Basic requirements of a trade mark: distinctiveness, graphical representation and non-conventional marks

1. The elements

1. A mark within section 2(1)(m): device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape, packaging, colour combination, or any combination.
2. Graphical representation: the mark must be capable of being represented on paper or in the electronic register so that its scope is clear.
3. Capable of distinguishing the goods or services of one person from those of others.
4. Use in relation to goods or services, actual or proposed, to indicate a connection in the course of trade (section 2(1)(zb)(ii)).

2. The spectrum of distinctiveness

The classic formulation comes from Judge Friendly in Abercrombie & Fitch Co. v. Hunting World (US Court of Appeals, Second Circuit, 1976), and Indian courts use it freely.

Section 9(1) of the Act follows this scale. It refuses marks devoid of distinctive character (9(1)(a)), marks consisting exclusively of indications that designate kind, quality, quantity, intended purpose, value, geographical origin or time of production (9(1)(b)), and marks that have become customary in the current language or bona fide practices of the trade (9(1)(c)).

3. Acquired distinctiveness

The proviso to section 9(1) allows registration if, before the date of application, the mark has acquired a distinctive character as a result of use or is a well-known trade mark. Section 32 protects a registration made in breach of section 9(1) if the mark has acquired distinctiveness after registration and before a challenge. This is the doctrine of secondary meaning: a descriptive word comes to mean, to the relevant public, the product of one trader.

• Godfrey Phillips India v. Girnar Food & Beverages (Supreme Court, 2004): a descriptive trade mark may be entitled to protection if it has assumed a secondary meaning identifying it with a particular producer. The case was remitted for that question to be decided.
• Cadila Healthcare v. Gujarat Co-operative Milk Marketing Federation (Delhi High Court Division Bench, 2009): “Sugar Free” had acquired some distinctiveness, but it remained a descriptive expression and the defendant could use “sugar free” to describe its frozen dessert. The owner of a descriptive mark takes the risk of others using the descriptive words honestly.
• Marico v. Agro Tech Foods (Delhi High Court Division Bench, 2010): “Lo-Sorb” for oil was a misspelling of “low absorb”, descriptive, and could not be monopolised against descriptive use even though registered. A registered descriptive mark gets weak protection.

4. Graphical representation

The leading statement is the CJEU’s decision in Ralf Sieckmann v. Deutsches Patent- und Markenamt (2002). A smell described as “balsamically fruity with a slight hint of cinnamon”, filed with a chemical formula and a sample, was refused. The court held that a representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. A chemical formula represents the substance, not the smell; a written description is subjective; a sample is not durable.

The EU dropped the graphical representation requirement from 1 October 2017; a mark now needs only to be represented in a manner that allows the authorities and public to determine the subject matter clearly and precisely, which allows audio and video files. India keeps the requirement in section 2(1)(zb), but the Trade Marks Rules, 2017 permit sound marks to be filed as MP3 files with graphical notation, which loosens it in practice.

5. Non-conventional marks

Colour

A single colour can be a mark in the US once it has acquired secondary meaning: Qualitex Co. v. Jacobson Products (US Supreme Court, 1995), for green-gold dry cleaning press pads. The CJEU in Libertel (2003) accepted that a single colour may be distinctive, but warned of the public interest in not limiting the availability of colours. India’s definition speaks of a “combination of colours”. In Colgate Palmolive v. Anchor Health and Beauty Care (Delhi High Court, 2003), the red and white colour combination of Colgate packaging was protected as trade dress through passing off.

Sound

India’s first registered sound mark, in 2008, was Yahoo’s yodel. Others have since been registered, including jingles used by banks and broadcasters.

Shape

Section 9(3) refuses a mark consisting exclusively of a shape which results from the nature of the goods, which is necessary to obtain a technical result, or which gives substantial value to the goods. These grounds cannot be overcome by acquired distinctiveness. The purpose is to stop trade mark law from giving perpetual monopolies over functional shapes, which belong to patents and designs. The CJEU in Philips v. Remington (2002) refused the three-headed shaver shape, and in Lego Juris v. OHIM (2010) refused the Lego brick, both on the technical result ground.

Smell and taste

No smell or taste mark has been registered in India. The Sieckmann problem of representation is the main obstacle, along with the question whether the public perceives smell or taste as indicating origin rather than as a property of the product.

Trade dress and get-up

The overall look of a product or package is protected through passing off and, as “packaging”, can be registered. In the US, Two Pesos v. Taco Cabana (1992) held that inherently distinctive trade dress needs no secondary meaning, while Wal-Mart Stores v. Samara Brothers (2000) held that product design always does.

6. Use

India allows an application on a “proposed to be used” basis, so actual use is not a precondition of registration. But the registration may be removed for non-use for a continuous period of five years (section 47), and prior use beats a later registration (section 34). Use, not registration, is therefore the ultimate source of the right.

How this is examined

For “basic requirements”, set out the four elements, explain the spectrum with the Indian cases on secondary meaning, add graphical representation with Sieckmann, and use non-conventional marks to show where the requirements bite. The same material supports questions on non-registrable marks and on descriptive use as a defence.