The first submission under our new venture, Tryst with IP, has been made by Adv. Elizabeth Puthran, Founder Partner at Puthran and Associates. Mrs. Puthran has vast experience in the field of IP and currently chairs the Indian Sub – Committee for Non-Traditional Marks of the International Trademark Association (INTA). Describing the topic of the submission to be an emerging aspect in the field of intellectual property rights and one that is very close to her heart, Mrs. Puthran has written on the concept of Non-Traditional Marks and their growing prominence.

 

Adv. Elizabeth Puthran

When we think of trademarks, it brings to mind all the brand names that we come across on a daily basis which is closely associated with our lives. Traditionally, trademarks are words or symbols or a combination thereof which are used to identify the source of the product, service, or company.

Isn’t it time we get creative when we think about trademarks? Let’s try and see what comes to mind when we hear the word “Non-Traditional Marks” or NTM.  Makes you sit back and think, doesn’t it? What are these NTMs and why is it gaining so much importance and why are companies becoming more and more focused on them? When we see a colour, hear a sound, smell something, come across a shape, see something in motion, what comes to our mind immediately? These are all part of the increasingly important section of Non-Traditional trademarks which are gaining importance in today’s world.  Non-traditional trademarks refer to those marks which do not fall within the ambit of the conventional set of marks and they include colour, sound, smell, touch, motion, position, multimedia, 3D, taste and hologram marks etc.

To be eligible for protection, a trademark has to comply with certain statutory requirements and this is more stringent for NTMs. Maybe that is one of the reasons why not many NTMs are registered in India or for that matter across the world in comparison to regular trademarks. We have a long way to go in India with regard to NTMs as it is still in its infancy, the registration process is rather cumbersome as of now, even though we have a law in place that protects NTMs. We definitely need to ensure that there is more technological advancement in order to be able to protect NTMs. If you look at the Indian Trademark Register, it is rather obvious that the number of NTMs filed are very less as on date.

The registration process of NTMs pose challenges, which is why it becomes important that the procedure of registration must not be ambiguous and the manner of representation of the NTM   must be specific to each unconventional mark. It has to be noted that graphical representation cannot be used for all kinds of marks. We need to have clear guidelines as to the acceptable form of description and representation of NTMs in India in order to make the process smooth and efficient.

Let’s look at three interesting judgements:

Christian Louboutin SAS v. Pawan Kumar and Ors.[i] 

Plaintiff’s shoes bear a distinctive ‘red sole’. The Court held, inter alia, that the Defendant had adopted an identical red sole for their products. Defendant was restrained. However, there is a contrary ruling as well in this case as the main gist was on a single colour and if it registrable as a trade mark under the Indian law.

Marico Limited vs. Aashi Personal Care[ii]

Plaintiff alleged that the shape and colour combination of its products which was sold under the mark Parachute was copied by the Defendant. The Court granted an interim injunction against the Defendant citing the identical shape and colour combination of the products sold.

Ferrero SPA and Ors. vs. Kamco Chew Food Private Limited and Ors.[iii]

Plaintiff’s products were Chocolate egg-shaped confectionaries sold with toys under the trademark KINDER JOY. The Court held that the Defendant had adopted the mark MOTU PATLU but with an identical colour combination and trade dress of the product. Defendant was restrained and damages granted

In a world that is surging ahead and is technology-driven, where everyone and everything has gone virtual, the role of this new type of branding is only likely to grow at a rapid pace. The Non-Traditional Marks definitely provide a major commercial advantage to companies as NTMs have a distinctive appeal that makes them stand out from the rest of the crowd. Think a step ahead and you can see the emerging trend of registration of NTMs worldwide as that is the way the brand owners are going in order to get themselves a strong identity

Who knows what the next set of NTMs that are coming up are in the future, which can be legally protected? Let’s wait and watch as there are huge number of possibilities that could come up.

[i] Christian Louboutin Sas v. Pawan Kumar, 2018 (73) PTC 403 (Del) (India).

[ii] Marico Limited v Aashi Personal Care & Ors., CS (COMM) 1101/2018.

[iii] Ferrero SPA and Ors. v. Kamco Chew Food Private Limited and Ors, MANU/DE/4570/2019: C.S. (COMM) 179/2019.

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