Traditional marketing tactics entailed promoting a brand or a product through its brand or trademark, which typically comprised of words, logos, letters, numbers, and other symbols. However, with the advent of technology, slogans, jingles, and through a direct consequence of the evolution of advertising methodology and mediums, marketing now entails a plethora of methods in their quiver. This presents particular issues in terms of intellectual property protection for such marks. For instance, trade mark registration procedures have historically evolved around conventional subject matter, such as seeking protection for a standard trade mark that is visual and consists of words, devices, letters, numbers, logos or a combination of such elements.
The lacuna is seen in the static nature of these statutory control mechanisms, which have not evolved at par with modern marketing mechanisms. Especially now with the introduction of the Metaverse and its inevitable growth, protection of intellectual property needs to be more encompassing. The regulations must imbibe the concepts of non-conventional trademarks in their various forms and mediums, so as to facilitate a holistic regulatory framework in intellectual property rights protection and for greater transparency.
This paper seeks to provide some clarity on non-conventional trademarks, the lacuna in the system and its growing importance with emerging trends. The approach of the article would be three-fold. The first part focuses on the meaning and classification of non-conventional trademarks. The second part elucidates some of the statutory and practical hindrances in recognition of such marks. Lastly, the final part covers the emerging issue of recognition of brand symbols or marks in the metaverse.
I. Non-Conventional Trademarks : Meaning & Types
A non-conventional trademark is one which does not belong to any of the conventional or statutorily recognised marks like letters, numbers, logos or those elements which consists of the combinations of such elements. The Indian Trademark Act, 1999 ("Act") does not explicitly recognize non-conventional trademark. Section 2(zb) of the Act defines 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 shape of goods, their packaging and combination of colours." Graphical Representation of a mark is an essential prerequisite for its registration as a trademark. It has been clarified in Rule 2(k) of Trademark Rules, 2002 that depiction of a graphical representation meant representation of the trade mark in paper form. The rationale behind this, as stated in the WIPO report, is that a graphically displayed trademark can be easily recognised.
An unconventional mark, like any other mark sought to be protected as a trademark, must possess the communicative ability of being able to differentiate the goods and services of one person from that of another, i.e., be distinctive enough. Distinguishment has been recognised as an essential condition precedent as per Section 2, Article 15 of Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS"). Thus, an unconventional mark does not adhere to the standard classifications for a trademark as per the existing statutes. It goes beyond the realm as has been defined and opined on.
The different types of non-conventional marks that have been recognised are:-
- Odour Mark/ Olfactory Marks – Due to its inability to be graphically depicted and the tremendous labour required to prove its distinctiveness from the product, the registration and protection of the scent of items as trademarks remains a challenging process. The same has also been recognised by the Draft Manual on Trademarks. In the case of Ralf Seickman v. German Patent Office, the question was if a balsamically fruity scent with hint provided of cinnamon smell for methyl cinnamate could be registered as a trademark with respect to certain services. It was rejected on the ground that it was not possible to depict it graphically. The European Court of Justice ("ECJ") also held that the scent must be precise and clear as well as intelligible to confer any exclusivity or patent rights.
- Sound Mark – The recently notified Trademark Rules that came into existence on 6th March, 2017, provide for registration of certain unconventional marks such as sound marks under Rule 26(5), with the burden being on the applicant to prove its distinctiveness of acquisition of secondary meaning. It states that "when the application has been made for a Sound Trade mark, it shall be reproduced in MP3 Format not exceeding a length of 30 seconds, recorded on a medium that allows for easy and clearly audible replaying quality along with a graphical representation of its notation." In Shielf Mark BV v. Joost Kist, the ECJ held that for satisfying the requirement of graphical representation for a musical record or sound, musical notes must be filed along with a description of the sound. Applications in the form of musical notations that describe the sound generally fit these requirements, whereas onomatopoeic descriptions do not. India has imported the Shield Mark Doctrine with respect to graphical representation of sound marks. It has been highlighted by the Draft Manual on Trademarks that the sounds which are not distinctive cannot to be registered. In fact, ICICI bank getting its corporate jingle sound registered as a trademark was the first such instance of a non-conventional trademark finding place under the Indian IP regime, which still resembles mostly the EU regime on trademarks requiring necessary graphical representation.
- Colour Marks – Any combination of colours or a single colour is the subject matter of a colour trademark. The ECJ relying on the judgement of Ralf Seickman v. German Patent Office for the need of a graphical representation, held in the case of In Libertel Groep BV v. Benelux Trademark Office that any such mark must be clear and precise. The issue before the court was whether a single colour mark consisting of orange colour can be registered as a trademark. The UK Trademark Registry accepts these universal colour codes along with a written description as an adequate graphical representation. The Indian judiciary has also recognised colour under trade dress and trademark in the case of Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd . In contrast to Colgate Palmolive, the court in Cipla v MK Pharma found that a single colour or colour combination is not a trademark and cannot be protected under the common law of passing off.
II. Challenges and Lacunas
It must not be overlooked that a broad registration risked attracting a huge number of applications for unusual marks, which, once registered, could obstruct another's company. The Indian domestic legislations must therefore be harmonised for unconventional trademarks as well, in light of TRIPS and various other agreements. The domestic legislation must primarily allow for non-conventional trademarks like sound and smell to be registered by demarcating the grey areas such as possibility of overlapping protection; for example with copyright, in the case of motion marks, with patent and design in case of shape trademarks. For example, the requirement of 'graphical representation' or representation on paper acts as an obstacle in recognition of many nonconventional trademarks, especially for smell trademarks. Colour trademarks are not difficult to register if the applicant can show that the colour or combination of colours has acquired distinctiveness through secondary means after being used by the applicant for such a long time that consumers have begun to associate the colour with the applicant's goods. However, representing a scent or a smell graphically by providing a chemical formula or composition is tricky because it is designed to reflect the product rather than the smell of that product. Thus, the rigorous process of registration of non-conventional trademark in India hinders the recognition of such non-conventional marks.
The new trademark rules are an excellent step of progress in this regard. However, the need of a more over-arching definition of trademark needs to be revisited in light of the development of unconventional trademarks and their specific markets would require a rather scientific enquiry, and the law to be more specific as to where to draw the line between overlaps in different IP protection. The Lanham Act of 1946 of the US is a good example for the Indian domestic legislation to emulate and build upon, considering similarity of free market economies.
III. Metaverse & The Need for Revisiting the Present IP Protection Regime
The next phase of the Internet, known as the Metaverse, is on its way, owing to developing technology. Although the definition of the Metaverse is constantly growing, it is generally believed to be a persistent virtual world in which users can interact with one another and, increasingly, brands. The Metaverse is an avatar-led virtual environment being actively produced by corporations like Meta and Microsoft. It is a combination of virtual reality, augmented reality, and video. Through anything from concerts and conferences to virtual journeys around the world, the Metaverse allows people to congregate online for work, pleasure, and keep connected with friends, family, and colleagues. While many people still regard the Metaverse as an abstract concept, certain businesses are attempting to gain an early foothold among those who use it. For brand owners looking to extend their relationship with customers to the virtual world, this new environment will present both problems and opportunities, unless there is a holistic, overall IP protection system already in place.
The problem is determining how to protect and enforce a brand's selling power, which is no longer restricted to a conventional trademark but includes a colour scheme, a layout, and product packaging. For example, brand owners desiring to market their trademarks in the Metaverse may be able to do so via virtual billboards, virtual sponsored events, and even virtual "malls" where consumers can browse a brand owner's virtual wares. Indeed, some brands are already interacting with customers in the Metaverse through decentralised game apps and the sale of special virtual apparel lines using Non-Fungible Token ("NFT") technology.
Offering scarce or "limited edition" digital versions of items through online games and digital marketplaces was an early way for brand owners to engage with consumers in the Metaverse. 'Louis' the Game, for example, allows players to personalise their own avatar using virtual Louis Vuitton trademarked prints and hues integrated in the game called NFTs. Dolce & Gabbana, has launched an exclusive range of branded NFT-based digital wearables that also provide followers of the brand access to the physical version of the wearable. Gucci teamed up with the famous online game Roblox to offer players the chance to win a limited-edition digital version of their Gucci Dionysus bag. Surprisingly, the digital replica of the bag was resold for nearly $4,100 on the Roblox marketplace, well exceeding the cost of an actual Gucci Dionysus bag.
However, as more brands begin to offer branded digital goods and services in the Metaverse, trademark infringement and counterfeiting will undoubtedly arise. Since the precise form of infringement may be impossible to predict and would also be evolving in the infant universe, brand owners will need to get valid trademark protection that extends throughout the Metaverse. In the Metaverse, brand owners who fail to protect their trademark rights for virtual goods and services may find it difficult to prevent infringement and effectively enforce their rights. Some foresighted brand owners have already taken action by registering their trademarks for Metaverse-related goods and services.
The following are some recent examples of brand protection in the Metaverse:
- Converse has also filed multiple applications to obtain trademark protection for virtual goods and services for its famous marks, such as the well-known ALL STAR CHUCK TAYLOR logo (Application # 97107382); and
- Abercrombie & Fitch has filed trademark applications for its bird and moose silhouette designs (Application #'s 97106352 and 97106342) covering virtual goods;
- Nike recently made headlines by filing trademark applications with the United States Patent and Trademark Office for such goods and services for many of its iconic brands like NIKE (Application # 97095855), JUST DO IT (Application # 97096236), and its AIR JORDAN logo (Application # 97096945).
Thus, it is amply clear that the present IP Protection regime is largely based on conventional classifications for a trademark. However, with the growth of modern marketing methods and especially given the large exodus to the digital realm, there will be a need for much greater protection and clarity on IP Rights. Though this concept and shift is still in wavery waters, however, the restrictive classificatory approach presently in place needs to evolve to incorporate a greater sense of non-conventional trademarks.
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