The Rise of Non-Traditional Marks in India
While India’s trademark jurisprudence has taken meaningful steps towards embracing non-traditional marks, the law still lags behind global best practices in addressing newer sensory and dynamic marks.
Introduction
The modern marketplace is increasingly shaped by experience-based branding. As consumers interact with products through sight, sound, scent and motion, trademarks have evolved beyond traditional words or logo marks. The law, however, has had to play catch-up.
In India, trademark protection historically centered on visual marks – names, devices, symbols, or colors. Yet, as global commerce became sensory and digital, the need to recognize non-traditional trademarks, such as sound, shape, motion, scent, etc. has become evident.
Non-traditional marks refer to any signs beyond conventional words or device marks. These may include:
- Sound marks
- Color marks
- Shape marks
- Scent marks
- Motion marks
Statutory basis in Indian Law
Section 2(1)(zb) of the Trade Marks Act, 1999 (“TM Act”), defines a “trademark” as 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 the shape of goods, their packaging and combination of colors.
Further, section 2(1)(m) of the TM Act defines “mark” to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.
The Trade Marks Rules, 2017 (“TM Rules”) later modernized the application process, notably by permitting sound marks to be filed in MP3 format (Rule 26(5) of the TM Rules) along with a graphical representation (such as musical notes), officially signaling India’s openness to sensory marks.
Sound Marks: India’s First foray beyond the visual
India’s most successful category of non-traditional marks has been sound marks. The Yahoo! yodel was one of the first sounds to be granted protection by the (Indian) Trade Marks Registry (“TMR”) in 2008, followed by ICICI Bank’s corporate jingle.
This move reflected a practical shift, recognizing that modern brand recall is often auditory, especially in digital and broadcast advertising. However, the distinctiveness requirement remains stringent and sounds that are commonplace, already well-known, or culturally generic (like nursery rhymes or national melodies) are unlikely to qualify. Only sounds that uniquely identify the commercial origin of goods or services are protectable.
Color and shape marks: Between distinctiveness and functionality
The TMR has also recognized color marks, though typically as part of a combination rather than individual colors. The draft manual of trademarks issued by the TMR, recognizes that marks consisting of a single color may be subject to objections, as they inherently lack distinctiveness. However, such trademarks may be eligible for registration if it can be established that the mark has acquired distinctiveness by way of substantial evidence.
In order to establish acquired distinctiveness, brands would have to show that the single color does not serve a practical purpose (like indicating a product’s flavor or quality) and is uniquely associated with the brand alone. The TMR has, over the years, granted registration to single color marks that meet the stringent criterion related to non-functionality and acquired distinctiveness. These include the red sole of Christian Louboutin shoes and the pink color for cosmetics by Nykaa, amongst others.
The Yahoo! yodel was one of the first sounds to be granted protection by the (Indian) Trade Marks Registry (“TMR”) in 2008, followed by ICICI Bank’s corporate jingle.
Shape marks are explicitly recognized under the TM Act and have been the subject of increasing applications, particularly for distinctive packaging or product designs. However, Section 9(3) of the TM Act excludes shapes that result from the nature of the goods itself, shape of goods which is necessary to obtain a technical result or add substantial value to the goods. Registrations such as the shape of Zippo lighters and the ‘Gorbatschow’ vodka bottle illustrate acceptance of distinctive product configurations that serve no functional role.
Scent or olfactory Marks: The challenges of graphical representation
In India, no scent mark has yet been registered. However, in March 2023, Sumitomo Rubber Industries, Ltd. (“Sumitomo”) filed an application for registration of a smell mark for the floral fragrance / smell reminiscent of roses as applied to tyres. The mark is still under examination and pending acceptance by the TMR.
The draft manual of trademarks specifically highlights that unless the mark is ‘graphically represented’ it will not be considered to constitute as a trade mark. Rule 2(1)(k) of the TM Rules clarifies that “graphical representation means the representation of a trade mark for goods or services in paper form”. Accordingly smell marks do not meet this requirement. With respect to the application filed by Sumitomo, the TMR raised objections stating that the trademarks module does not provide any mechanism for examining smell mark applications; the mark is not capable of graphical representation, as a smell cannot be visually depicted; and there is no mechanism to assess distinctiveness for olfactory marks within the current examination framework.
In response, Sumitomo contended that the smell reminiscent of roses is sufficiently precise, as the same is universally identifiable and can be adequately represented in words. Therefore, the mark meets the requirement of graphical representation under the TM Act. Sumitomo also submitted a report prepared by three scientists from Indian Institute of Information Technology, Allahabad which graphically represents the rose like smell.
Sumitomo argued that the scent of roses bears no direct reference to tyres or their characteristics, making the mark arbitrary in relation to the goods. This arbitrariness enhances the mark’s ability to distinguish Sumitomo’s tyres from those of other manufacturers.
One of the biggest conceptual hurdles for non-traditional marks lies in the requirement of graphical representation. For traditional marks, a word or logo can be easily depicted on paper. But for sound, scent, or motion, “graphical representation” has often been interpreted narrowly. While the TM Rules relaxed this to allow MP3 submissions for sound marks, India still lacks procedural clarity for olfactory marks and the current legal and procedural framework does not accommodate non-visual representations such as scents.
The TMR lacks both the technical infrastructure and legal clarity to examine or store olfactory samples, and until the law evolves to broaden the definition of graphical representation and recognize alternative forms of representation, smell marks are unlikely to be accepted for registration. While Sumitomo’s arguments reflect a progressive interpretation of the law, the absence of procedural mechanisms and judicial precedent poses a significant barrier.
Motion Marks
Unlike traditional marks which are static, motion marks involve animation or a sequence of frames that visually represent a brand. These marks often include a combination of moving pictures and sound, making them distinct and memorable. However, due to legal ambiguities including that the trademarks module does not provide any mechanism for filing or examining motion marks, such marks which are intended to be registered as motion marks are registered as device marks and not explicitly as motion marks. In this regard, India still relies on static images and written descriptions.
Conclusion
India’s trademark jurisprudence has taken meaningful steps towards embracing non-traditional marks, particularly sound, color, and shape marks. Yet, the law still lags behind global best practices in addressing newer sensory and dynamic marks.
As commerce becomes immersive and digital, to foster innovation, India could consider amending the definition of “graphical representation” to permit digital files, issuing guidelines for non-traditional marks to ensure consistency and clarity in TMR practice, encouraging awareness among brand owners to document distinctiveness through advertising, consumer surveys, and media presence and balancing innovation and competition, by ensuring non-traditional marks do not monopolize functional or aesthetic features.
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