unconventional trademarks trademark types trdemark infringement laws

1. CONTENTS
• Marks that cannot be registered
• Distinctiveness
• The spectrum of distinctiveness
• Difference between TM, SM and
®

2. MARKS THAT CAN’T BE REGISTERED
• Generic terms
• Scandalous or immoral marks
• Deceptive terms

3. • Flags and official hallmarks
• Descriptive terms
• Similar

4. Distinctiveness
• This requirement is necessary to the nature of
trademark
• A trademark may be eligible for registration,
or registrable, if it performs the essential
trademark function, and has distinctive
character

5. The spectrum of distinctiveness
•
•
•
•
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Fanciful marks
Arbitrary marks
Suggestive marks
Descriptive marks
Generic marks

6. • Fanciful marks:- A fanciful / inherently
distinctive trademark comprises an entirely
invented or "fanciful" sign. For example,
"Kodak" had no meaning before it was
adopted and used as a trademark in relation
to goods, whether photographic goods or
otherwise.

7. • Arbitrary marks:- An arbitrary trademark is
usually a common word which is used in a
meaningless context (e.g. "Apple" for
computers). Such marks consist of words or
images which have some dictionary meaning
before being adopted as trademarks, but
which are used in connection with products or
services unrelated to that dictionary meaning.

8. • Suggestive marks:- A suggestive trademark
tends to indicate the nature, quality, or a
characteristic of the products or services in
relation to which it is used, but does not
describe this characteristic, and requires
imagination on the part of the consumer to
identify the characteristic. Suggestive marks
invoke the consumer’s perceptive imagination.

9. • Descriptive marks:- A mark is considered
merely descriptive if it describes an
ingredient, quality, characteristic, function, fea
ture, purpose, or use of the specified goods or
services

10. • Generic terms:- A generic term is the common
name for the products or services in
connection with which it is used, such as "salt"
when used in connection with sodium
chloride. A generic term is not capable of
serving the essential trademark function of
distinguishing the products or services of a
business from the products or services of
other businesses

11. Difference

12. UNCONVENTIONAL TRADE MARKS
The following types of marks will come under
the category:
- Colour trade marks
- Sound marks
- Shape of goods, packaging,
- Smell trade marks
- Hologram

13. Visible
signs
words, letters, numerals
drawings, colors
Hologram
Motion
shape
Non-visible
signs
sound (audio)
smell (olfactory)

14. Core requirements
substantial:
distinctive character
Non functional
procedural:
graphical
representation
(register
transparency)

15. Graphical Representation
that Article 2 of the Directive must be interpreted as meaning that a
trade mark may consist of a sign which is not in itself capable of
being perceived visually, provided that it can be represented
graphically, particularly by means of images,
lines or characters, and that the representation is
clear
precise
self-contained,
easily accessible,
intelligible
durable
objective.

16. COLOUR MARKS
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17. A single image delivers a lot of information in a very short time because we
perceive an image all at once, whereas reading or hearing often takes
significantly longer to process the same information.
Many of the most recognizable brands in the world rely on color as a key
factor in their instant recognition.

19. Natural and Universal Color Symbolism for Brands
FedEx's two different color schemes are the best examples of the "universal"
symbolism of colors. Green communicates ground services; orange communicates the
high energy and speed of air transportation.

20. In order to constitute a trade mark, a colour or combination of colours
must be capable of distinguishing the goods or services of one trader from
those of other traders.

22. PROBLEMS IF SINGLE COLOURS ARE REGISTERED
SHADE CONFUSION
COLOUR
DEPLETION
ANTI DISSECTION

23. SOUND MARKS
• Depends on aural perception of the listener
which may be as fleeting as the sound itself.
• If a sound lingers in the mind of the listener
and is so inherently different or distinctive
that it causes the mind of the listener to be
awakened when heard and
• the listener subsequently associates a source
or event with that sound then the sound may
be eligible for trademark.

24. Modes of graphical represntation
•
•
•
•
•
Séquence of Musical notes
Sonogram
Audio tape recording
Onomatoepic description
Musical notation specifying pitch and
duration of sound
• Electronic application with an attached
sound file.

26. Sound marks registered in India
• 3- note Yahoo Yodel
• ICICI’s Jingle
• Allianz’s sound mark

27. Sony to trademark
‘Why this kolaveri
di’
New Delhi: After its ‘viral effect’ the
Tamil song Kolaveri Di will soon
achieve another feat. Music label Sony
Music Entertainment is planning to
trademark the song’s first line ‘Why
this kolaveri di’. This essentially means
that the ‘soup song’ popularised by
actor Danush will become the first
song in India to have its first line
trademarked.
According to reports, Sony Music
wants to trademark the phrase to use
it as a brand and also to stop others
from doing it.

28. OLFACTORY MARKS are potentially registrable, as they can indicate commercial origin
of goods or services. But in practice it is difficult to fulfil the requirements of graphical
representation.
As a marketing strategy, manufacturers of goods introduce smells of scents to make
the use of the products more pleasant or attractive. These goods could include cleaning
preparations, cosmetics and fabric softeners. Even less obvious goods are now
manufactured with particular scents to add to the product’s appeal, for
example, magazines, pens, paper and erasers

29. examples
•
•
•
•
•
•
Smell of rose for tyres
Smell of freshly cut grass for Tennis balls
The odour of beer for dart flights
Smell of plumeria blossoms for yarn
Smell of vanilla for office files
Cherry scent for synthetic lubricants

30. Shape as a trademark:
the trade mark shall not be registered if it consists
exclusively of –
a) the shape of goods which results from the nature of goods themselves; or
b) the shape of goods which is necessary to obtain a technical result ; or
c) the shape of goods, which gives substantial value to the goods

31. Shapes — EU — Examples
Philips three-headed rotary
shaver
Coca-Cola bottle
Bang & Olufsen
loudspeaker
Dishwasher tablet

32. “You’d Better Shape Up,” Says Ukraine’s Highest
Commercial Court, in Invalidating Ferrero’s Trademark
Registration for Product Configuration

33. Motion Trademarks
Moving images in the form of a film clip, video, animation, logos etc can also
qualify for trademarks in some countries. Motion trademarks may also be known
as animated marks, moving marks, or movement marks.
A static image of the Columbia Motion Trademark

34. The arrangement and stages of opening of the doors of a
Lamborghini

35. Indian trademark law
• Indian trademark law statutorily protects trademarks as
per the Trademark Act, 1999.
• The law of trademark deals with the mechanism of
registration, protection of trademark and prevention of
fraudulent trademark.
• The law also provides for the rights acquired by
registration of trademark, modes of transfer and
assignment of the rights, nature of
infringements, penalties for such infringement and
remedies available to the owner in case of such
infringement.

36. History of Indian trademark law
• The first statutory law related to trademark in India was the
Trade Marks Act, 1940.
• In 1958, the Trade and Merchandise Marks Act, 1958 was
enacted which consolidated the provisions related to
trademarks contained in other statutes like, the Indian
Penal Code, Criminal Procedure Code and the Sea Customs
Act.
• The Trade and Merchandise Marks Act, 1958 was repealed
by the Trade Marks Act, 1999 and is the current governing
law related to registered trademarks

37. Trademark Act 1999
• According to the Trade Marks Act, 1999, “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.
• A mark can include a device, brand, heading, label, ticket,
name, signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any such
combinations.

38. Governing Body
• Trademarks are administered by the Controller General of
Patents, Designs and Trade Marks.
• Which is a government agency which reports to the
Department of Industrial Policy and Promotion (DIPP).
• It is responsible for intellectual property rights relating to
patents, designs, trademarks, and Geographical indication
of goods and oversees the initiative relating to their
promotion and protection.
• Whole of this structure comes under the Ministry of
Commerce and Industry.

39. Learnings
• Trademarks establish goodwill between the source of a
product or service and the consumer.
• They uniquely associate a product or service with a
particular source, even if that source is unknown to the
consumer.
• A well-chosen and well-publicized trademark often has
value far beyond the physical assets of a company so it
should be protected properly.