The Rights of the Deceased: Moral Rights Incidental to Copyright Law
- Vanshika Agrawal
- 2024-04-25
One of the most famous poets in India, Sarojini Naidu, had pointed out in her famous poetry of “In the Bazaars of Hyderabad” the integral part one’s receptive senses helps in identifying the different types of goods and services. This can be correlated to the reason trademarks exist. It shows how indispensable is trademark from the senses of a person, and how people end up relying on these marks to the particular company or brand. In the legal world of trademark certain brands over a period of timebegin to get identified through different senses such as sound, smell, colour, taste, etc, which becomes the product or brand’s secondary meaning.
After obtaining the secondary meaning, the people start associating that to the particular brand, like tunes represent certain companies, Cadbury’s purple shade of colour, a particular symbol or shape that automatically helps the buyer identify the product or brand. Article 15(1) of TRIPS defines trademark as any “Sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking fromthose of other undertakings, shall be capable of constituting a trademark.”[1]
The Trade Marks Act, 1999, India, includes the concept called “Deceptive Similarity” which deals with names of brands or marks that seem so similar to the public that it is likely to cause confusion. The English case of Orr Ewing and Co.’s states that no trader shall possess the right to use a trademark that resembles an existent trademark, that is likely to cause confusion to the consumers.[2] In Lavroma case Lord Johnston said: “We are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop.”[3]
The case of American Cynamid Corporation v. Connaught Laboratories Inc had held that scrutiny by the judiciary is required in a case where “there is a possibility of confusion over marks”.[4] For example, when one spots the specific purple shade, they automatically identify it to Cadbury. If another brand comes up with a candy bar with the same purple shade, it is highly likely to cause confusion to the consumers, especially the gullible and illiterate consumers, who might end up being deceived. Therefore, various brands end up getting a trademark in order to preserve their goodwill and help avoid the confusion.
Non-conventional trademarks include responses such as sound, smell, texture, trade dress, taste, and other forms. This paper shall discuss the registration of sound, smell and colour trademarks in India specifically.[5] A very popular example of sound trademark is Yahoo’s yodel. It was the first sound trademark that was register, in the year 2008. The sound trademark becomes necessary as a certain tune or jingle helps the public associate the song to the respective brand. For example, McDonald’s “I’m Loving it” is a famous sound that is only associate with the brand McDonald’s. In India, the corporate jingle of ICICI bank is also register as a sound trademark.[6]India, has a perfectly established registration process under the Trademark act which enables companies to register their sound mark.
The registration of sound mark is stated in Rule 26(5) of the Trademark 2017 : “Where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations.”[7]The sound mark has to very distinctive and unique to be considered under the Trademarks law. The ICICI bank corporate jingle“DhinChikDhinChik” was the first sound mark which was register in India, under the rules of Trademark. The Trademark act, 1999 only requires specific notes of the music to be submitted.[8]
On the other hand, registering the smell or scent trademark is not an easy procedure in India. The Indian trademark law does not have any particular provision for the registration of the smell mark, as compared to the sound mark. The unconventional trademarks are yet to gain a little clarity in Indian law. The Draft Manual on Trademarks was introduce in 2009, which laid emphasis on the practice and procedure involved in registering trademarks in India. The smell mark registration in India would have many obstacles because of the rigid statutory provision.
Though it seems like a difficult procedure, in a case where the smell mark is able to fulfill the “Sieckmann seven-fold test”, there may be a chance for it to be registered in India. The court in the Sieckmann case talk about characteristics that must be fulfill by the graphical representation, which includes clear, precise, self-contained, easily accessible, intelligible, durable and objective.[9] Through various UK and US judgments, it can be concluded that smell marks, i.e., the chemical formula depicting the specific product is not sufficiently intelligible, precise, and clear, thereby failing to fall within the seven-fold test of graphical representation.[10] Potential customers are highly unlikely to associate the origin of the product with the scent of the product. India has had no such cases of approved smell trademarks yet.
The registration of a colour mark is quite easy, as the colour mark though falls within the purview of non-conventional trademarks, it is still easily differentiable compare to sound and smell, as people tend to perceive a lot more through vision. The tricky part of getting a colour mark registered could be proof that the applicant has to present, which has to show evidence that the public actually identifies the colour with the specific brand or company.
One of the famous examples, the case of Cadbury Uk Limited V. The Comptroller General Of Patents Designs And Trademarks & Société Des Produits Nestlé S.A.[11], where they prove the distinctive shade of purple to associated with the Cadbury brand by the public, and hence were grant the colour mark. Similarly, in the famous case of Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd.[12], Colgate sought an interim injunction against the company Anchor Health & Beauty Care for using the “trade dress” of Colgate, thereby confusing the consumers that are illiterate and gullible, and are deceived by the visual perception of colour combination in association with a brand. In this case,
Colgate known to use the color combination of “red and white” (one-third red and two-third white). And it sought an injunction against Anchor for using the similar colour combination. In the same proportion, thus amounting to passing off under the Trademark law. By deceiving consumers, as the colour combination was confusing the consumers who drew an impression of the colour combination from the red and white combination of Colgate.
Hence, in this case, the court held a judgement in favor of Colgate. And Anchor was restrain from using the same color combination. This case had referred to a landmark US judgement, Qualitex Co. v. Jacobsen Products Co,[13] in which the court held that over time, consumers start associating some colors with the brand, hence acquiring a secondary meaning. Loose associations are not sufficient to satisfy distinctiveness, no matter how long the usage has been for.
[14] Through the cases above, it is clear that for the registration of color trademark. The distinctiveness and the association of the color to the brand. Thus, providing a secondary meaning, should be proven. Trademark rules 2017, cover the process of registering the trademarks. All applications must be submit to the registrar. And it shall be the decision of the registrar to grant the trademark.[15]
Overall, the visual perceptions such as trade dress and colour may not face many difficulties in India. If the company is able to provide enough evidence. To prove that their colour gives a secondary meaning to the brand. And hence are distinct and should be granted a trademark. Sound trademarks in India have not faced many difficulties, as submitting a distinctive tune is not difficult. Although there aren’t any cases of registered smell marks. As it is extremely difficult for it to fulfil the seven-fold test, definitely not impossible. A trademark by definition serves as a source identifier, and something such as smell is quite vexing and abstract. By nature and will find difficulty in being register as a trademark in India. As well as in the other countries. Although, there is a possibility of evolution of the trademark law in the olfactory trademarks.
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[1]Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh; Agreement Establishing the World Trade Organization, Annex 1C (1994) 33 I.L.M. 1197.
[2] V.K.Ahuja, Intellectual Property Rights in India, 3rd edition (2015)
[3] Ibid.
[4] Ibid.
[5]HarshadaWadkar, Non-conventional marks, March 29, 2019 https://www.lexology.com/library/detail.aspx?g=4339efff-eba0-4339-a5f9-47f2d72ae7d1
[6] Ibid.
[7]Trade Marks Rules, 2017, Rule 26(5) http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_69_1_Trade_Marks_Rules_2017.pdf
[8]ICICI Bank gets ‘sound mark’ registration, The Hindu, March 13, 2011.
[9] Sieckmann v. Deutsches Patent (C-273/00) [2003] E.T.M.R. 37, 43-45 (European Court of Justice)
[10] Lisa PLukose, NON-TRADITIONAL TRADEMARKS: A CRITIQUE, 57(2) Journal of the Indian Law Institute204 (2015)https://www.jstor.org/stable/44782501
[11] Cadbury Uk Limited V. The Comptroller General Of Patents Designs And Trademarks & Société Des Produits Nestlé S.AEWHC 2637 (Ch) [2012]http://www.bailii.org/ew/cases/EWHC/Ch/2012/2637.html
[12] Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd, 2003 (27) PTC 478 Del
[13] Qualitex Co. v. Jacobsen Products Co., 514 U.S. 159, 162 (1995)
[14] DevGangjee,Non-Conventional Trade Marks in India,22National Law School of India Review. 67 (2010)
http://www.jstor.org/stable/44283714.
[15] Trade Marks Rules, 2017, Rule 26(5) http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_69_1_Trade_Marks_Rules_2017.pdf
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