protecting sound trademarks is their graphical representation as required by Section 2 (zb) of the Trade Marks Act, 1999. This section defines a trademark as " trade mark means 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," but does not explicitly mention sound marks, creating uncertainty.

However, Trade Mark Rules 2017 address this issue. Rule 26(5) states that "Where an application for the registration of a trade mark consists of a sound as a trade mark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty seconds' length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations."

Therefore, it is clear that sound marks can be registered as trademarks under the Trade Marks Act and Rules, provided they meet the specified requirements for graphical representation and submission format.

2. Smell/Scents Marks: Scent or smell marks, a rising category of non-traditional trademarks, present unique challenges and opportunities in the intellectual property landscape. While relatively uncommon, these marks are gaining recognition. For instance, Verizon stores are known for a flowery scent, and Subway outlets for the aroma of freshly baked bread. In India, registration of scent marks is rare and typically involves unique circumstances where the smell is considered distinctive and capable of distinguishing goods or services in the marketplace. However, globally, the number of scent marks is growing.

Several famous examples illustrate this trend:

• Hershey's Chocolate holds a registered scent trademark for its chocolate fragrance.

• Singapore Airlines trademarked a specific fragrance used in their hot towels.

• Time Magazine uses a floral fragrance associated with its publications.

• EVA Air's cabins are distinguished by a registered aroma.

• Hasbro's Play-Doh is recognized by its unique smell.

Legal hurdles accompany scent trademark registration, primarily due to the subjective nature of scent perception and the challenge in precisely defining and replicating fragrances to meet legal standards of distinctiveness and representation.

3. Color as Trademark: Color trademarks are another non-traditional type gaining importance in trademark law. They involve using Colors to distinguish products or services in the marketplace. While less common, they are increasingly recognized as color can become integral to a brand's identity and color trademarks are used to protect these visual identifiers globally. For example, the Tiffany Blue color is trademarked by Tiffany & Co. for its jewellery boxes. Similarly, UPS has a trademark for the brown color used on its delivery trucks and uniforms. These trademarks help companies establish a strong visual identity and distinguish themselves from competitors. In India, one notable example of a color trademark registration is the registration of the color "Purple" by Cadbury for its chocolate packaging. Cadbury successfully obtained a trademark for the specific shade of purple (Pantone 2685C) used on its Dairy Milk chocolate wrappers.

Some internationally recognized examples of color trademarks are as follows:

1. Christian Louboutin Red Sole: Christian Louboutin has a trademark for the red lacquered sole of its high-heeled shoes (Pantone 18-1663TP).

2. Coca-Cola Red: The Coca-Cola Company has a trademark for the red color used on its cans and bottles (Pantone 484).

3. John Deere Green and Yellow: John Deere has a trademark for the combination of green (Pantone 364C) and yellow (Pantone 109C) used on its agricultural machinery and equipment.

4. Qualcomm Blue: Qualcomm has a trademark for the shade of blue (Pantone 285C) used in its logo and branding for telecommunications and semiconductor products.

5. Mattel Barbie Pink: Mattel has a trademark for the specific shade of pink used on Barbie dolls and packaging (Pantone 219C).

Despite their increasing recognition, registering color trademarks presents legal challenges. A key obstacle is demonstrating that the color has acquired distinctiveness—meaning consumers recognize it as indicating the source of goods or services. This requires substantial evidence of the color's use and recognition in the marketplace. Nonetheless, the growing number of color trademarks globally underscores their role in brand differentiation and consumer recognition.

Conclusion: The evolution of non-traditional trademarks signifies a significant shift in intellectual property law, reflecting changes in commerce and consumer behavior. While challenges persist in registering and protecting these trademarks, advancements in technology and legal frameworks are improving recognition and enforcement. As businesses innovate and differentiate themselves in competitive markets, the recognition and protection of non-traditional trademarks are increasingly crucial for safeguarding intellectual property rights globally. However, establishing their distinctiveness remains challenging due to their unconventional nature, requiring substantial evidence of widespread use and consumer recognition.

Disclaimer: This article was first published in the S&A Law Offices - 'Intellectual Property (IP-Tech)' newsletter in July 2024.