The term ‘trademark’, under the modern definition can be defined as a designation used to ‘identify and distinguish’ the goods of a person. Therefore the role that a designation must play to become a ‘trademark’ is to identify the source of one seller’s goods and distinguish that source from other sources. A trademark is an identifying symbol in the form of a word, pictorial representation or a label applied to articles of commerce with a view to indicate to the consumers that they are goods manufactured by a particular person and conform to a certain quality. It gives the purchaser a satisfactory assurance of the make and quality of the article he is buying, the quality being not perceptible by the eye.

Under modern and highly competitive business conditions, a trademark performs four functions:-

  • It identifies the product and its origin and distinguishes them from other seller’s goods
  • It signifies persistent and unchanged quality
  • It advertises the product
  • It creates an image for the product or mentally associates the product with the trade mark in the minds of the consumers creating goodwill

The Trademark Law deals with the precise nature of the rights which a person can acquire, infringement of such rights and remedies available. This branch of law has undergone changes from time to time in tune with the changing pattern of business methods and practice with respect to a competitive economy.

In US, The Trademark Rules of Procedure provide for submission of an audio cassette tape recording for registration therefore it is argued that a sound is indeed capable of being a trademark though a rarity in the world of marks. The theme music used in a motion picture or for a radio or television program can serve as a mark for the movie or program. In the case of fragrance, the Trademark Board in 1990 registered a mark consisting of a fragrance applied to the goods. This fragrance was held to have been proven to serve as a trademark for the goods while the Board specifically noted that it was not permitting the registration of scents or fragrances of products which are primarily sold for their scent, such as perfumes, colognes, and scented household products.

In the backdrop of these two instances, the flavor associated with a good such as medicinal preparations, is widely speculated to be the next possible subject of trademark protection.

Recently the European Court of First Instance dismissed an attempt to register a trademark for the smell of ripe strawberries on the grounds that there is no generally accepted international classification of smells that would identify the mark and that the mark could not be represented graphically and was devoid of any distinctive character. On appeal, the Court accepted that a trademark might consist of a sign that is ‘not in itself capable of being perceived visually, provided that it can be represented graphically, particularly, by means of images, lines or characters’. But it stressed that the representation must nevertheless enable the sign to be precisely identified. Therefore there will be a case for registering smell/fragrance as a mark if the applicant can show that the smell is used as a trademark, it is not an inherent or natural characteristic of the goods but is added by the applicant to identify his goods, the public regard the smell as sign which identifies the applicants goods and the mark is represented graphically.

The Court held that there is no generally accepted classification of smells, as international colour codes or musical notation, to identify an olfactory sign objectively and precisely through the attribution of a name or a precise code specific to each smell. The picture of a strawberry send with the application given the needs for trademarks to be represented graphically was held to be representing only the fruit producing the smell for which the trademark was claimed. Therefore it could not amount to a graphic representation of the mark.

A sign is graphically represented when –

  1. It is possible to determine from the graphical representation precisely what the sign is,
  2. The graphical representation can stand in place of the sign used by the applicant because it represents that sign and no other,
  3. It is reasonably practicable for person inspecting the register, or reading the Trademark Journal, to understand from the graphical representation what the trademark is.

Above is a small glimpse of how trademark is gradually moving from its traditional bastion towards unknown frontiers. As the business community realizes that factors such as flavor, fragrance and sound can enhance their business, they will assimilate more of these intangible factors onto their products to distinguish them from other sellers.

When we look at India The Trademarks Act, 1999 under its definition and interpretation clause defines ‘trademark’ primarily as a mark which is capable of being represented graphically and which can distinguish the goods or services of one person from the other. Going further the section says that the trademark may include shape of goods, their packaging and combination of colours. Before delving into the question of registrability of flavor, fragrance and sound let us first see how the term ‘mark’ has been defined. Under the Act ‘mark’ includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colours or any combination thereof. Therefore ultimately a ‘trademark’ to get registered must be a mark in a graphical representation having attributes to distinguish the particular good from a specific source from another commercial source.

Sound such as theme music or inherently distinctive jingles or any other sound capable of distinguishing the associated product being graphically represented by music notations or sonographs may be registered as trademarks in India. The evidence to prove that the impugned mark will serve as a trademark is not ruled out.

The graphical representation of fragrance is a more than a challenging task but if there could be an accepted classification of smells (as indicated in the case of Laboratoires France Parfume), then an ‘olfactory sign’ could be objectively identified. There are cases of scented synthetic lubricants applied for trademark protection on the distinguishing feature of the scent in foreign jurisdictions. The same propositions apply to flavor also to get registered as trademarks.

The Indian legal framework on trademarks is in tune with trademark laws all around the world and there is no reason to rule out that jurisprudence on trademark law on the discussed aspect will not develop in India.

© Lex Orbis 2006

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