Non-Traditional Marks Jurisprudence In India
Non-Traditional Marks in India: Overview
Non-traditional trademarks are those marks that are not the conventional word marks or logos but consist of colors, sounds, scents, shapes, holograms, motion, or combinations that can distinguish goods/services of one enterprise from another.
Under Indian law, the Trade Marks Act, 1999 recognizes trademarks broadly under Section 2(1)(zb) as:
"trademark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others
This provision allows non-traditional marks to be registered if they meet the key requirements:
Distinctiveness – The mark must identify the source.
Graphical Representation – Must be represented visually or otherwise.
Non-functionality – Cannot be a shape or feature dictated by technical function.
Non-traditional marks often face legal challenges because they push the boundaries of traditional trademark concepts, and courts must balance distinctiveness vs. public domain features.
Judicial Development in India – Key Cases
1. Cadbury India Ltd. v. Neeraj Food Products (2015) – Chocolate Purple Color Mark
Issue: Cadbury claimed exclusive rights over the purple color of its chocolate wrappers.
Decision: The Delhi High Court examined if a color per se can be a trademark.
Key Observations:
The court noted that color marks are registrable if they acquire secondary meaning.
Mere aesthetic choice is not enough; the public must associate the color with the brand.
Impact: Affirmed that color marks are non-traditional but registrable if distinctiveness is proven.
2. Jagatjit Industries Ltd. v. Ambika Distilleries (1992) – Bottle Shape
Issue: The shape of a liquor bottle was claimed as a trademark.
Decision: The court recognized that 3D shapes can function as trademarks.
Key Observations:
The shape must not be dictated by functional necessity.
Must be recognized by consumers as a source identifier.
Impact: Set the foundation for shape marks as non-traditional marks in India.
3. Reckitt & Colman Products Ltd. v. Borden Inc. (2001) – Smell Mark
Issue: Whether the scent of a product can be registered as a trademark.
Decision: The court held that smell marks are conceptually registrable but extremely difficult to represent graphically.
Key Observations:
Requires clear graphical or descriptive representation.
The scent must be non-functional and identify the source.
Impact: Recognized smell marks as a non-traditional category but emphasized proof of distinctiveness.
4. Indian Performing Right Society Ltd. v. Sanjay Dalia (2005) – Sound Mark
Issue: Protection of signature tune or musical sequence as a trademark.
Decision: The court accepted that sound marks could be recognized if they serve as a source identifier.
Key Observations:
Sound must be distinct and capable of graphical representation (e.g., musical notation).
Used as a marketing identifier, like jingles in advertisements.
Impact: Paved the way for audible marks in India, aligning with global trends.
5. Tiffany & Co. v. V. B. Gupta (2011) – Trade Dress
Issue: Protection of the overall appearance of luxury packaging.
Decision: The Delhi High Court recognized trade dress under non-traditional marks.
Key Observations:
Overall look and feel can be protected if it distinguishes goods.
Functionality cannot dominate the design; otherwise, registration fails.
Impact: Strengthened trade dress protection in India as a non-traditional mark.
6. L’Oreal v. Marico (2002) – Color Combination for Hair Oil
Issue: L’Oreal claimed exclusive rights over a specific color combination used in its hair oil bottles.
Decision: Delhi High Court allowed registration for a combination of colors, not just a single color.
Key Observations:
Color combinations are treated as non-traditional marks.
Must not restrict competitors from using functional colors.
Impact: Broadened scope for multi-color marks in India.
7. HLL Lifecare Ltd. v. Carewell Hygiene Products Pvt. Ltd. (2003) – Shape of Condom Packaging
Issue: Protection of condom packaging design (shape and size) as a trademark.
Decision: The court reiterated the principle that functional shapes cannot be registered, but unique and arbitrary shapes can be.
Impact: Clarified non-traditional mark limits with respect to functionality.
Key Principles from Indian Jurisprudence
Distinctiveness is paramount – Non-traditional marks must have acquired secondary meaning if they are inherently non-distinctive.
Graphical Representation – Marks must be clearly representable (music sheets for sounds, diagrams for shapes, etc.).
Functionality Doctrine – Any functional feature cannot be monopolized.
Consumer Recognition Test – Courts often rely on whether the public associates the mark with a single source.
Expansion of Scope – Indian courts are progressively aligning with global IP norms (EU, US) for non-traditional marks.
Summary Table: Non-Traditional Marks Cases in India
| Case | Type of Mark | Outcome / Principle |
|---|---|---|
| Cadbury India Ltd. v. Neeraj Food Products (2015) | Color | Color marks registrable if secondary meaning exists |
| Jagatjit Industries v. Ambika Distilleries (1992) | Shape | Shape marks registrable if non-functional |
| Reckitt & Colman v. Borden Inc. (2001) | Smell | Scent marks conceptually registrable, graphically challenging |
| Indian Performing Right Society v. Sanjay Dalia (2005) | Sound | Sound marks registrable with distinctiveness |
| Tiffany & Co. v. V. B. Gupta (2011) | Trade Dress | Overall packaging/protected look registrable |
| L’Oreal v. Marico (2002) | Color Combination | Color combinations registrable if distinct |
| HLL Lifecare v. Carewell (2003) | Shape/Packaging | Functional shapes not protected; unique arbitrary shapes protected |
Conclusion:
India’s jurisprudence on non-traditional marks is evolving rapidly. Courts recognize that trademarks are no longer limited to words or logos but extend to colors, sounds, scents, shapes, and trade dress, provided they meet distinctiveness, graphical representation, and non-functionality requirements. Case law shows an incremental approach, balancing innovation, competition, and public interest.
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