Unconventional Trademarks and Registration Challenges

Besides traditional trademarks that include device, brand, heading, label, name, there is a new category of modern marks that are protected in some countries which are known as non-traditional or unconventional trademarks. They include three dimensional marks, colour marks, sound marks, smell marks, taste marks, etc. In this blog, we will take a look at the types of unconventional trademarks and some of the challenges faced by them in registration.

Types of Unconventional Trademarks

1. Smell marks: Some manufacturers add a distinct smell to their product to make it unique in the marketplace. Some examples include a tennis ball with the scent of newly mown grass, tires with the smell of roses and darts that smell like bitter beer.
2. Sound marks: In a sound mark, sound is used to uniquely identify the commercial origin of some product or services. In India, the first sound mark was registered in favour of Yahoo Inc. for its three not Yahoo yodel.
3. Taste marks: These types of marks add a distinct taste that identifies the commercial origin of the product. USPTO rejected an attempt to register an orange flavour for pharmaceuticals by N.V. Organon. The Trademark Trials and Appeals Court observed that it becomes difficult to ascertain a taste as a trademark because consumers can only taste the product after buying it.
4. Colour marks: Shades of colours have attracted a lot of attention in business circles as it is a powerful tool for brand identification. Colours are only registrable as trademarks in exceptional circumstances when they have become distinctive through extensive use and acquired secondary meaning.
5. Holograms: In this type of trademark, a hologram is used to perform the function of a trademark. The hologram trademark in the United States for the surface of its credit and Glaxo Group’s hologram that appears on their packaging are some popular examples of hologram trademark.
6. Three dimensional: Shape of goods and packaging is used to perform the function of a trademark. The European Court of First Instance considered the transparent bottle of Contrex distinctive because its overall aesthetic look was deemed aesthetic and consumers easily distinguished its shape from other similar goods. Coca Cola has also obtained the registration of three dimensional trademark in Japan for its bottle.

Challenges to Registration

For a traditional trademark to be registered, two conditions need to be satisfied:

1. The trademark must  be distinctive.
2. The trademark should be capable of being graphically represented.

The problem with most unconventional trademarks is that it is hard to graphically represent them. Let us understand this in detail:

• To obtain registration for a smell mark, the applicant must be able to represent the product’s scent and must show that it is distinct from the product itself. An accurate written description of the smell must be provided and not the chemical formula as it represents the substance and not the actual smell of that substance.
• For sound marks, multiple methods have emerged for visual representation: depictions by oscillogram, spectrum, spectrogram and sonogram. Trademark Registries may demand the representation of sound marks consisting of the musical notation and sound description, a digital recording or any similar combination.
• To represent a taste mark, a written description of the taste and that it is a taste mark must be mentioned. However, it is fairly difficult to satisfy the requirement of distinctiveness in relation to taste marks.
• Graphical representation is not an issue with colour marks, however, it must be proved by evidence that the mark has acquired distinctiveness through extensive use.
• To meet the requirement of registration of a hologram, it is necessary for the application to contain each of the different views depicted in the hologram.
• For a three dimensional trademark to be registered, it is necessary for it to pass the test of distinctiveness. The application must include three different views of the trademark.